Ex Parte Cho et al

Patent Trial and Appeal Board

Nov 26, 2014

12295811 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIN CHO, TOMOTAKA HIROTA,
and KENJI TANIKAWA
____________

Appeal 2013-000641
Application 12/295,811
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and KAREN M. HASTINGS,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1, 2, 4, 5, 7, and 9 through 21, which are all of the
claims pending in the above-identified application. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 Appeal Brief filed May 21, 2012, 1.
2 Final Rejection mailed November 22, 2011(“FR.”) at 1–6 and the Examiner’s
Answer mailed August 2, 2012 (“Ans.”) 3–9.
Appeal 2013-000641
Application 12/295,811

2
The subject matter on appeal is directed to “an exhaust gas catalyst where
multiple layers are formed in support.” (Spec. 1, ¶ [0001].) Details of the appealed
subject matter are recited in illustrative claims 1, 18, and 20 reproduced below
from the Claims Appendix of the Appeal Brief:
1. An exhaust gas catalyst comprising at least a support and multiple layers
formed on the support, wherein
at least one of the multiple layers has voids therein formed via a forming
agent; and
the at least one of the multiple layers having voids therein comprises, as
catalytic components, a noble metal, alumina, and one or more composite oxides
comprising, as main components, ceria, zirconia and one or more rare earth
elements except for ceria, wherein the average diameter of the voids ranges from
not less than 0.2 μm to not more than 500μm and the one or more composite
oxides has a specific surface area, after a heat treatment at 1000°C for 2 hours, of
not less than 40 m2/g.

18. An exhaust gas apparatus, comprising one or more exhaust gas catalysts
disposed within the apparatus and downstream of
an exhaust gas discharged from the engine, wherein the one or more exhaust
gas catalysts comprises at least a support and multiple layers formed on the
support, wherein
at least one of the multiple layers has voids therein formed via a forming
agent; and
the at least one of the multiple layers having voids therein comprises, as
catalytic components, a noble metal, alumina, and one or more composite oxides
comprising, as main components, ceria, zirconia and one or more rare earth
elements except for ceria, wherein the average diameter of the voids ranges from
not less than 0.2 μm to not more than 500 μm and the one or more composite
oxides has a specific surface area, after a heat treatment at 1000°C for 2 hours, of
not less than 40 m2/g.

20. An apparatus for treating hydrocarbons, carbon monoxide or nitrogen oxides
in the exhaust gas, said apparatus comprising one or more exhaust gas catalysts for
oxidizing or reducing the hydrocarbons, carbon monoxide or nitrogen oxides in the
exhaust gas into carbon dioxide, water or nitrogen gas, wherein the one or more
exhaust gas catalysts comprises at least a support and multiple layers formed on the
support, wherein
Appeal 2013-000641
Application 12/295,811

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at least one of the multiple layers has voids therein formed via a forming
agent; and
the at least one of the multiple layers having voids therein comprises, as
catalytic components, a noble metal, alumina, and one or more composite oxides
comprising, as main components, ceria, zirconia and one or more rare earth
elements except for ceria, wherein the average diameter of the voids ranges from
not less than 0.2 μm to not more than 500 μm and the one or more composite
oxides has a specific surface area, after a heat treatment at 1000°C for 2 hours, of
not less than 40 m2/g.

(App. Br. 11–13 (emphasis added).)
Appellants seek review of the following grounds of rejection maintained in
the Examiner’s Answer:
1. Claims 1, 2, 4, 7, and 9 through 21 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Takeshima (US Pat. Appl. Pub.
2004/0054779 A1, published in the name of Takeshima et al. on Mar. 18, 2004),
Saiki (EP 1 364 706 A1 published in the name of Saiki et al. on November 26,
2003), and Miura (US 7,547,656 B2 issued to Miura on June 16, 2009); and
2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Takeshima, Saiki, Miura, and JP 1-13901 (Published March 8,
1989). (App. Br. 4–10.)
Upon consideration of the evidence on this record, we concur with
Appellants that the Examiner has not carried the burden of establishing a prima
facie case of obviousness regarding the subject matter recited in claims 1, 2, 4, 5,
7, and 9 through 21 within the meaning of 35 U.S.C. § 103(a). Accordingly, we
reverse the Examiner’s § 103(a) rejections of the claims on appeal for the reasons
set forth in the Appeal Brief and the Reply Brief. We add the following primarily
for emphasis and completeness.

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The Examiner determined that:
[T]o have modified the Takeshima et al. exhaust gas [having a
noble metal carrying coating layer comprising gamma-alumina and a
composite oxide containing ceria, zirconia, and one or more rate earth
elements except for ceria] by providing an additional, porous coating
layer underneath the one porous layer [as taught by Miura] would
have been obvious to one skilled in the art for improving warming-up
performance due to the presence of the lower layer increasing thermal
insulation [of] the noble metal catalyst, with the lower layer having a
porosity of 40 to 75% with a pore diameter of about 2 microns. [(FR
3.)]

In so determining, the Examiner ignored Miura’s teaching that when multiple
coating layers are employed in an exhaust gas catalyst, a lower layer comprising a
metal oxide needs to have a porosity of 40–75% and an upper coating layer needs
to be made of a metal oxide with thermal conductivity of 5 W/mK or less. (See FR
2-3, App. Br. 6, and Miura, col. 1, ll. 40–55.) Stated differently, the Examiner has
not shown that the noble metal carrying coating layer comprising gamma-alumina,
and a composite oxide containing ceria, zirconia and one or more rate earth
elements except for ceria taught by Takeshima has a thermal conductivity of 5
W/mK or less such that it is useful as an upper coating layer of the multiple coating
layers of the exhaust gas catalyst taught by Miura. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection
based on section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior art”).
To combine the particular coating layers in the manner proposed by the Examiner
would destroy the invention on which Miura is based. Ex parte Hartman, 186
USPQ 366, 367 (Bd. App. 1974)(“Reynold cannot properly be combined with
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Graham et al relative to the employment of continuous monofilaments since to do
so would destroy that on which the invention of Graham et al is based, namely, the
use of very short fibers.”)
Even were we to determine that the lower coating layer taught by Miura and
the noble metal carrying coating layer taught by Takeshima are combinable as
proposed by the Examiner, the proposed combination falls short of the claimed
invention as argued by Appellants. (See, e.g., Reply Br. 3.) Conspicuously
missing in the Examiner’s determination above is any assertion or explanation
regarding obviousness of forming voids having the average diameter of not less
than 0.2 micrometer to not more than 500 micrometer3 in a coating layer
comprising a noble metal, gamma-alumina, and a composite oxide containing
ceria, zirconia and one or more rate earth elements except for ceria, as required by
the claims on appeal. (FR 2–3.) On this record, the Examiner has not asserted that
the lower coating having such voids taught by Miura has the composition required
by the claims on appeal. (Id.)
ORDER
Upon consideration of the record, and for the reasons given above and in the
Appeal Brief and the Reply Brief, it is
ORDERED that the decision of the Examiner to reject the claims on appeal
under 35 U.S.C. §103(a) is REVERSED.

3 It is interesting to note that the Examiner did not rely on Saiki to show that
providing voids having the claimed average diameter sizes in any coating layers of
an exhaust catalyst, such as that shown in Takeshima, were known to impart the
advantages referred to by Appellants at page 4 of the Specification. (FR 2.)
Rather, the Examiner relied upon Saiki to show that Takeshima does not teach a
coating layer containing voids having the claimed average diameter. (Id.)
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REVERSED

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