Ex Parte Opris

Board of Patent Appeals and Interferences

Apr 26, 2010

11045294 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CORNELIUS NICOLAE OPRIS
____________

Appeal 2009-004140
Application 11/045,294
Technology Center 3700
____________

Decided: April 26, 2010
____________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004140
Application 11/045,294

2
STATEMENT OF THE CASE
Cornelius Nicolae Opris (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1-25. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a filter in an exhaust
system of a combustion engine that is cleaned by "regeneration," wherein
the particulates on the filter are heated to a temperature at which the particles
combust. Spec., paras. 2, 5.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A regeneration system, comprising:
a power source configured to provide a
power output;
an exhaust element including a plurality of
separately regenerable filter sections;
a regeneration device operably connected to
the power source and adapted to use at least a
portion of the power output to regenerate one or
more of the filter sections of the exhaust element;
and
a controller configured to:
determine an amount of the power output
available for regeneration of the exhaust element;
and
determine a number of filter sections that
may be regenerated based on the amount of the
power output available for regeneration.
Appeal 2009-004140
Application 11/045,294

3
The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Arai US 5,090,200 Feb. 25, 1992
Dementhon US 6,090,172 Jul. 18, 2000
Kosaka US 6,959,541 B2 Nov. 1, 2005
Otake US 7,159,384 B2 Jan. 9, 2007

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 102(b) of claims 1-5, 8-13, 16-19, 22, and 23 as anticipated by
Dementhon, and under 35 U.S.C. § 103(a) of claim 6 as unpatentable over
Dementhon and Otake; of claims 7 and 24 as unpatentable over Dementhon
and Arai; and of claims 14, 15, 20, 21, and 25 as unpatentable over
Dementhon and Kosaka1.

SUMMARY OF DECISION
We AFFIRM.

ISSUES
Independent claims 1, 16, and 22 require, in relevant part, "[determine
or determining] an amount of . . . power . . . available for regeneration," and
"[determine or determining] a number of . . . filter sections that may be
regenerated based on the amount of . . . power . . . available for

1 Appellant further presents arguments regarding the § 102(b) rejection of
claims 1, 2, 8, 12, 13, 16, 17, 19, and 22 as anticipated by US Patent
4,505,107 issued to Yamaguchi (see Final Office Action mailed Aug. 21,
2007), however, the Examiner has not maintained this rejection in the
Examiner's Answer.
Appeal 2009-004140
Application 11/045,294

4
regeneration." The Examiner found that Dementhon anticipates these claims
by describing "evaluating the electric resources available in the vehicle," and
"activating selectively the resistive element or elements as a function of the
… electrical power." Ans. 3-4; Dementhon, col. 2, ll. 56-58. Appellant
separately argues claims 1, 16, and 22, and for each states that Dementhon
does not describe exactly the above-recited claim language common to the
independent claims. Appeal Br. 12-18. Appellant does not separately argue
dependent claims 2, 17-19, or 23. Accordingly, these claims stand or fall
with the independent claim from which they depend. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Claim 3 requires a controller that is "configured to calculate a
regeneration efficiency value." The Examiner found that Dementhon
describes making a filter "more favorable to regeneration" and that
"minimizes the energy supply required for regeneration" based on the engine
running conditions. Ans. 4, 10-11. Appellant argues that the reference
merely discloses "'regeneration efficiency'" but does not disclose the features
recited in claim 3. Appeal Br. 14. Appellant separately argues dependent
claims 4 and 5, relying on the same argument presented for claim 3. Appeal
Br. 15.
In addition, Appellant separately argues the Examiner's rejections of
claim 6 as unpatentable over Dementhon and Otake, claims 7 and 24 as
unpatentable over Dementhon and Aria, and claims 14, 15, 20, 21, and 25 as
unpatentable over Dementhon and Kosaka. Appellant argues each of these
rejections as a group, and for each, argues that the secondary reference does
not cure the underlying deficiencies identified by Appellant in the arguments
regarding independent claims 1, 16, and 22. Appeal Br. 22-26.
Appeal 2009-004140
Application 11/045,294

5
Therefore, the issues in this appeal are:
(1) Whether Dementhon describes a controller to, or method of
controlling by, "[determine or determining] an amount of . . . power
available for regeneration," and "[determine or determining] a number
of filter sections that may be regenerated based on the amount of . . .
power . . . available for regeneration."
(2) Whether Dementhon describes a regeneration system that is
"configured to calculate a regeneration efficiency value."

PRINCIPLES OF LAW
"For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference." Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677
(Fed. Cir. 1988). These elements must be arranged as in the claim under
review, Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
730 F.2d 1452, 1458 (Fed. Cir. 1984), but this is not an "'ipsissimis verbis'"
test, Akzo N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.
11 (Fed. Cir. 1986), cert. denied, 482 U.S. 909 (1987).

ANALYSIS
Issue (1)
Appellant argues that "Dementhon does not disclose…," followed by
rote recitation of the claim language identified above. See Appeal Br. 12-14.
Appellant's argument merely appears to focus on whether Dementhon recites
the claim language verbatim. Appellant's argument, however, fails to
explain why the Examiner's particular findings are in error. A reference does
Appeal 2009-004140
Application 11/045,294

6
not fail as an anticipatory reference merely because it does not contain a
description of the subject matter of the appealed claim in ipsissimis verbis.
In re May, 574 F.2d 1082, 1090 (CCPA 1978). On the other hand, the
Examiner has provided particular findings directed to each element of the
claim. See Ans. 3-4, 8-10. In particular, the Examiner found that
Dementhon "evaluat[es] the electric resources available in the vehicle," and
"activat[es] selectively the resistive element or elements as a function of the
detected fouling and of the electrical power." Ans. 9.
We find that the record before us supports the Examiner's findings. In
particular, the step or function in Dementhon of "evaluating the electric
resources available in the vehicle" (col. 2, l. 56) appears to satisfy the
claimed "[determine or determining] an amount of the power output
available for regeneration" of claims 1, 16, and 22. We find that Dementhon
describes an acute awareness of the relationship between the power
requirements of the regeneration elements and the requirements and supply
capabilities of the vehicle. See, e.g., col. 4, ll. 45-52 (power supply varies
according to power strategies, based on engine need and fouling of filters),
col. 5, l. 60 to col. 6, l. 8 (regeneration power determined as function of
available power). Thus, we find that when Dementhon's controller evaluates
the electric resources available in the vehicle, the controller is determining
the power available for the regeneration elements, taking into consideration
the needs of both the elements and the vehicle.
Further, the step or function in Dementhon of "activating selectively
the resistive element or elements as a function of the detected fouling and of
the electrical power" (col. 2, ll. 58-60) appears to satisfy the claimed
"[determine or determining] a number of filter sections that may be
Appeal 2009-004140
Application 11/045,294

7
regenerated based on the amount of the power output available for
regeneration" of claims 1, 16, and 22. We find that Dementhon describes
that the resistive elements are activated selectively (i.e., individually chosen)
based on the power demand of the engine, such that, for example, the
elements can be deactivated based upon maximum engine power demand.
See col. 6, ll. 1-8; see also claim 1 "a control element ... which controls
independently each of the … elements according to … electrical power
made available." [Emphasis added].

Issue (2)
Appellant argues that Dementhon merely mentions "regeneration
efficiency," but does not describe the limitation of claim 3 requiring that the
regeneration system controller is "configured to calculate a regeneration
efficiency value based on the number of filter sections regenerated and an
amount of power used for regeneration." As we discussed above,
anticipation does not require an identity of language. See In re May, 574
F.2d 1090. The Examiner found that Dementhon indeed describes this
limitation, given that Dementhon is directed to a filter concerned with using
a low amount of power and efficient burning of soot. Ans. 4, 10-11. In
particular, the Examiner found that Dementhon determines a number of filter
sections being regenerated and an amount of power used in that
regeneration, and considers various parameters and previous filter cycles.
Ans. 11. Appellant has not specifically explained why the Examiner erred in
finding that these teachings in Dementhon satisfy the claim limitation at
issue.
Appeal 2009-004140
Application 11/045,294

8
Appellant's Specification indicates that the "regeneration efficiency
value may be based on the number of filter sections regenerated and an
amount of power used for regeneration." Spec., para. 45. Appellant's
Specification also provides an exemplary equation that is not recited in the
claims. Id., equation [6].
We find that one of the purposes of Dementhon's invention is to
"provide[] energy saving[s]." Col. 2, ll. 15-17. As shown in our findings
above, Dementhon controls the number of filter elements undergoing
regeneration, based upon the power available for regeneration. Dementhon
is concerned with utilizing the least amount of energy to achieve maximum
filter regeneration. In particular, we find that Dementhon describes that the
activation of filter zones having certain temperatures can induce the
regeneration of other filter zones. Col. 5, ll. 1-25. Thus, Dementhon is
describing a controller that maximizes regeneration efficiency by
considering the number of filters regenerated by activating a certain
minimum number of filters and the amount of power used in this
regeneration strategy.

CONCLUSIONS
(1) The Examiner did not err in determining that Dementhon describes a
controller to, or method of controlling by, "[determine or determining]
an amount of . . . power . . . available for regeneration," and
"[determine or determining] a number of filter sections that may be
regenerated based on the amount of . . . power . . . available for
regeneration."
Appeal 2009-004140
Application 11/045,294

9
(2) The Examiner did not err in determining that Dementhon describes a
regeneration system that is "configured to calculate a regeneration
efficiency value."

DECISION
The Examiner's decision is affirmed as to claims 1-25.
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) (2007).

AFFRIMED

hh

CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413