Ex Parte Gonze et al

Patent Trial and Appeal Board

Jul 1, 2014

11950545 (P.T.A.B. Jul. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EUGENE V. GONZE, MICHAEL J. PARATORE, JR., and
GARIMA BHATIA
____________
Appeal 2012-004813
Application 11/950,545
Technology Center 3700
____________

Before HOWARD B. BLANKENSHIP, MICHAEL R. ZECHER, and
HYUN J. JUNG, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4, 8–11, 15, and 16. App. Br. 5; Reply Br. 3. Claims
5–7, 12–14, and 17 were cancelled. Id. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants purport to have invented a particulate matter (“PM”) filter
that includes an upstream end and a downstream end. Abstract; Spec. ¶¶ 9,
21–25. The disclosed invention also includes a zoned electric heater at the
upstream end, as well as a control module that increases an exhaust
temperature above a soot oxidation temperature before activating the electric
heater to regenerate portions of the PM filter. Id.
Illustrative Claim
Claims 1 and 8 are independent claims directed to a PM filter system
and method, respectively. Claims 2–4 and 15 directly depend from
independent claim 1, and claims 9–11 and 16 directly depend from
independent claim 8. Independent claim 1 is illustrative of the disclosed
invention and is reproduced below (emphasis added):
1. A system comprising:
a particulate matter (PM) filter including an upstream end
for receiving exhaust gas and a downstream end;
an electric heater that is arranged one of spaced from and
in contact with said upstream end, wherein said electric heater
comprises N zones, wherein N is an integer greater than one,
and wherein said N zones correspond to longitudinal zones
along a length of said PM filter; and
a control module that (i) controls an operating parameter
of an engine to increases an exhaust temperature to a first
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temperature during a period, (ii) after the period activates one
of said N zones of said electric heater to a second temperature
to initiate regeneration of downstream portions of said PM
filter, and (iii) activates another of said N zones of said electric
heater to said second temperature if regeneration of said PM
filter is incomplete a period after activating said one of said N
zones,
wherein said first temperature is greater than or equal
to 550 degrees Celsius and said second temperature is
approximately 800 degrees Celsius.

Prior Art Relied Upon
Takeuchi US 4,516,993 May 14, 1985
Rao US 4,655,037 Apr. 7, 1987
Murachi US 5,746,989 May 5, 1998
Peter US 6,572,682 B2 June 3, 2003
Kojima US 6,770,116 B2 Aug. 3, 2004
Guinther US 6,971,337 B2 Dec. 6, 2005

Rejections on Appeal
Claims 1, 2, 8, 9, 15, and16 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kojima, Takeuchi, Guinther,
and Peter. Ans. 5–12.
Claims 3 and 10 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kojima, Takeuchi, Guinther, Peter,
and Rao. Id. at 12–13.
Claims 4 and 11 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kojima, Takeuchi, Guinther, Peter,
and Murachi. Id. at 13–15.
Examiner’s Findings and Conclusions
The Examiner finds that the combination of Kojima, Takeuchi,
Guinther, and Peter collectively teach all the claim limitations recited in
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independent claim 1, and similarly recited in independent claim 8. Ans. 5–9,
15–20. In particular, the Examiner finds that Kojima teaches all the claim
limitations of independent claim 1, with the exception of “wherein said
electric heater comprises N zones, wherein N is an integer greater than one,
and wherein said N zones correspond to longitudinal zones along a length of
said PM filter,” and “wherein said first temperature is greater than or equal
to 550 degrees Celsius and said second temperature is approximately 800
degrees Celsius.” Id. at 6. The Examiner relies upon Takeuchi to teach an
electric heater comprising N zones that correspond to longitudinal zones
along the length of a PM filter used in a regeneration process. Id. at 7–8
(citing Takeuchi, figs. 2–7 (showing N upstream heating resistors 61a–f,
each of which heat corresponding downstream filter portions (not shown)),
col. 3, ll. 41–47, col. 4, ll. 23–64, col. 4, ll. 23–28, 41–50, 57–64).
The Examiner also finds that, although Kojima does not recite
explicitly “wherein said first temperature is greater than or equal to 550
degrees Celsius and said second temperature is approximately 800 degrees
Celsius,” those temperatures are old and well known. Ans. 8–9. The
Examiner relies on Guinther to teach that it is old and well known that the
oxidation temperature of soot is in excess of 500 degrees Celsius. Id. at 8
(citing Guinther, col. 7, ll. 55–56). The Examiner relies upon Peter to teach
that it is old and well known to heat a filter by electrical current to
temperatures ranging from 800–900 degrees Celsius. Id. (citing Peter, col.
9, ll. 20–30). The Examiner also provides multiple rationales to modify
Kojima with the teachings of Takeuchi, Guinther, and Peter. Id. at 7–9.

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Appellants’ Contentions
Appellants disagree with the Examiner’s position that the combination
of Kojima, Takeuchi, Guinther, and Peter collectively teach all the claim
limitations recited in independent claim 1, and similarly recited in
independent claim 8. App. Br. 10–13; Reply Br. 5–9. In particular,
Appellants present the following arguments: (1) Kojima fails to teach the
zone heating scheme and specific temperatures required by independent
claim 1; (2) Takeuchi fails to teach the specific temperatures required by
independent claim 1; (3) both Guinther and Peter fail to teach the specific
temperatures required by independent claim 1; and (4) Guinther and Peter
each explicitly teach away from their combination with Kojima. App. Br.
10–12; Reply Br. 5–9.
Appellants also contend that, because both Guinther and Peter
explicitly teach away from their combination with Kojima, the Examiner has
not provided a sufficient rationale to combine the teachings of Guinther and
Peter with the teachings of Kojima and Takeuchi. App. Br. 12–3; Reply Br.
7–8. For the first time in the Reply Brief, Appellants argue that modifying
the conventional PM filters disclosed in Kojima and Takeuchi with the
teachings of Guinther and Peter would render both Kojima and Takeuchi
unsatisfactory for their intended purposes, or otherwise change the principles
of operation of those prior art references. Reply Br. 8–9.

II. ISSUE
Has the Examiner erred in determining that the combination of
Kojima, Takeuchi, Guinther, and Peter renders independent claims 1 and 8
unpatentable? In particular, the issue turns on whether:
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(a) the proffered combination teaches “wherein said first temperature
is greater than or equal to 550 degrees Celsius and said second temperature
is approximately 800 degrees Celsius,” as recited in independent claim 1,
and similarly in independent claim 8;
(b) Guinther and Peter each teach away from their combination with
Kojima and, as a result, teach away from the claimed invention; and
(c) the Examiner provides an articulated reason with a rational
underpinning to combine Kojima, Takeuchi, Guinter, and Peter.

III. ANALYSIS
103(a) Rejection—Combination of Kojima, Takeuchi, Guinther, and Peter
Claims 1 and 8
Based on the record before us, we do not discern error in the
Examiner’s obviousness rejection of independent claims 1 and 8, each of
which recite, inter alia, “wherein said first temperature is greater than or
equal to 550 degrees Celsius and said second temperature is approximately
800 degrees Celsius.”
We begin our analysis by noting that Appellants seem to
misapprehend or mischaracterize the Examiner’s obviousness rejection. The
Examiner finds that Kojima teaches a PM filter, but does not teach the zoned
heating and specific operating temperatures required by independent claims
1 and 8. Ans. 5–7. The Examiner then finds that one of ordinary skill in the
art would have looked to the zoned heating scheme disclosed in Takeuchi
(id. at 6–7 (citing Takeuchi, figs. 2–7; col. 3, ll. 41–47, col. 4, ll. 23–64, col.
4, ll. 23–28, 41–50, 57–64)), as well as the operating temperatures disclosed
in Guinther and Peter (id. at 8–9 (citing Guinther, col. 7, ll. 55–56; Peter,
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col. 9, ll. 20–30)), to teach the claimed features missing from Kojima. We
agree with the Examiner’s findings. “The use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed.
Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)).
As a consequence, we are not persuaded by Appellants’ arguments
that Kojima fails to teach the zoned heating scheme, and that both Kojima
and Takeuchi fail to teach specific temperatures. App. Br. 10–11; Reply Br.
5. Appellants’ assertions merely restate the Examiner’s positions and do not
allege error in the Examiner’s reliance upon Takeuchi to teach the zoned
heating scheme, as claimed.
We also are not persuaded by Appellants’ argument that Guinther
does not disclose a first temperature that is greater than or equal to 550
degrees Celsius, as claimed. App. Br. 11; Reply Br. 6. Although Appellants
contend that Guinther lowers the temperature of soot oxidation using
additives and coatings, we nonetheless find that Guinther still teaches that it
is old and well known to increase the temperature of an electric heater in
excess of 500 degrees Celsius in order to oxidize soot. Guinther, col. 7, ll.
55–56. We, therefore, agree with the Examiner that generating a soot
oxidation temperature that is greater than or equal to 550 degrees Celsius is
well within the skill level of an ordinary skilled artisan. Ans. 8, 17–18.
Likewise, we are not persuaded by Appellants’ argument that Peter
does not disclose a second temperature that is approximately 800 degrees
Celsius, as claimed. App. Br. 12; Reply Br. 6–7. Appellants allege that
Peter is directed to a special combination PM and lean NOx [nitrous oxide]
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trap (LNT) filter to purge a NOx trap of sulfur. Id. (citing Peter, Abstract).
Again, we find that this cited disclosure does not change the fact that Peter
still teaches that it is old and well known to heat PM filters to 800 degrees
Celsius. Peter, col. 9, ll. 28–30. We, therefore, agree with the Examiner that
regenerating the PM filter of an electric heater by heating it to 800 degrees
Celsius is well within the skill level of an ordinary skilled artisan. Ans. 8–9,
18–20.
Teaching Away
We also are not persuaded by Appellants’ argument that Guinther and
Peter each explicitly teach away from their combination with Kojima. App.
Br. 11–13; Reply Br. 6–7. A reference teaches away from a claimed
invention if it “criticizes, discredits, or otherwise discourages” modifying the
reference to arrive at the claimed invention. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). We will not, however, “read into a reference a
teaching away from a process where no such language exists.” DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006).
Appellants’ reference to Guinther’s disclosure of implementing
catalyzed PM filters that include additives, e.g., coatings, to lower the
temperature of soot oxidation (Guinther, col. 7, ll. 39–61), as well as Peter’s
disclosure of the cost and practicality associated with using additives to
lower the regeneration temperature (Peter, col. 2, ll. 43–46), does not
indicate that Kojima’s electric heater is incapable of generating a first
temperature that is greater than or equal to 550 degrees Celsius, or
generating a second temperature that is approximately 800 degrees Celsius.
Moreover, Appellants have not pointed to an explicit disclosure within either
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Guinther or Peter that acts to “criticize, discredit, or otherwise discourage”
modifying Kojima’s electric heater, such that it is capable of generating a
first temperature that is greater than or equal to 550 degrees Celsius, or
generating a second temperature that is approximately 800 degrees Celsius.
See Fulton, 391 F.3d at 1201 (Fed. Cir. 2004). Therefore, Appellants have
not shown that Guinther and Peter each teach away from their combination
with Kojima and, as a result, teach away from the claimed invention.
Rationale to Combine
We are not persuaded by Appellants’ argument that the Examiner has
not provided a sufficient rationale to combine the teachings of Guinther and
Peter with the teachings of Kojima and Takeuchi. App. Br. 12–13.
Appellants’ argument is premised on the notion that Guinther and Peter both
explicitly teach away from their combination with Kojima. As we explained
above, we were not persuaded by Appellants’ teaching away arguments.
Belated Argument in the Reply Brief
For the first time in the Reply Brief, Appellants argue that combining
the teachings of Guinther and Peter with the teachings of Kojima and
Takeuchi would render both Kojima and Takeuchi unsatisfactory for their
intended purposes or otherwise change their principles of operation. Reply
Br. 8–9. This argument is untimely and will not be considered because it is
not accompanied by a showing of good cause explaining why it could not
have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d
1473, 1476–77 (BPAI 2010)(informative); Cf. Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“‘[A]n issue not
raised by an appellant in its opening brief . . . is waived.”’). It follows that
the Examiner has not erred in determining that the combination of Kojima,
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Takeuchi, Guinther, and Peter renders independent claims 1 and 8
unpatentable.
Claims 2, 9, 15 and 16
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 2, 9, 15, and 16. App. Br. 14;
Reply Br. 9. Therefore, we accept Appellants’ grouping of the dependent
claims with their underlying base claims. Id. Consequently, dependent
claims 2 and 15 fall with independent claim 1, and dependent claims 9 and
16 fall with independent claim 8. See 37 C.F.R. § 41.37(c)(1)(iv).
Remaining 103(a) Rejections
Claims 3, 4, 10, and 11
Appellants contend that Rao and Murachi do not cure the alleged
deficiencies noted above in the Examiner’s combination of Kojima,
Takeuchi, Guinther, and Peter. App. Br. 14; Reply Br. 10. As discussed
above, there are no such deficiencies in the Examiner’s combination of
Kojima, Takeuchi, Guinther, and Peter for either Rao or Murachi to remedy.
It follows that the Examiner has not erred in determining that: (1) the
combination of Kojima, Takeuchi, Guinther, Peter, and Rao renders claims 3
and 10 unpatentable; and (2) the combination of Kojima, Takeuchi,
Guinther, Peter, and Murachi renders claims 4 and 11 unpatentable.

IV. CONCLUSION
For the foregoing reasons, the Examiner has not erred in rejecting
claims 1–4, 8–11, 15, and 16 as being unpatentable under 35 U.S.C.
§ 103(a).

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V. DECISION
We affirm the Examiner’s decision to reject claims 1–4, 8–11, 15, and
16.
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

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