Ex Parte Liu et al

Board of Patent Appeals and Interferences

Jun 29, 2009

11062358 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ZHENGBAI LIU and PUNING WEI
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Appeal 2009-001132
Application 11/062,358
Technology Center 3700
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Decided:1 June 29, 2009
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Before LINDA E. HORNER, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

Appeal 2009-001132
Application 11/062,358

2
STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1-15 under 35 U.S.C. § 103(a) 3
(2002) as being unpatentable over Coleman (US 2006/0042233 A1, publ. 4
Mar. 2, 2006) and May (US 6,820,417 B2, issued Nov. 23, 2004). We have 5
jurisdiction under 35 U.S.C. § 6(b) (2002). 6
We sustain the rejections of claims 1-4, 6 and 8-15. We reverse the 7
rejections of claims 5 and 7. 8
Claim 1 is typical of the claims on appeal: 9
10
1. A method of operating a compression 11
ignition engine comprising: 12
processing certain data to select between an 13
alternate diesel combustion mode and a 14
conventional diesel combustion mode, and 15
a) when the result of the processing 16
selects the conventional diesel combustion mode, 17
fueling one or more cylinders of the engine to 18
cause conventional diesel combustion in each such 19
cylinder, and causing the resulting exhaust gas to 20
be treated by a diesel particulate filter (DPF) in an 21
exhaust system of the engine before exiting the 22
exhaust system, and 23
b) when the result of the processing 24
selects the alternative diesel combustion mode, 25
fueling one or more cylinders of the engine to 26
create in each such cylinder an in-cylinder fuel-air 27
charge that ignites by auto-ignition as the charge is 28
increasingly compressed, and causing the resulting 29
exhaust gas to by-pass the DPF as the exhaust gas 30
passes through the exhaust system. 31
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ISSUES 1
The Appellants argue claims 1-4, 6, 8-10 and 13-15 as a group for 2
purposes of the rejection under § 103(a). (App. Br. 7-10.) Claim 1 is 3
representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). The 4
Examiner finds that Coleman discloses an apparatus which necessarily 5
performs each limitation of claim 1 except one: Coleman discloses treating 6
exhaust gas by a nitrogen oxide [“NOx”] adsorber rather than by a 7
particulate filter. The Examiner concludes that it would have been obvious 8
from the teachings of Coleman and May to place a particulate filter in series 9
with the NOx adsorber in Coleman’s exhaust system. (Ans. 4.) 10
The Appellants disagree, contending that Coleman and May present 11
diverse solutions to problems relating to NOx adsorbers rather than to 12
particulate filters. (App. Br. 9.) The Appellants argue that Coleman and 13
May do not even recognize the problem addressed by the subject matter of 14
the claims on appeal. (Id.) The Appellants also contend that the failure of 15
Coleman to recognize the subject matter of the claims on appeal is evidence 16
that the subject matter would not have been obvious. (App. Br. 8.) 17
The Appellants argue claims 5, 7, 11 and 12 together as a group, 18
separately from claims 1-4, 6, 8-10 and 13-15 for purposes of the rejection 19
under § 103(a). (App. Br. 10-11.) With respect to claims 5, 7, 11 and 12, 20
the Examiner finds that Coleman discloses opening and closing a bypass 21
valve to close a bypass in parallel flow relationship to the NOx adsorber (and 22
to a particulate filter placed in series with the adsorber) in the exhaust 23
system. (Ans. 5.) The Appellants disagree. (App. Br. 11.) 24
This appeal turns on three issues: 25
Appeal 2009-001132
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Have the Appellants shown that the Examiner failed to 1
articulate reasoning with some rational underpinning sufficient 2
to support the Examiner’s prima facie conclusion that it would 3
have been obvious from the teachings of Coleman and May to 4
place a particulate filter in series with Coleman’s NOx adsorber 5
in Coleman’s exhaust system? 6
Have the Appellants shown that the Examiner failed to 7
give sufficient weight to any objective evidence of 8
nonobviousness? 9
Have the Appellants shown that the Examiner failed to 10
articulate reasoning with some rational underpinning sufficient 11
to support the Examiner’s conclusion that it would have been 12
obvious from the teachings of Coleman and May to open or 13
close a bypass valve so as to open or close a bypass in parallel 14
flow relationship to Coleman’s NOx adsorber and to a 15
particulate filter placed in series with the adsorber? 16
17
FINDINGS OF FACT 18
The record supports the following findings of fact (“FF”) by a 19
preponderance of the evidence. 20
1. May discloses that NOx emissions and particulate matter 21
emissions from diesel combustion engines were known environmental 22
problems. (May, col. 1, ll. 27-30.) Coleman discloses that NOx emissions 23
and particulate matter emissions must be reduced to meet evolving 24
government standards. (Coleman 1, ¶ 0004). 25
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2. Coleman discloses that compression ignition engines operating 1
in a homogeneous charge compression ignition [“HCCI”] combustion mode 2
were known to yield significant reductions in emission byproducts as 3
compared to engines operating in a standard diesel combustion mode. 4
(Coleman 1, ¶ 0007.) 5
3. Coleman discloses an internal combustion engine 10 having 6
cylinders 16. (Coleman 2, ¶ 0018.) 7
4. Coleman’s engine also includes an electronic control unit 8
[“ECU”] 44 and at least one sensor 46. (Coleman 3, ¶ 0024.) 9
5. Coleman discloses using the ECU 44 to process information 10
from the sensor 46 to select between delivering an HCCI fuel charge or a 11
standard diesel fuel charge to one or more cylinders 16 of the engine 10. 12
(Id.; see also Coleman 3-4, ¶¶ 0028-30.) In the HCCI combustion mode, the 13
fuel charge fuels the one or more cylinders to create in each such cylinder 16 14
an in-cylinder fuel-air charge that ignites by auto-ignition as the charge is 15
increasingly compressed. (See Coleman 2, ¶ 0021.) 16
6. The exhaust system of Coleman’s engine 10 includes a nitrogen 17
oxide [“NOx”] adsorber 38. (Coleman 3, ¶ 0023.) The exhaust system of 18
Coleman’s engine 10 also includes a bypass path 40 that enables the exhaust 19
gas to be routed around the NOx adsorber 38. (Id.) 20
7. Coleman discloses that the ECU 44 causes the exhaust gas to 21
contact the NOx adsorber 38 so that the exhaust gas is treated by the NOx 22
adsorber 38 when the engine 10 operates in the standard diesel combustion 23
mode. (Coleman 4, ¶ 0030.) 24
8. Coleman discloses that the ECU 44 causes the exhaust stream 25
to bypass the NOx adsorber 38 as the exhaust gas passes through the exhaust 26
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system when the engine 10 operates in the HCCI combustion mode. 1
(Coleman 4, ¶ 0029.) 2
9. Coleman does not disclose a valve capable of causing the 3
exhaust stream to bypass the NOx adsorber 38. In particular, page 3, 4
paragraph 23 of Coleman does not disclose a valve. 5
10. May discloses an exhaust aftertreatment system 30 for a diesel 6
engine 12 including a diesel particulate filter 16; a NOx adsorber 18; an 7
exhaust bypass 32; and a bypass valve 34. (May, col. 5, ll. 39-44.) 8
11. Exhaust exiting the diesel engine 12 flows through the 9
particulate filter 16 to remove particulate matter and through the NOx 10
adsorber 18, which removes NOx. (May, col. 5, ll. 8-11.) 11
12. Figure 1 of May shows the bypass valve 34 in a divider 12
immediately upstream of the exhaust bypass 32 and not in the exhaust 13
bypass 32. 14
15
PRINCIPLES OF LAW 16
A claim is unpatentable for obviousness under § 103(a) if “the 17
differences between the subject matter sought to be patented and the prior art 18
are such that the subject matter as a whole would have been obvious at the 19
time the invention was made to a person having ordinary skill in the art to 20
which said subject matter pertains.” In Graham v. John Deere Co., 383 U.S. 21
1 (1966), the Supreme Court set out factual inquiries to be considered in 22
determining whether claimed subject matter would have been obvious: 23
24
Under § 103, the scope and content of the prior art 25
are to be determined; differences between the prior 26
art and the claims at issue are to be ascertained; 27
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and the level of ordinary skill in the pertinent art 1
resolved. Against this background, the 2
obviousness or nonobviousness of the subject 3
matter is determined. Such secondary 4
considerations as commercial success, long felt but 5
unsolved needs, failure of others, etc., might be 6
utilized to give light to the circumstances 7
surrounding the origin of the subject matter sought 8
to be patented. As indicia of obviousness or 9
nonobviousness, these inquiries may have 10
relevancy. 11
12
Id., 383 U.S. at 17-18. “On appeal to the Board, an applicant can overcome 13
a rejection [under § 103(a)] by showing insufficient evidence of prima facie 14
obviousness or by rebutting the prima facie case with evidence of secondary 15
indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 16
2006)(emphasis omitted). 17
18
ANALYSIS 19
Coleman discloses an apparatus which necessarily performs each 20
limitation of representative claim 1 except one: Coleman discloses treating 21
exhaust gas by a nitrogen oxide [“NOx”] adsorber rather than by a 22
particulate filter. (FF 3-8.) Coleman and May each disclose a known 23
market pressure for automotive manufacturers to reduce both NOx and 24
particulate emissions. (See FF 1.) May discloses removing both NOx and 25
particulate emissions by treating exhaust gas by a particulate filter placed in 26
series with a NOx adsorber. (FF 10-11.) The NOx adsorber removes NOx 27
while the particulate filter removes particulates. (FF 11.) Coleman discloses 28
treating exhaust gas by a NOx adsorber when the engine operates in a 29
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standard diesel combustion mode, and bypassing the NOx adsorber when the 1
engine operates in a HCCI combustion mode. (FF 7-8.) 2
The teachings of May would have provided one of ordinary skill in 3
the art reason to place a particulate filter in series with Coleman’s NOx 4
adsorber, namely, to remove both NOx and particulate emissions. The 5
Appellants do not appear to contend either that the placement of a particulate 6
filter in series with a NOx adsorber would have been beyond the level of 7
ordinary skill in the art, or that the placement was not reasonably likely to 8
succeed in reducing both NOx and particulate emissions. The Examiner has 9
established a prima facie case that the subject matter of claims 1-4, 6, 8-10 10
and 13-15 would have been obvious from the teachings of Coleman and 11
May. 12
The Appellants state in the Specification that “operation of a vehicle 13
powered by a diesel engine could be improved if the engine could operate in 14
ways that minimize . . . regeneration-induced disruptions and/or in ways that 15
make the need to regenerate the [diesel particulate filter] less frequent.” 16
(Spec. 5, ¶ 0016.) The Appellants correctly assert that neither Coleman nor 17
May directly addresses this issue. (See App. Br. 9.) A combination may be 18
obvious for reasons other than those described in an applicant’s 19
specification, however. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 20
420 (2007). Section 103(a) itself contemplates that the subject matter of a 21
claim may be obvious even if not identically disclosed or described as set 22
forth in 35 U.S.C. § 102 (2002). The subject matter of representative claim 23
1 is obvious even though the named inventors of Coleman addressed a 24
different problem and consequently failed to identically disclose that subject 25
matter. 26
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The Appellants provide no objective evidence of any secondary 1
indicium of nonobviousness. The Appellants do not rely on any affidavits or 2
declarations filed during the prosecution of the application underlying this 3
appeal. (See App. Br. 15.) Nor do the Appellants point to any comparative 4
data in the Specification bearing on the patentability of the claims on appeal. 5
Instead, the Appellants ask us to draw a legal conclusion from the disclosure 6
of Coleman different from the conclusion drawn by the Examiner. (See 7
App. Br. 8.) This is the quintessence of attorney argument, which is not 8
evidence. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). The 9
disclosures of Coleman and May as a whole provide a rational underpinning 10
for the Examiner’s conclusion that the subject matter of claims 1-4, 6, 8-10 11
and 13-15 would have been obvious. 12
With respect to claims 5, 7, 11 and 12, the Examiner finds that 13
Coleman discloses closing a bypass valve to close a bypass in parallel flow 14
relationship to the NOx adsorber (and to a particulate filter placed in series 15
with the adsorber) in the exhaust system. (Ans. 5.) The Appellants correctly 16
point out that neither Coleman nor May discloses opening or closing a 17
bypass valve in an exhaust bypass in parallel flow relationship to a 18
particulate filter. (App. Br. 11; see FF 9 and 12.) The Examiner provides no 19
reasoning other than the erroneous finding that Coleman discloses opening 20
or closing a valve in the bypass to support the conclusion that it would have 21
been obvious to open or close such a valve to open or close the bypass. 22
23
CONCLUSIONS 24
The Appellants have not shown that the Examiner failed to articulate 25
reasoning with some rational underpinning sufficient to support the 26
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Examiner’s prima facie conclusion that it would have been obvious from the 1
teachings of Coleman and May to place a particulate filter in series with 2
Coleman’s NOx adsorber in Coleman’s exhaust system. 3
The Appellants have not shown that the Examiner failed to give 4
sufficient weight to any objective evidence of nonobviousness. The 5
Appellants have not presented any objective evidence of nonobviousness. 6
Therefore, the Appellants have not shown that the Examiner erred in 7
rejecting claims 1-4, 6, 8-10 and 13-15 under § 103(a) as being unpatentable 8
over Coleman and May. 9
The Appellants have shown that the Examiner failed to articulate 10
reasoning with some rational underpinning sufficient to support the 11
Examiner’s conclusion that it would have been obvious from the teachings 12
of Coleman and May to open or close a bypass valve so as to open or close a 13
bypass in parallel flow relationship to Coleman’s NOx adsorber and to a 14
particulate filter placed in series with the adsorber. Since claims 5 and 7 15
recite the steps of opening or closing a valve in the bypass, the Appellants 16
have shown that the Examiner erred in rejecting claims 5 and 7 as 17
unpatentable over Coleman and May. Since the Appellants have not shown 18
that claims 11 and 12 are limited to compression ignition engines having 19
bypass valves in such bypasses, the Appellants have not shown that the 20
Examiner erred in rejecting claims 11 and 12 under § 103(a) as being 21
unpatentable over Coleman and May. 22
23
DECISION 24
We AFFIRM the rejections of claims 1-4, 6 and 8-15. 25
We REVERSE the rejections of claims 5 and 7. 26
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED-IN-PART 5
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mls 10
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INTERNATIONAL ENGINE INTELLECTUAL 14
PROPERTY COMPANY 15
4201 WINFIELD ROAD 16
P.O. BOX 1488 17
WARRENVILLE, IL 60555 18