Ex Parte Gonze et al

Patent Trial and Appeal Board

Mar 20, 2013

11557715 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EUGENE V. GONZE and FRANK AMENT
____________

Appeal 2011-000456
Application 11/557,715
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
JOHN W. MORRISON, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000456
Application 11/557,715

2
STATEMENT OF THE CASE
Eugene V. Gonze and Frank Ament (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision finally rejecting under 35 U.S.C.
§ 103(a) claims 1, 3-5, 7-10, 12-14, 16, 17, 19, and 20 as unpatentable over
Takeuchi (US 4,505,726, iss. Mar. 19, 1985) (hereafter “Takeuchi ‘726”)
and Bagley (US 5,277,937, iss. Jan. 11, 1994); claims 1, 5, 10-14, and 17-20
as unpatentable over Takeuchi (US 4,516,993, iss. May 14, 1985) (hereafter
“Takeuchi ‘993”) and Bagley; and claim 2 as unpatentable over Takeuchi
‘993, Bagley, and Sato (US 4,450,682, iss. May 29, 1984). Claims 6 and 15
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6.

THE INVENTION
Appellants’ invention relates to a method and device for regenerating
a particulate filter including providing a grid 64 of electrically resistive
material in contact with a thermally conductive coating 72. Spec. 2, paras.
[0007] and [0008]; Spec. 6, para. [0025]; and fig. 5.
Claims 1 and 14 are illustrative of the claimed invention and read as
follows:
1. An exhaust system that processes exhaust generated by an
engine, comprising:
a particulate filter (PF) that filters particulates from the exhaust
wherein an upstream end of the PF receives exhaust from the engine;
a grid of electrically resistive material that is applied to an
exterior upstream surface of the PF and that selectively heats exhaust
passing through the grid to initiate combustion of particulates within
the PF; and
a conductive coating that is applied to the exterior upstream
surface of the PF wherein the electrically resistive material of the grid
contacts the conductive coating and wherein the electrically resistive
Appeal 2011-000456
Application 11/557,715

3
material transfers thermal energy to the conductive coating to initiate
combustion of particulates on the conductive coating.

14. A method of regenerating a particulate filter (PF) of an exhaust
system, comprising:
applying a grid of electrically resistive material to a front
exterior surface of the PF;
heating the grid by supplying current to the electrically resistive
material;
inducing combustion of particulates present on the front surface
of the PF via the heated grid;
directing heat generated by combustion of the particulates into
the PF to induce combustion of particulates within the PF; and
coating inlets of the PF with a conductive material and wherein
the applying further comprises applying the grid such that the resistive
material contacts and transfers thermal energy to the conductive
coating.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The obviousness rejection based upon Takeuchi ‘726 and Bagley
Claims 1, 3-5, 7-10, 12, and 13
The Examiner found that Takeuchi ‘726 discloses all the limitations of
independent claims 1 and 14, with the exception of a “conductive coating,”
as called for by independent claim 1. Ans. 4. The Examiner further found
that Bagley discloses a method for controlling the conductance of a heated
cellular substrate having walls 40 including providing an electrically
resistive material 70 that contacts a conductive coating 60 for transferring
thermal energy to the conductive coating “to initiate combustion of
particulates present on the conductive coating.” Ans. 4-5. The Examiner
concluded that it would have been obvious to a person having ordinary skill
Appeal 2011-000456
Application 11/557,715

4
in the art “to have utilized the conductive coating taught by Bagley et al. in
the system and method of Takeuchi '726, since the use thereof would have
been routinely practiced by those with ordinary skill in the art to improve a
purification efficiency of the particulate filter.” Ans. 5.
Appellants argue that because intermediate layer 60 of Bagley
constitutes a “smoothing layer” and “Bagley is silent as to the intermediate
layer 60 having thermally conductive qualities,” Bagley fails to disclose, “a
conductive coating,” as called for by independent claim 1. App. Br. 9-10.
Specifically, Appellants argue that because intermediate layer 60 of Bagley
draws heat away from heated layer 70, “it cannot be said that the heater layer
70 transfers thermal energy to the intermediate layer to initiate combustion
of particulates on the intermediate layer.” Reply Br. 6; see App. Br. 10.
At the outset, we note that the fact that Bagley does not specifically
disclose that intermediate layer 60 has thermal conductive qualities does not,
without more, establish that the Examiner erred by concluding that the
inclusion of Bagley’s intermediate layer into the particulate filter of
Takeuchi ‘726 would have been obvious to one having ordinary skill in the
art. What a reference teaches a person of ordinary skill is not limited to
what a reference specifically “talks about” or what is specifically
“mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex,
Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). “[A] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR v. Teleflex, 550
U.S. 398, 421 (2007). Here, we agree with the Examiner that because the
purpose of intermediate layer 60 of Bagley is to increase heat exchange
efficiency of the heated substrate, namely, cellular structure 10, intermediate
layer 60 must have thermally conductive properties in order to transfer heat
Appeal 2011-000456
Application 11/557,715

5
generated by electrically resistive layer 70 to walls 40 of cellular structure
10. Ans. 10; see also Bagley, col. 1, ll. 8-9, col. 7, ll. 26-31 and fig. 4.
Thus, in Bagley, in order to heat cellular structure 10, the heat generated by
electrically resistive layer 70 is transferred to walls 40 of cellular structure
10 via intermediate layer 60.
However, although we agree with the Examiner’s position, for the
reasons set forth supra, that intermediate layer 60 of Bagley constitutes a
“conductive coating,” we do not agree with the Examiner that the heat
generated by electrically resistive layer 70 of Bagley “transfers thermal
energy to the conductive coating to initiate combustion of particulates
present on the conductive coating.” Ans. 5 and 9; see also Reply Br. 6. In
Bagley, electrically resistive layer 70 is applied over intermediate layer 60
such that particulates cannot come into contact with intermediate layer 60.
See Bagley, col. 2, ll. 16-21 and fig. 4. The Examiner has not pointed to any
portion of Bagley, and we could not find any portion, that discloses
electrically resistive layer 70 not covering intermediate layer 60. After all,
the purpose of intermediate layer 60 is to “increase[e] the effective surface
area on which conductive material [70] can be applied.” Bagley, col. 2, ll.
16-18. Thus, although heat generated by electrically resistive layer 70 is
transferred to intermediate layer 60, it is not transferred “to initiate
combustion of particulates on the conductive coating,” as the Examiner
found, because particulates cannot come into contact with intermediate layer
60. Therefore, we agree with Appellants that the combined teachings of
Takeuchi ‘726 and Bagley “fail to teach or suggest a conductive coating . . .
[that] contacts electrically resistive material of a grid, wherein the
electrically resistive material transfers thermal energy to the conductive
Appeal 2011-000456
Application 11/557,715

6
coating to initiate combustion of particulates on the conductive coating.”
Reply Br. 7.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of independent claim 1 and its dependent claims 3-5, 7-10, 12, and
13 under 35 U.S.C. as unpatentable over Takeuchi ‘726 and Bagley. See In
re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)

Claims 14, 16, 17, 19, and 20
Appellants’ sole argument is that independent claim 14, “includes
similar limitations [to claim 1] and, therefore, should be allowable for at
least similar reasons.” App. Br. 11; see also Reply Br. 7.
We do not agree with Appellants’ contention because independent
claim 14 does not include the limitation “the electrically resistive material
transfers thermal energy to the conductive coating to initiate combustion of
particulates on the conductive coating.” Independent claim 14 merely
requires “applying the grid such that the resistive material contacts and
transfers thermal energy to the conductive coating.” App. Br., Claims
App’x. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). As noted
above, we agree with the Examiner that because the purpose of intermediate
layer 60 of Bagley is to increase heat exchange efficiency of the heated
substrate, namely, cellular structure 10, intermediate layer 60 must have
thermally conductive properties in order to transfer heat generated by
electrically resistive layer 70 to walls 40 of cellular structure10. Ans. 10;
Appeal 2011-000456
Application 11/557,715

7
see also Bagley, col. 1, ll. 8-9, col. 7, ll. 26-31 and fig. 4. As such, Bagley
does disclose that “the resistive material contacts and transfers thermal
energy to the conductive coating,” as called for by independent claim 14.
Thus, we sustain the rejection of independent claim 14 over the
combined teachings of Takeuchi ‘726 and Bagley.
Appellants do not make any other substantive arguments with respect
to the rejection of dependent claims 16, 17, 19, and 20. App. Br. 11. As
such, for the same reasons set forth supra, we likewise sustain the rejection
of claims 16, 17, 19, and 20 as unpatentable over Takeuchi ‘726 and Bagley.

The obviousness rejection based upon Takeuchi ‘993 and Bagley
Pointing to the teachings of Bagley, Appellants’ arguments are similar
to the arguments made with respect to the rejection of independent claims 1
and 14 over the combined teachings of Takeuchi ‘726 and Bagley. App. Br.
11-12; see also Reply Br. 7-8.
Thus, for the reasons set forth supra, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 1, 5, and 10-13 as unpatentable over
Takeuchi ‘993 and Bagley. However, we do sustain the rejection of claims
14 and 17-20 over the combined teachings of Takeuchi ‘993 and Bagley.

The obviousness rejection based upon Takeuchi ‘993, Bagley, and Sato
The addition of Sato does not remedy the deficiencies of Takeuchi
‘993 and Bagley as described supra. Accordingly, we likewise do not
sustain the rejection of claim 2 over Takeuchi ‘993, Bagley, and Sato.

Appeal 2011-000456
Application 11/557,715

8
SUMMARY
The Examiner’s decision is reversed as to claims 1-5 and 7-13 and
affirmed as to claims 14 and 16-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

mls