Ex Parte Valentine et al

Board of Patent Appeals and Interferences

Jun 16, 2009

11038288 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES M. VALENTINE and BARRY N. SPRAGUE
____________________

Appeal 2009-001095
Application 11/038,288
Technology Center 3700
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Decided:1 June 16, 2009
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY
and KEN B. BARRETT, 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).

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STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002) from the final 2
rejection of claims 1-4 and 6-10 under 35 U.S.C. § 103(a) (2002) as being 3
unpatentable over Peter-Hoblyn (US 6,051,040, issued Apr. 18, 2000) and 4
Dettling (US 5,100,632, issued Mar. 31, 1992); from the final rejection of 5
claims 5 and 13 under § 103(a) as being unpatentable over Peter-Hoblyn, 6
Dettling and Schäfer-Sindlinger (US 6,516,611 B1, issued Feb. 11, 2003); 7
and from the final rejection of claims 11 and 12 under § 103(a) as being 8
unpatentable over Peter-Hoblyn, Dettling and Rao (US 4,562,695, issued 9
Jan. 7, 1986).2 An oral hearing was held on June 10, 2009. We have 10
jurisdiction under 35 U.S.C. § 6(b) (2002). 11
We AFFIRM. 12
Claim 1 is typical of the claims on appeal: 13
14
1. A method for reducing particulate 15
emissions from a diesel engine while also 16

2 The Examiner in the Answer states that claims 5 and 13 are rejected
under § 103(a) as being unpatentable over Peter-Hoblyn and Schäfer-
Sindlinger only; and that claims 11 and 12 are rejected under § 103(a) as
being unpatentable over Peter-Hoblyn and Rao only. (Ans. 6 and 7). When
articulating the reasoning supporting the rejections, however, the Examiner
relies on the “modified Peter-Hoblyn,” that is, the device of Peter-Hoblyn as
modified in view of the teachings of Dettling, and cites passages from
Dettling. (See id.) Therefore, Dettling is properly included amongst the
evidence cited by the Examiner in support of the rejection of claims 5 and
13; and of claims 11 and 12. Since the Appellants’ sole argument directed
against the rejection of claims 5 and 13; and against the rejection of claims
11 and 12 is directed against the combination of Peter-Hoblyn and Dettling
(see App. Br. 11-12), including Dettling in the evidence relied on in support
of the rejections of these claims does not prejudice the Appellants.
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controlling emissions of NO2 as a percent of 1
exhaust total nitrogen oxides, comprising: adding 2
a fuel borne catalyst comprising platinum and 3
cerium and/or iron at a total metal concentration of 4
from 2 to 15 ppm in the fuel to a diesel fuel; and 5
passing exhaust produced by the combustion 6
through a diesel particulate filter having substrate 7
with a precious metal catalyst thereon, the catalyst 8
be present on the substrate in an amount of less 9
than 15 grams per cubic foot of substrate. 10
11
ISSUES 12
The Appellants argue the rejections of claims 1-4 and 6-10 under 13
§ 103(a) as a group. Independent claim 1 is representative of the group. 37 14
C.F.R. § 41.37(c)(1)(vii) (2007). With respect to the rejection of 15
representative claim 1, the Appellants argue that neither Peter-Hoblyn nor 16
Dettling discloses or suggests controlling emission of NO2 as a percent of 17
exhaust total nitrogen oxides. (App. Br. 7). Following up on this argument, 18
the Appellants contend one of ordinary skill in the art would not have found 19
obvious a method which added a fuel borne catalyst comprising platinum 20
and cerium or iron at a total metal concentration at the low end of the range 21
disclosed in Peter-Hoblyn or which passed diesel exhaust through a 22
particulate filter having a precious metal catalyst present in an amount at the 23
low end of the range disclosed in Dettling. (App. Br. 9-10). Finally, the 24
Appellants contend that the capacity to reduce particulate emissions from a 25
diesel engine while also controlling emissions of NO2 as a percent of 26
exhaust total nitrogen oxides is an unexpected result of the claimed method. 27
(App. Br. 5-6 and 9). 28
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The Appellants argue the rejections of claims 5 and 13; and of claim 1
11 and 12 in separately sub-headed paragraphs of the Appeal Br. (See App. 2
Br. 11-12). In the case of both the rejection of claims 5 and 13; and the 3
rejection of claims 11 and 12, the Appellants refer back to the same 4
arguments directed against the combined teachings of Peter-Hoblyn and 5
Dettling in opposition to the rejection of claims 1-4 and 6-10. Therefore, the 6
Appellants’ contentions in connection with the rejections of claims 5, 11, 12 7
and 13 raise no issues not already raised in connection with the rejections of 8
claims 1-4 and 6-10. 9
This appeal turns on two issues: 10
Have the Appellants shown that the Examiner erred in 11
concluding that the teachings of Peter-Hoblyn and Dettling 12
support a prima facie conclusion of obviousness of the subject 13
matter of representative claim 1? 14
Have the Appellants shown that the Examiner erred in 15
concluding that the evidentiary value of the teachings of Peter-16
Hoblyn and Dettling outweighs the evidentiary value of the 17
working examples in the Specification such that the evidence as 18
a whole supports the conclusion of obviousness of the subject 19
matter of representative claim 1? 20
21
FINDINGS OF FACT 22
The record supports the following findings of fact (“FF”) by a 23
preponderance of the evidence. 24
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1. Peter-Hoblyn discloses a method for improving the operation of 1
a diesel engine with reduced emissions of particulates and nitrogen oxides. 2
(Peter-Hoblyn, col. 4, ll. 38-40). 3
2. Peter-Hoblyn’s method includes the steps of adding a fuel-4
soluble composition to the diesel fuel and passing the combustion gases 5
through a particulate trap to reduce the level of particulates. (Peter-Hoblyn, 6
col. 4, ll. 40-56). 7
3. Peter-Hoblyn’s fuel-soluble composition includes a platinum 8
group metal and a useful salt of a metal such as iron or cerium. (Peter-9
Hoblyn, col. 8, ll. 14-25 and 50-55). 10
4. Peter-Hoblyn discloses adding from about 5 to 100 ppm and 11
preferably 30 to 60 ppm of the catalyst metal in combination with the 12
platinum group metal composition to the diesel fuel. (Peter-Hoblyn, col. 8, 13
ll. 50-55). 14
5. In other words, Peter-Hoblyn teaches adding to a diesel fuel a 15
fuel borne catalyst comprising platinum and cerium or iron at a total metal 16
concentration of from 5 to 100 ppm in the fuel. 17
6. Peter-Hoblyn teaches adding to a diesel fuel a fuel borne 18
catalyst comprising platinum and cerium or iron at a total metal 19
concentration in a range which overlaps the range of 2 to 15 ppm in the fuel 20
recited in claim 1. 21
7. Peter-Hoblyn teaches that the particulate trap may be coated 22
with a catalytic material to facilitate regeneration. (Peter-Hoblyn, col. 7, ll. 23
32-34). 24
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8. Dettling discloses a particulate filter. (Dettling, col. 2, ll. 49-1
54). 2
9. The surfaces of the walls of the filter are coated with a coating 3
or film layer including one or more platinum group metals. (Dettling, col. 2, 4
ll. 49-62 and col. 4, ll. 59-63). 5
10. Platinum group metals are precious metals. (Cf. 16 C.F.R. 6
§ 23.0(a) (2008)(listing “precious metals”)). 7
11. The amount of platinum group metal or metals in the coating is 8
about 2 to about 200 g/ft3. (Dettling, col 4, l. 63 – col. 5, l. 3). 9
12. Dettling discloses passing exhaust from the combustion of 10
diesel fuel through a diesel particulate filter having substrate with a precious 11
metal catalyst present on the substrate in an amount of 2 to 200 grams per 12
cubic foot of substrate. 13
13. In other words, Dettling discloses passing exhaust from the 14
combustion of diesel fuel through a diesel particulate filter having substrate 15
with a precious metal catalyst present on the substrate in an amount in a 16
range which overlaps the range of less than 15 grams per cubic foot of 17
substrate recited in claim 1. 18
14. Dettling’s coating serves to lower the temperature at which the 19
collected particulates are ignited during regeneration. (Dettling, col. 2, ll. 20
62-66). 21
15. In Examples 1-4 of the Appellants’ Specification, the 22
Appellants measured and tabulated average emissions for NOx, NO, NO2 23
and particulates obtained by combusting No. 2D diesel fuel or ultra-low 24
sulfur [“ULSD”] diesel fuel with or without fuel-borne catalyst. The 25
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Appellants have not identified any data in Examples 1-4 relating to any test 1
using a diesel fuel formulation to which was added a fuel borne catalyst 2
comprising platinum and cerium or iron at a total metal concentration 3
exceeding 15 ppm in the fuel. The Appellants also have not identified any 4
data in Examples 1-4 relating to any test in which exhaust produced by the 5
combustion of the fuel passed through a diesel particulate filter having a 6
precious metal catalyst present on a substrate of the filter in an amount 7
greater than 15 grams per cubic foot of substrate. 8
16. The Appellants provide no evidence sufficient to show that any 9
superior results obtained in Examples 1-4 would have been unexpected by 10
one of ordinary skill in the art. 11
12
PRINCIPLES OF LAW 13
A claim is unpatentable for obviousness under section 103(a) if “the 14
differences between the subject matter sought to be patented and the prior art 15
are such that the subject matter as a whole would have been obvious at the 16
time the invention was made to a person having ordinary skill in the art to 17
which said subject matter pertains.” Id. In Graham v. John Deere Co., 383 18
U.S. 1 (1966), the Supreme Court set out factual inquiries to be considered 19
in determining whether claimed subject matter would have been obvious: 20
21
Under § 103, the scope and content of the prior art 22
are to be determined; differences between the prior 23
art and the claims at issue are to be ascertained; 24
and the level of ordinary skill in the pertinent art 25
resolved. Against this background, the 26
obviousness or nonobviousness of the subject 27
matter is determined. Such secondary 28
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considerations as commercial success, long felt but 1
unsolved needs, failure of others, etc., might be 2
utilized to give light to the circumstances 3
surrounding the origin of the subject matter sought 4
to be patented. As indicia of obviousness or 5
nonobviousness, these inquiries may have 6
relevancy. 7
8
Id., 383 U.S. at 17-18. 9
In order to reject a claim under section 103(a), an examiner must 10
establish at least a “prima facie” case that the claimed subject matter would 11
have been obvious. Once the examiner produces prima facie evidence that 12
the claimed subject matter would have been obvious, the applicant may 13
present additional evidence tending to rebut the examiner’s conclusion that 14
the claimed subject matter would have been obvious. If the applicant 15
presents additional evidence to rebut the examiner’s conclusion, the 16
examiner must consider all of the evidence anew. If the evidence presented 17
by the examiner and any evidence presented by the applicant, considered 18
anew, demonstrate that the claimed subject matter would have been obvious 19
to one of ordinary skill in the art, the claim is properly rejected under section 20
103(a). In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). “On appeal to 21
the Board, an applicant can overcome a rejection [under § 103(a)] by 22
showing insufficient evidence of prima facie obviousness or by rebutting the 23
prima facie case with evidence of secondary indicia of obviousness.” In re 24
Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)(emphasis omitted). 25
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ANALYSIS 1
Representative claim 1 recites a “method for reducing particulate 2
emissions from a diesel engine while also controlling emissions of NO2 as a 3
percent of exhaust total nitrogen oxides.” Peter-Hoblyn discloses a method 4
for reducing particulate emissions from a diesel engine which includes the 5
steps of adding to a diesel fuel a fuel borne catalyst comprising platinum and 6
cerium and/or iron at a total metal concentration of from 5 to 100 ppm in the 7
fuel; and passing exhaust produced by the combustion of the fuel through a 8
diesel particulate filter having substrate with a catalyst thereon. (FF 2-5). 9
Peter-Hoblyn further teaches coating the diesel particulate filter with a 10
catalytic material to facilitate regeneration (FF 7), that is, burning-off of 11
particulates trapped by the filter 12
Dettling discloses passing exhaust from the combustion of diesel fuel 13
through a diesel particulate filter having substrate with a precious metal 14
catalyst present on the substrate in an amount of 2 to 200 grams per cubic 15
foot of substrate. (FF 8-12). Dettling teaches that the coating serves to 16
lower the temperature at which the collected particulates are ignited during 17
regeneration. (FF 14). The Examiner correctly concludes (see Ans. 4) that 18
it would have been obvious from the teachings of Dettling to coat the diesel 19
particle filter through which the exhaust is passed in the method disclosed by 20
Peter-Hoblyn with a precious metal catalyst present on a substrate of the 21
filter in an amount of 2 to 200 g/ft3 in order to lower the temperature at 22
which the particles collected by the filter ignite and incinerate. 23
The use of the word “for” in the preamble of representative claim 1 24
indicates that reducing particulate emissions and controlling emissions of 25
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NO2 as a percent of exhaust total nitrogen oxides are properties or benefits 1
of the claimed method and not method steps limiting the scope of the claim. 2
Even assuming for purposes of this appeal only that that neither Peter-3
Hoblyn nor Dettling discloses or suggests controlling emission of NO2 as a 4
percent of exhaust total nitrogen oxides as recited in the preamble of claim 5
1, this deficiency would not establish the patentability of claim 1. See In re 6
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). 7
The Appellants contend that one of ordinary skill in the art would not 8
have found obvious a method which added a fuel borne catalyst comprising 9
platinum and cerium or iron at a total metal concentration at the low end of 10
the range disclosed in Peter-Hoblyn or which passed diesel exhaust through 11
a particulate filter having a precious metal catalyst present in an amount at 12
the low end of the range disclosed in Dettling. (App. Br. 9-10). Our 13
reviewing court has established that “even a slight overlap in range 14
establishes a prima facie case of obviousness.” In re Peterson, 313 F.3d 15
1325, 1329 (Fed. Cir. 2003)(emphasis omitted); see also In re Woodruff, 919 16
F.2d 1575, 1577-78 (Fed. Cir. 1990). 17
It would have been obvious from the combined teachings of Peter-18
Hoblyn and Dettling to have added to a diesel fuel a fuel borne catalyst 19
comprising platinum and cerium or iron at a total metal concentration in a 20
range overlapping the range of 2 to 15 ppm in the fuel recited in claim 1. 21
(See FF 6). It also would have been obvious from the combined teachings of 22
Peter-Hoblyn and Dettling to have passed exhaust produced by the 23
combustion of the fuel through a diesel particulate filter having substrate 24
with a precious metal catalyst thereon, the catalyst being present on the 25
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substrate in an amount in a range overlapping the range of less than 15 1
grams per cubic foot of substrate recited in claim 1. (See FF 13). Therefore, 2
the subject matter of claim 1 would have been prima facie obvious. 3
The Appellants advance comparative data in the Specification as 4
objective evidence tending to prove a secondary indicium of 5
nonobviousness, namely, unexpected results. (See App. Br. 5-6 and 10). 6
When an Appellant advances objective evidence in rebuttal of obviousness, 7
the evidence as a whole must be considered anew. See, e.g., In re Eli Lilly & 8
Co., 902 F.2d 943, 945 (Fed. Cir. 1990); see also In re Soni, 54 F.3d 746, 9
750 (Fed. Cir. 1995)(“[T]he PTO must consider comparative data in the 10
specification in determining whether the claimed invention provides 11
unexpected results.”). The Appellant provides no evidence in the form of 12
declarations (see App. Br. 16) and we give no weight to unsupported 13
allegations of fact made in the Appeal Brief or at oral argument, In re 14
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Objective evidence of 15
secondary indicia of nonobviousness may be entitled to more or less weight 16
in any given case depending on the nature of the objective evidence and the 17
relationship of the objective evidence with the merits of the invention. 18
Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). 19
Objective evidence, “to be effective, must compare the claimed 20
subject matter with the closest prior art.” In re Burckel, 592 F.2d 1175, 21
1179 (CCPA 1979). The Appellants contend one of ordinary skill in the art 22
would not have found obvious a method which added a fuel borne catalyst 23
comprising platinum and cerium or iron at a total metal concentration at the 24
low end of the range disclosed in Peter-Hoblyn or which passed diesel 25
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exhaust through a particulate filter having a precious metal catalyst present 1
in an amount at the low end of the range disclosed in Dettling. (App. Br. 9-2
10). Despite this, the Appellants have not identified any data in Examples 1-3
4 relating to any test using a diesel fuel formulation to which was added a 4
fuel borne catalyst comprising platinum and cerium or iron at a total metal 5
concentration exceeding 15 ppm in the fuel. The Appellants also have not 6
identified any data in Examples 1-4 relating to any test in which exhaust 7
produced by the combustion of the fuel passed through a diesel particulate 8
filter having a precious metal catalyst present on a substrate of the filter in 9
an amount greater than 15 grams per cubic foot of substrate. (FF 15). The 10
comparative data provided by the Appellants in Examples 1-4 is entitled to 11
little weight in determining whether the Examiner erred in reaching the 12
conclusion of obviousness because Examples 1-4 do not compare the subject 13
matter of representative claim 1 with Peter-Hoblyn and Dettling. 14
Apart from this, the Appellants failed to introduce any evidence that 15
any superior results attributable to the claimed method would not have been 16
expected by one of ordinary skill in the art. (See FF 16). This failure 17
provides an additional reason why the comparative data provided by the 18
Appellants in Examples 1-4 is entitled to little weight in determining 19
whether the Examiner erred in reaching the conclusion of obviousness. See 20
Geisler, 116 F.3d at 1470. 21
Weighing the probative value of the comparative data provided by the 22
Appellants in Examples 1-4 anew against the probative value of the 23
teachings of Peter-Hoblyn and Dettling, the evidence of obviousness on 24
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which the Examiner relies outweighs the objective evidence identified by the 1
Appellants. 2
3
CONCLUSIONS 4
The Appellants have not shown that the Examiner erred in concluding 5
that the teachings of Peter-Hoblyn and Dettling support a prima facie 6
conclusion of obviousness of the subject matter of representative claim 1. 7
The Appellants have not shown that the Examiner erred in concluding 8
that the evidentiary value of the teachings of Peter-Hoblyn and Dettling 9
outweighs the evidentiary value of the working examples in the 10
Specification such that the evidence as a whole supports the conclusion of 11
obviousness of the subject matter of representative claim 1. 12
Therefore, the Appellants have not shown that the Examiner erred in 13
rejecting claims 1-4 and 6-10 under § 103(a) as being unpatentable over 14
Peter-Hoblyn and Dettling. Since the Appellants only contest the rejections 15
of claims 5 and 13 by referring back to the same arguments directed against 16
the combined teachings of Peter-Hoblyn and Dettling in opposition to the 17
rejection of claims 1-4 and 6-10, the Appellants have not shown that the 18
Examiner erred in rejecting claims 5 and 13 under § 103(a) as being 19
unpatentable over Peter-Hoblyn, Dettling and Schäfer-Sindlinger. Since the 20
Appellants only contest the rejections of claims 11 and 12 by referring back 21
to the same arguments directed against the combined teachings of Peter-22
Hoblyn and Dettling in opposition to the rejection of claims 1-4 and 6-10, 23
the Appellants have not shown that the Examiner erred in rejecting claims 24
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11 and 12 under § 103(a) as being unpatentable over Peter-Hoblyn, Dettling 1
and Rao. 2
3
DECISION 4
We AFFIRM the rejections of claims 1-13. 5
No time period for taking any subsequent action in connection with 6
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). See 37 7
C.F.R. § 1.136(a)(1)(iv) (2007). 8
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