Ex Parte Sun et al

Board of Patent Appeals and Interferences

Jun 24, 2009

11020838 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte MIN SUN, ZORNITZA PAVLINOVA 8
PAVLOVA-MACKINNON and KEVIN DEAN SISKEN 9
____________________ 10
11
Appeal 2009-002328 12
Application 11/020,838 13
Technology Center 3700 14
____________________ 15
16
Decided:1 June 24, 2009 17
____________________ 18
19
Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, 20
FRED E. McKELVEY, Senior Administrative Patent Judge, and 21
FRED A. SILVERBERG, Administrative Patent Judge. 22
23
SILVERBERG, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, 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 Notification Date (electronic delivery).
Appeal 2009-002328
Application 11/020,838

2
STATEMENT OF THE CASE 1
Min Sun et al. (Appellants) seek our review under 35 U.S.C. § 134 of 2
the final rejection of claims 1-3, 7, 8, 13-15, 17, 18 and 20. We have 3
jurisdiction under 35 U.S.C. § 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We AFFIRM. 7
8
THE INVENTION 9
The Appellants’ claimed invention is directed to a method for 10
controlling exhaust gases emitted from an internal combustion engine 11
(Pub. 1: para. [0002]2). 12
The invention is readily understood by reference to Figure 1 and 13
Claim 1. 14

2 The Examiner’s Answer makes references to the specification by way of
citation to paragraph numbers in the U.S. Patent Publication 2006/0130465
A1 (Pub.). We follow the same approach.
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Figure 1 is reproduced below: 1
2
3
Figure 1 shows a vehicle powertrain system 10 (Pub. 1: para. [0013]). 4
5
Claim 1, reproduced below, is representative of the claimed subject 6
matter (matter in bold and parentheses added): 7
1. A method for controlling oxygen levels in exhaust gases 8
emitted from an internal combustion engine 14 (Pub. 1: paras. 9
[0014] and [0015]) having a particulate filter 44 (Pub. 1-2: 10
paras. [0016] and [0017], and fig. 1) in fluid communication 11
with the emitted exhaust gases to capture particulates, the 12
method comprising (Pub. 3-4: paras. [0033] and [0034]): 13
determining desired oxygen levels in the exhaust gases as 14
a function of a soot burn rate of the particulate filter during 15
regeneration (Pub. 3-4: paras. [0031], [0033] and [0034]); and 16
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controlling oxygen levels in the exhaust gases to 1
correspond with the desired oxygen levels by controlling an 2
amount of cooled exhaust gas recirculated to the engine from an 3
exhaust gas recirculation (EGR) cooled passage, the cooled 4
passage having an air cooler to cool the recirculated exhaust 5
gases (Pub. 2-4: paras. [0022], [0032] and [0033]; and fig. 1). 6
7
THE REJECTIONS 8
The Examiner relies upon the following as evidence of 9
unpatentability: 10
Allansson US 6,427,436 B1 Aug. 6, 2002 11
Tanaka (as translated3) JP 2003-201829 Jul. 18, 2003 12
(hereinafter Tanaka ‘829) 13
Tanaka US 2004/0194450 Oct. 7, 2004 14
(hereinafter Tanaka ‘450) 15
16
The following rejections by the Examiner are before us: 17
1. Claims 1-3, 7 and 8 are rejected under 35 U.S.C. § 103(a) as being 18
unpatentable over Tanaka ‘450 in view of Allansson. 19
2. Claims 13-15, 17, 18 and 20 are rejected under 35 U.S.C. § 103(a) as 20
being unpatentable over Tanaka ‘829 in view of Tanaka ‘450. 21
22
ISSUES 23
The issues before us are whether: (1) Tanaka ‘450 discloses 24
determining desired oxygen levels for exhaust gas recirculation based on 25
soot burn rates, as called for in claim 1 (App. Br. 4), and (2) Tanaka ‘450 26

3 We believe the translation is based on a "machine" translation (Tanaka
‘829, p.1, Notices (see item 1)). Appellants have not contested the
Examiner's use of a "machine" translation and have supplied no other
translation. Accordingly, we rely on the translation relied upon by the
Examiner.
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discloses using soot burn rates when determining desired exhaust gas 1
temperature, as called for in claim 13 (App. Br. 7). 2
3
FINDINGS OF FACT 4
We find that the following enumerated findings are supported by at 5
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 6
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 7
proceedings before the Office). 8
The Appellants’ Invention 9
1. The Appellants’ Specification discloses that “the controller 92 may 10
be programmed or otherwise instructed to determine the soot burn 11
rate of the particulate filter 44 as a function of particulate filter 12
temperature….” (matter in bold added) (Pub. 4: para. [0034]). 13
2. The Appellants’ Specification further discloses that “[o]f course, 14
however, the present invention contemplates any number of 15
parameters may be considered in determining the desired soot burn 16
rates, and in particular, that other regeneration related features and 17
parameters, such as exhaust gas temperature, exhaust gas flow rate, 18
and the like, may be considered.” (Pub. 3: para. [0031]). 19
3. The Appellants’ invention still further discloses that the internal 20
combustion engine 14 may be a diesel engine (Pub. 1: para. 21
[0014]). 22
4. The Appellants’ invention defines the term EGR as exhaust gas 23
recirculation (Pub. 2: para. [0021]). 24
25
26
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The Examiner’s Findings 1
Claim 1 2
5. Tanaka ‘450 discloses almost all of the limitations called for in 3
claim 1; in particular, the Examiner found that Tanaka ‘450 4
discloses determining desired oxygen levels in the exhaust gases as 5
a function of a soot burn rate of the particulate filter during 6
regeneration (para. [0081]) (Ans. 3). 7
6. Tanaka ‘450 further discloses controlling oxygen levels in the 8
exhaust gases to correspond with the desired oxygen levels by 9
controlling an amount of cooled exhaust gas recirculated to the 10
engine from an exhaust gas recirculation (EGR) cooled passage 15, 11
the cooled passage having a cooler 17 to cool the recirculated 12
exhaust gases (para. [0082]) (Ans. 4). 13
7. Tanaka ‘450 discloses selecting desired oxygen levels in the 14
exhaust gas based on filter temperature to maintain soot burning in 15
an appropriate combustion state zone (Ans. 6). 16
8. Tanaka ‘450 does not disclose that an air cooler is used to cool the 17
recirculated exhaust gas to the engine as called for in claim 1 (Ans. 18
4). 19
9. Allansson discloses that it is conventional in the art, to utilize an 20
air cooler for cooling the exhaust gas being recirculated to the 21
engine (Ans. 4). 22
Claim 13 23
10. Tanaka ‘829 discloses almost all of the limitations called for in 24
claim 13; in particular, Tanaka ‘829 discloses determining a 25
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desired exhaust gas temperature and controlling exhaust gas 1
recirculation (paras. [0024] and [0026]) (Ans. 5). 2
11. Tanaka ‘829 does not disclose determining the desired exhaust gas 3
temperature as a function of soot burn rates of the particulate filter 4
during regeneration as called for in claim 13 (Ans. 5). 5
12. Tanaka ‘450 discloses determining the desired exhaust gas 6
temperature as a function of soot burning and controlling the 7
exhaust gas temperature to prevent filter meltdown during filter 8
regeneration by maintaining the filter temperature within an 9
appropriate combustion zone (Ans. 6). 10
This Boards’ Findings 11
13. Tanaka ‘450 provides the following definitions: (1) a DPF is 12
defined as a diesel particulate filter (para. [0002]); particulate 13
incineration is defined as the regeneration of the DPF (para. 14
[0002]); (3) an ECU is defined as an electrical control unit (para. 15
[0058]); and (4) particulates are defined as soot (para. [0065]). 16
14. Tanaka ‘450 discloses an exhaust purification device (para. 17
[0001]), including a diesel engine 1 (paras. [0053] and [0054]), an 18
intake throttle valve 7, an exhaust passage 8, a catalyst 9, a DPF 19
12, upstream and downstream temperature sensors 10a, 10b and 20
upstream and downstream pressure sensors 11a, 11b (para. 21
[0055]), an EGR passage 15, an EGR valve 16 and an EGR cooler 22
17 (para. [0057]), and an ECU 21 (para. [0058]). 23
15. Tanaka ‘450 further discloses that the catalyst 9 and the DPF 12 24
are part of a continuous regenerative DPF that is constructed to be 25
capable of constantly and continuously incinerating particulates 26
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collected by the DPF 12, wherein the DPF 12 is located 1
downstream of the exhaust passage 8 (para. [0056] and fig. 1). 2
16. Tanaka ‘450 still further discloses that the ECU 21 cooperates with 3
the valve 7 and the EGR valve 16 to function as an oxygen supply 4
adjusting device (para. [0060]), wherein the oxygen supply 5
adjusting device adjusts the oxygen amount supplied to the DPF 12 6
to regenerate the DPF 12 (para. [0061]). 7
17. Tanaka ‘450 still further discloses diagrams showing maps for 8
setting an optimum oxygen amount as a function of the DPF 9
temperature for a case where a particulate collection amount is 10
appropriate (fig. 5) and excessive (fig. 6) [paras. [0038] and 11
[0039]). 12
18. In Tanaka ‘450, the amount of oxygen, the DPF temperature and 13
the particulate collection are taken into consideration as factors 14
affecting the particulate combustion state. Further, it is possible to 15
burn the particulates in the appropriate combustion state, and to 16
securely regenerate the DPF 12 without the DPF 12 being melted 17
down (para. [0081]). 18
19. In Tanaka ‘450, as a result of the control based on the oxygen 19
amount, the optimum oxygen amount can be determined from the 20
map shown in figures 5 or 6, wherein the desired particulate 21
combustion state can be found based on the map determination 22
(para. [0083]). 23
20. Appellants have not contested the teachings of Allansson or the 24
combinability of the teachings of Tanaka ‘450 and Allansson. 25
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21. Tanaka ‘829 discloses an exhaust emission control device of a 1
diesel engine 1, an EGR path 4a, and an EGR cooler 4b, an EGR 2
cooler bypass passage 4c, and a change over means 4d (paras. 3
[0012] and [0013]), wherein the EGR cooler 4b is installed in 4
passage 4a (paras. Abstract (see Solution), paras. [0007] and 5
[0013]), and temperature sensing means 7a, 7b (para. [0016]). 6
22. In Tanaka ‘829, the changeover means 4d supplies exhaust gas to 7
either the EGR cooler 4b or the bypass passage 4c (para. [0013]). 8
23. In Tanaka ‘829 the temperature sensing means 7a, 7b senses the 9
temperature of a diesel particulate filter (DPF) 5 (Abstract (see 10
Solution) and para. [0016]). 11
24. In Tanaka ‘829, the control means (ECU) 10 (para. [0017]) 12
switches the change over means 4d to supply exhaust gas to the 13
bypass passage 4c if the temperature sensed by 7a, 7b is lower 14
than a specified level (Abstract (see Solution), paras. [0024], 15
[0026] and [0028]). 16
25. Appellants have not contested the combinability of the teachings of 17
Tanaka ‘829 and Tanaka ‘450. 18
26. The ordinary meaning of the word “state” includes “mode or 19
condition of being.” Merriam-Webster’s Collegiate Dictionary 20
(10th ed. 1996). 21
27. The ordinary meaning of the word “rate” includes “valuation.” 22
Merriam-Webster’s Collegiate Dictionary (10th ed. 1996). 23
28. Additional findings as necessary appear in the Analysis portion of 24
this opinion. 25
26
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PRINCIPLES OF LAW 1
Appellants’ Burden 2
Appellants have the burden on appeal to the Board to demonstrate 3
error in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d 4
1606, 1614 (BPAI 2008) (on appeal, applicant must show examiner erred); 5
Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83 6
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509, 7
1519 (BPAI 2007). See also In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 8
2006) (“On appeal to the Board, an applicant can overcome a rejection 9
[under § 103] by showing insufficient evidence of prima facie obviousness 10
or by rebutting the prima facie case with evidence of secondary indicia of 11
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 12
1998)). 13
Once rejected over art, the applicants must show that the claimed 14
method performs and operates differently from the prior art. “The law is 15
replete with cases in which the difference between the claimed invention and 16
the prior art is some … variable within the claims. These cases have 17
consistently held that in such a situation, the applicant must show that the 18
particular range is critical, generally by showing that the claimed range 19
achieves unexpected results relative to the prior art range.” In re Woodruff, 20
919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations omitted). See also 21
Gardner v. TEC Sys., Inc., 725 F. 2d 1338, 1349 (Fed. Cir. 1984) 22
(obviousness determination affirmed because dimensional limitations in 23
claims did not specify a device which performed and operated differently 24
from the prior art). 25
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35 U.S.C. § 103 1
“Section 103 forbids issuance of a patent when ‘the differences 2
between the subject matter sought to be patented and the prior art are such 3
that the subject matter as a whole would have been obvious at the time the 4
invention was made to a person having ordinary skill in the art to which said 5
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 6
(2007). The question of obviousness is resolved on the basis of underlying 7
factual determinations including (1) the scope and content of the prior art, 8
(2) any differences between the claimed subject matter and the prior art, (3) 9
the level of skill in the art, and (4) where in evidence, so-called secondary 10
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 11
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 12
might be reordered in any particular case, the [Graham] factors continue to 13
define the inquiry that controls.”). 14
15
ANALYSIS 16
Appellants argue claims 1-3, 7 and 8 as a group. As such, we select 17
claim 1 as representative of the group, and claims 2, 3, 7 and 8 will stand or 18
fall with claim 1. Appellants argue claims 13-15, 17, 18 and 20 as a group. 19
As such, we select claim 13 as representative of the group, and claims 14, 20
15, 17, 18 and 20 will stand or fall with claim 13. 37 C.F.R. § 21
41.37(c)(1)(vii) (2007). 22
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Rejection of claims 1-3, 7 and 8 under 35 U.S.C. § 103(a) as being 1
unpatentable over Tanaka ‘450 in view of Allansson 2
3
Tanaka ‘450 discloses the basic invention as called for in claim 1 4
(Facts 13-19, and fig. 1 below), but does not disclose an air cooler used to 5
cool the recirculated exhaust gas to the engine (Fact 8). 6
Tanaka ‘450 Figure 1 is reproduced below: 7
8
9
Tanaka ‘450 Figure 1 shows an exhaust purification device (Facts 13-10
19). 11
The Examiner found that Allansson discloses the claimed air cooler 12
(Fact 9). Appellants have not contested the teachings of Allansson or the 13
combinability of the teachings of Tanaka ‘450 and Allansson (Fact 20). 14
Appellants contend that Tanaka ‘450 fails to disclose determining 15
desired oxygen levels for exhaust gas recirculation based on soot burn rates, 16
as called for in claim 1 (App. Br. 6). Appellants further contend that the 17
claimed invention considers how rapidly the soot is burning, i.e., soot burn 18
rate or temperature change in the DPF, when determining the oxygen level, 19
while Tanaka ‘450 fails to teach any such determination (App. Br. 6). 20
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The Appellants’ Specification discloses that the present invention 1
contemplates that any number of parameters may be considered in 2
determining soot burn rates, in particular, particulate filter temperature, and 3
the like (Facts 1 and 2). 4
The ordinary meaning of the word “state” includes “mode or 5
condition of being” (Fact 26) and the ordinary meaning of the word “rate” 6
includes “valuation” (Fact 27). We find that the soot burn state is a 7
condition wherein the soot is burning, while the soot burn rate is the amount 8
of soot that is burning, that is, how rapidly the soot is burning. 9
In Tanaka ‘450, figures 5 and 6 show a map of the optimum oxygen 10
as a function of the DPF temperature (Fact 17), wherein the amount of 11
oxygen and the DPF temperature are factors affecting the particulate 12
combustion state (Fact 18). Since figures 5 and 6 in Tanaka ‘450 show a 13
map of the optimum oxygen as a function of the DPF temperature, we 14
disagree with Appellant, and find that Tanaka ‘450 discloses using the 15
temperature change in the DPF to determine the oxygen level. By using 16
temperature change in the DPF to control oxygen levels, one skilled in the 17
art would understand that Tanaka is, in effect, using the temperature to 18
control the soot burn rate. In this respect, we note that Appellants tell us that 19
the soot burn rate can be controlled inter alia by temperature (Fact 1) (See 20
e.g., Pub.: p. 4, para. [0034]). 21
Further, Tanaka ‘450 discloses that the desired particulate combustion 22
"state" can be found based on the map determination in figures 5 or 6 (Fact 23
19). We find that since particulates are defined as soot (Fact 13), the 24
particulate combustion state is the soot burn "state." Therefore, we find that 25
in Tanaka ‘450, since the desired soot burn "state" is based upon oxygen and 26
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DPF temperature (Fact 17), the soot burn "rate" also would appear to be 1
based upon oxygen and the DPF temperature. 2
We agree with the Examiner’s finding that Tanaka ‘450 discloses 3
selecting desired oxygen levels in the exhaust gas based on filter temperature 4
to maintain soot burning in an appropriate combustion state zone (Fact 7). 5
We find that Tanaka ‘450 discloses determining desired oxygen levels for 6
exhaust gas recirculation based on soot burn rates as called for in claim 1. 7
Once rejected over art, the applicants must show that the claimed method 8
performs and operates differently from the prior art. See In re Woodruff, 911 9
F.2d at 1578. 10
Therefore, we conclude that the Appellants have not demonstrated 11
that the Examiner erred in rejecting claim 1 over Tanaka ‘450 in view of 12
Allansson. The Appellants have likewise not demonstrated error in the 13
Examiner’s rejection of claims 2, 3, 7 and 8, which depend from claim 1. 14
15
Rejection of claims 13-15, 17, 18 and 20 under 35 U.S.C. § 103(a) as being 16
unpatentable over Tanaka ‘829 in view of Tanaka ‘450 17
18
Tanaka ‘829 discloses the basic invention as called for in claim 13 19
(Facts 21-24, and the figure below), but does not disclose determining the 20
desired exhaust gas temperature as a function of soot burn rates of the 21
particulate filter during regeneration (Fact 11). 22
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Tanaka ‘829 figure is reproduced below: 1
2
Tanaka ‘829 figure shows an exhaust emission control device of a 3
diesel engine (Facts 21-24). 4
Appellants have not contested the combinability of the teachings of 5
Tanaka ‘829 and Tanaka ‘450 (Fact 25). 6
Appellants contend that Tanaka ‘450 fails to disclose using soot burn 7
rates when determining desired exhaust gas temperature as called for in 8
claim 13 (App. Br. 7). 9
In Tanaka ‘450, the DPF temperature is a factor affecting the 10
particulate combustion state (Fact 18). For the above reasons, we find that 11
the particulate combustion state is the soot burn state, and the soot burn state 12
is the condition wherein the soot is burning. Tanaka ‘450 further discloses 13
that it is possible to burn the particulates in the appropriate combustion state, 14
and to securely regenerate the DPF 12 without the DPF 12 being melted 15
down (Fact 18). Therefore, since the DPF temperature in Tanaka ‘450 is a 16
factor affecting the soot burn state (Fact 18), and Tanaka ‘450 is concerned 17
with regenerating the DPF 12 without the DPF 12 being melted down (Fact 18
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18), we find that Tanaka ‘450 would determine the DPF temperature when 1
soot is burning at the DPF 12 to prevent filter meltdown. 2
Therefore, we see no error in the Examiner’s finding that Tanaka ‘450 3
discloses determining the desired exhaust gas temperature as a function of 4
soot burning and controlling the exhaust gas temperature to prevent filter 5
meltdown during filter regeneration, by maintaining the filter temperature 6
within an appropriate combustion zone (Fact 12). We find that Tanaka ‘450 7
discloses using soot burn rates when determining desired exhaust gas 8
temperature as called for in claim 13 (App. Br. 7). See id. at 1578. 9
Therefore, we conclude that the Appellants have not demonstrated 10
that the Examiner erred in rejecting claim 1 over Tanaka ‘829 in view of 11
Tanaka ‘450. The Appellants have likewise not demonstrated error in the 12
Examiner’s rejection of claims 14, 15, 17, 18 and 20, which depend from 13
claim 13. 14
15
CONCLUSIONS OF LAW 16
Appellants have not shown that the Examiner erred in rejecting claims 17
1-3, 7 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Tanaka 18
‘450 in view of Allansson, and claims 13-15, 17, 18 and 20 under 35 U.S.C. 19
§ 103(a) as being unpatentable over Tanaka ‘829 in view of Tanaka ‘450. 20
21
DECISION 22
The decision of the Examiner to reject claims 1-3, 7 and 8 over 23
Tanaka ‘450 in view of Allansson, and claims13-15, 17, 18 and 20 over 24
Tanaka ‘829 in view of Tanaka ‘450 is affirmed. 25
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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)(1)(iv) (2007). 2
3
AFFIRMED 4
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mls 11
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