Ex parte MORSBACH et al.

Board of Patent Appeals and Interferences

Sep 17, 1998

08014407 (B.P.A.I. Sep. 17, 1998)

Application for patent filed February 5, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BERND MORSBACH,
HELMUT DAUDEL, and UWE GAERTNER
__________
Appeal No. 96-0153
Application 08/014,4071
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS, and OWENS, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0153
Application No. 08/014,407
2
This is a decision on an appeal from the final rejection
of claims 1 through 6 which are all of the claims remaining in
the application.
The subject matter on appeal relates to a process for
selective catalytic reduction of nitrogen oxides from exhaust
gases using pulsed superstoichiometric addition of NH or NH -3 3
releasing substances. Claims 1 and 5 are representative of
this appealed subject matter and read as follows:
1. A process for selective catalytic reduction of
nitrogen oxides from exhaust gases, using pulsed
superstoichiometric addition of NH or NH -releasing3 3
substances, which comprises controlling the pulsed
superstoichiometric addition of NH in such a way that, after3
it has started, the addition is interrupted again only when
the amount of NH stored in the catalyst has reached a3
specific upper threshold value which is predetermined in
accordance with the catalyst properties and the catalyst
volume, the amount of NH stored being calculated from the3
difference between the metered amount of NH and the amount of3
NO separated off, which is determined from the NOx x
concentration in the exhaust gas and the average degree of
separation, and the addition of NH is resumed only when the3
amount of NH stored in the catalyst, which is determined in3
the same way, has reached a predetermined lower threshold
value, this pulsed addition of NH being interrupted after a3
predetermined number of cycles until the amount of NH stored3
in the catalyst, which is determined in the manner described,
has completely reacted, this completing one entire cycle of
the pulsed addition of NH .3
5. The process of claim 1, wherein the NO concentrationx
downstream of the catalyst is measured and the interruption in
NH metering after the predetermined number of cycles does not3
Appeal No. 96-0153
Application No. 08/014,407
3
continue until the NH stored in the catalyst has completely3
reacted but the addition of NH is resumed when the NO3 x
concentration downstream of the catalyst exceeds a
predetermined threshold value.
The following prior art is relied upon by the examiner as
evidence of obviousness:
Brand et al. 4,963,332 Oct. 16, 1990
The admitted prior art described on pages 1 through 3 of the
appellants' specification.
All of the claims on appeal stand rejected as follows:
(1) under 35 U.S.C. § 112, second paragraph, for
failing to particularly point out and distinctly
claim the subject matter which the appellants regard
as their invention;
(2) under 35 U.S.C. § 112, first paragraph, as being
based upon a specification disclosure which would
not enable one with ordinary skill in the art to
make and use the here claimed invention; and
(3) under 35 U.S.C. § 103 as being unpatentable over
the admitted prior art in view of Brand.
We refer to the brief and reply brief and to the answer
for a complete exposition of the opposing viewpoints expressed
by the appellants and the examiner concerning the above noted
rejections.
OPINION
Appeal No. 96-0153
Application No. 08/014,407
4
For the reasons which follow, we cannot sustain any of
the rejections advanced by the examiner on this appeal.
However,
pursuant to our authority under 37 CFR § 1.196(b), we will
make a new rejection of claims 5 and 6 under the fourth
paragraph of 35 U.S.C. § 112.
The section 112, second paragraph, rejection
On page 4 of the answer, the examiner expresses his
position concerning this rejection in the following manner:
The word "predetermined" is indefinite, in that it
does not specifically and distinctly claim a value
that is considered to be the invention. If one were
to select a "predetermined" value equal to "0" which
would meet the limitations of the claims, then there
would be no ammonia loading and therefore the claims
would be unclear. The use of the word
"predetermined" is taken to mean merely the
preselecting of a value.
It is well settled that the definiteness of claim
language must be analyzed, not under a vacuum but, always in
light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.
Appeal No. 96-0153
Application No. 08/014,407
5
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). When so interpreted, it is apparent that the claim
term "predetermined" does not "mean merely the preselecting of
a value" such as "0" as the examiner urges. Indeed, the
examiner's contention that the selection of "a 'predetermined'
value equal to '0' . . . would meet the limitations of the
claims . . . [whereby] there would be no ammonia loading" is
entirely inconsistent with the appellants' application
disclosure.
Under these circumstances, we cannot sustain the
examiner's section 112, second paragraph, rejection of claims
1 through 6.
The section 112, first paragraph, rejection
The examiner's nonenablement position, as expressed on
page 3 of the answer, is set forth below:
In the present disclosure, on page 3, lines 17-19,
it is stated that the threshold value is determined
in accordance with the catalyst properties and
catalyst volume. What properties of the catalyst
are used to make this determination and how exactly
are they correlated to the values? Due to the
unpredictable nature of catalytical processes, it is
submitted that one of ordinary skill in the art
would not know which specific properties could be
used to determine the present operating parameters
without undue experimentation.
Appeal No. 96-0153
Application No. 08/014,407
6
The portion of the specification disclosure above
referred to by the examiner relates to the upper threshold
value of the amount of NH stored in the catalyst. The3
appellants' disclosed correlation between this upper threshold
amount and catalyst properties is logical and rational since
the amount of NH that can be stored in a catalyst clearly3
depends upon such properties as the NH adsorption capability3
of the particular catalyst in
question. This would have been appreciated by one with
ordinary skill in the art as evinced, for example, by the
teaching on lines 34 through 38 in column 1 of Brand.
We appreciate that experimentation may be required in
order to determine the NH amount that can be stored or3
adsorbed by a particular catalyst; the appellants expressly
disclose as much (e.g., see lines 12 and 13 on specification
page 4). Nevertheless, the mere fact that experimentation,
even a considerable amount of experimentation, is involved
does not necessarily support a conclusion that the required
degree of experimentation is "undue". See In re Angstadt, 537
F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976) and Ex parte
Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int. 1986). On
Appeal No. 96-0153
Application No. 08/014,407
7
this record, the experimentation required to determine the
upper amount of NH storable in a particular catalyst appears3
to be straightforward, and the examiner has failed to present
persuasive argument or evidence in support of his position
that the amount of experimentation would be "undue".
In light of the foregoing, we also cannot sustain the
examiner's section 112, first paragraph, rejection of claims 1
through 6.
The section 103 rejection
We agree with the appellants that Brand teaches away from
the examiner's proposed combination thereof with the admitted
prior art. Specifically, Brand teaches using a measuring and
regulatory control for adding ammonia to exhaust gas in such a
manner as to avoid ammonia adsorption by the catalyst and the
undesirable effects associated therewith (see lines 34 through
45 in column 1 and lines 17 through 19 in column 4 of the
reference) which is antithetical to the admitted prior art
technique wherein the catalyst is deliberately adsorbed or
loaded with NH . We also agree with the appellants' basic3
position that neither the admitted prior art nor Brand
contains any teaching or suggestion of the here claimed
Appeal No. 96-0153
Application No. 08/014,407
8
features involving "predetermined" values. The examiner's
opposing view is premised upon his previously discussed
unacceptable position that "these values encompass any value .
. . [including] the value of 0" (answer, page 6).
Under these circumstances, the section 103 rejection of
claims 1 through 6 as being unpatentable over the admitted
prior art in view of Brand likewise cannot be sustained.
The new rejection pursuant to § 1.196(b)
The last 6 lines of independent claim 1 define a
limitation wherein the pulsed addition of NH is interrupted3
after a predetermined number of cycles until the amount of NH3
stored in the catalyst has completely reacted. This
independent claim limitation is described on lines 5 through
24 on specification page 5 and is referred to as a "discharge
phase" which compensates for differences between calculated
and actual loading of the catalyst with NH . In contrast,3
claim 5, which depends from claim 1, defines a limitation
wherein the claim 1 interruption in NH "does not continue3
until the NH stored in the catalyst has completely reacted"3
but instead "the addition of NH is resumed when the NO3 x
concentration downstream of the catalyst exceeds a
Appeal No. 96-0153
Application No. 08/014,407
9
predetermined threshold value". This claim 5 limitation is
described in the paragraph bridging specification pages 5 and
6 as an improved technique for effecting the earlier mentioned
compensation while avoiding disadvantages associated with
completely reacting the stored NH . It is apparent that the3
limitations of independent claim 1 and dependent claim 5 are
incompatible. Indeed, the independent claim requirement that
stored NH be "completely reacted" is expressly repudiated by3
the
dependent claim 5 recitation that the claim 1 interruption
step "does not continue until the NH stored in the catalyst3
has completely reacted".
According to the fourth paragraph of 35 U.S.C. § 112, a
dependent claim "shall . . . specify a further limitation of
the subject matter claimed . . . [and] shall be construed to
incorporate by reference all the limitations of the claim to
which it refers". As explained above, dependent claim 5 does
not further limit or incorporate by reference all the
limitations of parent claim 1. On the contrary, this
dependent claim expressly repudiates a limitation of its
parent claim. For these reasons, we hereby invoke our
Appeal No. 96-0153
Application No. 08/014,407
10
authority under 37 CFR § 1.196(b) and reject claim 5 as well
as claim 6 which depends therefrom (and therefore exhibits the
same infirmity) for failing to comply with the fourth
paragraph of 35 U.S.C. § 112.
Summary
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
Appeal No. 96-0153
Application No. 08/014,407
11
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 1.196(b)
John D. Smith )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
tdc
Appeal No. 96-0153
Application No. 08/014,407
12
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