Ex Parte Geyer

Patent Trial and Appeal Board

Jul 19, 2018

13201113 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/201, 113
51707 7590
WRB-IPLLP
801 N. Pitt Street
Suite 123
FILING DATE
08/11/2011
07/23/2018
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Stephen Geyer
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
000009-314US 7017
EXAMINER
AYALADELGADO,ANTHONY
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
07/23/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
HARRY@WRB-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN GEYER
Appeal 2016-008696
Application 13/201, 113 1
Technology Center 3700
Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephen Geyer ("Appellant") seeks review under 35 U.S.C. § 134(a)
of the Examiner's decision, as set forth in the Final Office Action dated June
30, 2015 ("Final Act."), and as further explained in the Advisory Action
dated August 21, 2015 ("Adv. Act."), rejecting claims 1, 3-13, and 15-22.
An oral hearing was held on July 10, 2018. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Mack Trucks Inc. as the real party in interest.
Appeal Br. 1.
Appeal2016-008696
Application 13/201, 113
BACKGROUND
The disclosed subject matter "relates generally to diesel engine
systems and methods for handling diesel engine exhaust and, more
particularly, to such systems and methods wherein NOx control devices can
be bypassed." Spec. ,r 1. Claims 1, 11, 13, and 19 are independent. Claim 1
is reproduced below, with emphasis added:
1. A diesel engine system, comprising:
a diesel engine operable under a plurality of
operating conditions;
a NOx control device downstream of the
engme;
an exhaust line between the engine and the
NOx control device;
a bypass line connected to the exhaust line at
a first end upstream of the NOx control device,
wherein no NOx control device is provided in the
bypass line:
a bypass valve connecting the exhaust line
and the bypass line, the bypass valve permitting
flow through the exhaust line to the NOx control
device when in an open position and preventing
flow through the exhaust line to the NOx control
device and permitting flow through the exhaust
line to the bypass line when in a closed position;
and
a controller configured to close the bypass
valve when at least one operating condition of the
plurality of operating conditions reaches a
predetermined operating condition, wherein the at
least one operating condition comprises operation
of the engine under low NOx idle operating
conditions.
2
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Application 13/201, 113
REJECTIONS 2
1. Claims 1, 3---6, 8, 9, 11-13, and 15-22 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Akagawa (US 2006/0283178 Al,
published Dec. 21, 2006) and Sisken (US 2009/0199537 Al, published Aug.
13, 2009).
2. Claims 10 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Akagawa, Sisken, and Gandhi (US 2007/0157608 Al,
published July 12, 2007).
3. Claim 7 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Akagawa, Sisken, and Satou (US 2008/0163609 Al,
published July 10, 2008).
DISCUSSION
Rejection 1- Claims 1, 3-6, 8, 9, 11-13, and 15-22
The last clause of independent claim 1 recites: "a controller
configured to close the bypass valve when at least one operating condition of
the plurality of operating conditions reaches a predetermined operating
condition, wherein the at least one operating condition comprises operation
of the engine under low NOx idle operating conditions." Appeal Br. 10
(Claims App.) ( emphasis added). The last clauses of each of independent
claims 11, 13, and 19 recite similar limitations. Id. at 12 (claim 11), 13
(claim 13), 15 (claim 19).
2 The Examiner rejected claims 1, 3-13, and 15-22 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. See Final Act. 5-6. In the Answer, the Examiner withdraws
this rejection. See Ans. 2.
3
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Application 13/201, 113
For the independent claims, the Examiner relied on Akagawa for
various limitations but stated that, although Akagawa did not expressly
disclose the last clauses in each independent claim, element 301 in Akagawa
"is capable of performing said function." Final Act. 7 ( claims 1 and 11 ), 11
( claims 13 and 19). The Examiner found, however, that:
Sisken discloses methods to protect selective catalyst
reducer aftertreatment devices during uncontrolled diesel
particulate filter; when uncontrolled regeneration is determined
the SCR is bypassed through bypass channel 40 in order to
protect the SCR 42. Further in step 70 of paragraph [0021 ];
discloses that generally, DPF regeneration occurs during idle
engine operation as well as during highway engine operation, a
runaway DPF regeneration event usually occurs during a drop
to idle engine mode operation and is particular concern as such
an event generate [ s] a[ n] amount of heat in the exhaust stream.
Final Act. 8, 11. 3 According to the Examiner, it would have been obvious
for one of ordinary skill in the art at the time of the invention "to have
bypass[ed] the SCR of Akagawa in order to protect the SCR from the
generated heat of filter regeneration during a low NOx idle, as such would
prevent damage to the SCR and maintain the system operating within
optimal operating range." Id. at 8, 11.
Appellant states that Sisken "was cited as disclosing bypassing an
SCR to protect the SCR during uncontrolled regeneration that occurs during
'idle conditions' because of the heat generated during uncontrolled
regeneration." Appeal Br. 6; see also Final Act. 7 ("However since the
engine with a particulate filter such as Akagawa which can operate in idle
condition, filter regeneration can occur during idle conditions." (emphasis
3 "SCR" refers to "selective reduction catalyst" and "DPF" refers to
"diesel particulate filter." See, e.g., Spec. ,r 4.
4
Appeal2016-008696
Application 13/201, 113
added)). Appellant argues, however, that "'idle conditions' are distinct
from 'low NOx idle operating conditions"' as recited in the limitations at
issue, and Appellant argues "that this is a well-known distinction to persons
skilled in the art." Appeal Br. 6. According to Appellant, "[l]ow NOx idle
conditions are defined in the present application at, e.g., Paras. [0003]-
[0004]" of the Specification. Id.
The Examiner responds that "[a] person ordinary skill in the art at the
time the invention was made would have selected the engine idle condition
of Ak[a]gawa to meet with the emission standards required in the United
States as stated in [the S]pecification in paragraph [0002]." Ans. 4; see
Spec. ,r 2 ("Strict diesel engine emissions regulations have been proposed in
the U.S. California, for example, has proposed regulations that require trucks
to stop idling after no more than five minutes unless NOx emissions from
the idling vehicles are limited to 30 grams/hr or less.").
We first address the meaning of the phrase "low NOx idle operating
conditions" as recited in the last clauses of the independent claims.
Although paragraphs 3 and 4 of the Specification (referenced by Appellant),
do disclose, for example, that (1) "certain vehicles have been equipped with
a 'low NOx idle' feature which prevents NOx emissions over 30 grams/hr."
and (2) "low NOx idle operating conditions typically involve operation at
low load and low engine speed" (Spec. ,r 3), we do not agree with Appellant
that paragraphs 3 and 4 "define[]" the phrase "low NOx idle operating
conditions" (Appeal Br. 6). Instead, we view paragraph 13 as clearly and
expressly defining the exact phrase recited in the limitations at issue:
According to one aspect of the present invention, the at least
one operating condition can comprise operation of the engine
23 under low NOx idle operating conditions, defined for
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Appeal2016-008696
Application 13/201, 113
purposes of the present application as conditions wherein the
engine is operated at sufficiently low loads and engine speed
such that NOx emissions are less than 30 g/hr after idling for 3
minutes.
Spec. ,r 13 (emphasis added); see Luminara Worldwide, LLC v. Liown Elecs.
Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) ("To act as a lexicographer, a
patentee must 'clearly set forth a definition of the disputed claim term' and
'clearly express an intent to redefine the term."' ( quoting Thorner v. Sony
Computer Entm 't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
vVe turn now to the positions taken by the Examiner. A prima facie
case of inherency requires a basis in fact and/or technical reasoning to
reasonably support a determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. Ex parte
rVhalen, 89 USPQ2d 1078, 1083 (BPAI 2008) (precedentia1). Here, even
assurning that the Examiner has demonstrated that the functionality recited
in the last clauses of the independent claims would occur under at least some
idle conditions4, we determine that the Examiner has not provided sufficient
basis in fact or technical reasoning to support the position that the same
functionality would necessarily occur under the specific idle condition
recited-i.e., "low NOx idle operating conditions." See Reply Br. 2
("However one might describe the conditions under which a vehicle might
be operated so that the vehicle both idles and performs an active DPF
regeneration, those conditions are not what are defined in the present
application or what persons skilled in the art would consider to be low NOx
4 See Final Act 6----8 and 10----11 (discussing Akagawa ir 24 and Sisken
ii 21 ); Akagawa ,r 24 ( discussing operation "in case of traffic congestions or
the like"); Sisken ,r 21 ( discussing operation "during idle engine operation").
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Application 13/201, 113
idle operating conditions."); see also Adv. Act. 2 (stating that the
"Examiner['s] interpetation of 'Low NOX idle' is basically the same as
'engine idle' and during those engine idle regeneration of the particulate
filter is probable to occur").
For example, the Examiner states that "low NOx idle operating
conditions" as discussed in paragraph 3 of the Specification "would be
expected to exist during the Ak[a]gawa idling 'in traffic congestion or the
like"' but does not explain the technical or factual basis for that expectation.
Ans. 5. In addition, the Examiner states that "the fact that regulation was
made to address such conditions further supports that a 'low NOx idle
condition' would be expected to routinely be present during a[n] idle." Id.
We disagree; the proposal of specific regulations requiring "low NOx idle"
operation in certain situations demonstrates, in our view, that at least some
prior idle operations do not meet the requirements proposed under the
regulations. See Spec. ,r,r 2-3. In other words, the proposed regulations
indicate that (in line with the discussion above) the recited "low NOx idle
operating conditions" are a subset of idle operating conditions generally.
For these reasons, we do not sustain the rejection of independent
claims 1, 11, 13, and 19, and also do not sustain the rejection of claims 3---6,
8, 9, and 21 ( which depend from claim 1 ), claim 12 ( which depends from
claim 11), claims 15-18 and 22 (which depend from claim 13), and claim 20
(which depends from claim 19).
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Application 13/201, 113
Rejections 2 and 3 - Claims 7 and 10
Claims 7 and 10 depend from claim 1. The Examiner's added
reliance on Gandhi (regarding Rejection 2) and Satou (regarding Rejection
3) does not remedy the deficiencies in the rejection based on Akagawa and
Sisken, discussed above (see supra Rejection 1 ). Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 7 and 10.
DECISION
We reverse the decision to reject claims 1, 3-13, and 15-22 under
35 U.S.C. § 103(a).
REVERSED
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