DELPHI TECHNOLOGIES IP LIMITED

Patent Trials and Appeals Board

Dec 17, 2021

2020006588 (P.T.A.B. Dec. 17, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/112,931 07/20/2016 JULIEN SCHMITT DP-321259 1079
152048 7590 12/17/2021
BorgWarner
Delphi Technologies IP Limited
3800 Automation Avenue
Attention Joshua M. Haines
Auburn Hills, MI 48326
EXAMINER
IQBAL, SYED TAHA
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
12/17/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
johaines@borgwarner.com
us.patent@borgwarner.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIEN SCHMITT
and MICHAEL PARMENTIER
Appeal 2020-006588
Application 15/112,931
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–23. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Delphi Automotive Systems
Luxembourg S.A. as the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The invention “relates to vehicle Selective Catalytic Reduction (SCR)
architectures/systems and has particular application to controlling multi-SCR
systems where there is more than one SCR unit.” Spec. ¶ 2. Claim 11,
reproduced below, illustrates the claimed subject matter (formatting added):
11. A method of controlling a catalytic exhaust system
including a first catalytic unit located upstream of a second
catalytic unit, said method comprising:
i) providing a relationship between a temperature of the
first catalytic unit, an amount of NH3 stored in the second
catalytic unit, and a limit value of an amount of NH3 permitted
in the first catalytic unit;
ii) measuring or estimating the amount of NH3 in the
second catalytic unit;
iii) measuring or estimating the temperature of the first
catalytic unit;
iv) using said relationship and the measured or estimated
amount of NH3 in the second catalytic unit of step ii and the
measured or estimated temperature of the first catalytic unit of
step iii to provide the limit value for the amount of NH3 to be
stored in said first catalytic unit; and
v) using said provided limit value for the amount of NH3
to be stored in said first catalytic unit from iv in the control of
said catalytic exhaust system by controlling injection of urea
into the catalytic exhaust system.
Appeal Br. 15 (Claims Appendix).
Independent claim 19 recites a system (device) to practice
essentially the method of claim 11.
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REJECTIONS2
Appellant requests review of the following rejections from the
Examiner’s Final Action (see generally Appeal Br.):
I. claims 11–18 under 35 U.S.C. § 101 as directed to patent
ineligible subject matter;
II. claims 11–23 under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement; and
III. claim 17 under 35 U.S.C. § 112(d) as being of improper
dependent form for failing to further limit the subject matter of the claim
upon which it depends, or for failing to include all the limitations of the
claim upon which it depends.
OPINION
Rejection I (under 35 U.S.C. § 101)
For Rejection I, Appellant argues the claims together as a group,
primarily focusing on the limitations of claim 11. See generally Appeal Br.
In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to
claim 11, which we select as representative of claims subject to this
rejection. Claims 12–18 stand or fall with claim 11.
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)

2 In the Answer, the Examiner maintains the rejection of claim 23 under
35 U.S.C. § 112(b). Ans. 6. However, Appellant submitted an Amendment
to the claims on December 23, 2019 that addressed the basis for this
rejection. Amendment 5. The Amendment was entered by the Examiner in
the Advisory Action dated January, 27, 2020. Adv. Act. 1. Accordingly, the
appeal of this rejection is moot and we find the Examiner’s inclusion of this
rejection in the Answer to be harmless error.
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims relative to case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error. Thus, we affirm the Examiner’s rejection under
35 U.S.C. § 101 for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.3 We note the
USPTO current eligibility guidance is found in the Ninth Edition, Revision
10.2019 (revised June 2020) of the Manual of Patent Examination Procedure
(MPEP), and particularly within Sections 2103 through 2106.07(c).
“Because the MPEP now incorporates the 2019 Revised Patent Subject
Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility
Guidance Update (October 2019 Update), and the Berkheimer Memo,4 all
references to those materials should now be directed to the MPEP.” See
https://www.uspto.gov/patent/laws-and-regulations/examination-
policy/subject-matter-eligibility (emphasis added).

3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update
at 1.
4 Referring to Berkheimer v. HP, Inc., 881 F.3d. 1360, 1369 (Fed. Cir.
2018).
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We note that all references to the MPEP throughout this Decision are
to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless
otherwise indicated.
With respect to the first step under Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014), there is no dispute between Appellant and the
Examiner that the subject matter of claim 11 falls under a statutory category,
a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. Appeal Brief 7; Final Act. 2. In this case, claim
11 recites a method.
Under MPEP § 2106, we next look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).5
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

5 “Examiners evaluate integration into a practical application by
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether [the claim as
a whole] integrate[s] the exception into a practical application.” MPEP
§ 2106.04(d).
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See MPEP § 2106.05(d).
We now follow the guidance provided in the MPEP to analyze
independent claim 11 to determine if it is directed to a patent-ineligible
subject matter (Step 2A, prong 1).
Applying the guidance set forth in the MPEP, we conclude that claim
11 does not recite patent-eligible subject matter.
The Examiner finds that claim 11 recites an abstract idea and
identifies the abstract idea as “estimating.” Final Act. 2. Claim 11 recites a
method comprising the steps of i) providing a relationship between
parameters; ii) measuring or estimating the amount of NH3 in the second
catalytic unit; iii) measuring or estimating the temperature of the first
catalytic unit; and iv) using said relationship and the measured or estimated
values for the amount of NH3 and temperature to provide a limit value for
the another amount of NH3.
i) providing a relationship . . .
The Specification describes the step of providing a relationship
between a temperature, an amount of NH3, and a limit value as claimed .of
an amount of NH3 permitted in the first catalytic unit “can be visualised as a
3-dimensional plot as shown in more detail in figure 4. The relationship
may be stored as, e.g. 3-d lookup tables, and the data (target/limit parameter
of NH3 stored in first unit) used in control strategy or control models to
optimize performance.” Spec. ¶ 26. The Specification describes Figure 4 as
“show[ing] a useful relationship between parameters used in the feed
forward control.” Spec. ¶ 15. Creating graphs or lookup tables to present
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data involves concepts that can be performed in the human mind. Further,
the step of providing a relationship is recited at a high level of
generalization. As such, this step is directed to a mental process.
The step of providing the claimed relationship is also directed to a
mathematical concept involving generation of a graphical plot or a set of
lookup tables based on specific data using a model.
ii) measuring or estimating the amount of NH3 in the second catalytic
unit and iii) measuring or estimating the temperature of the first
catalytic unit
Both of these steps involve estimating a value for a parameter (NH3 amount,
temperature). “Estimating” involves concepts to provide information
performed in the human mind. Further, both steps are also recited at a high
level of generalization. As such, these steps are mental steps that are also
directed to a mental process.
In addition, the Specification associates “estimating” with the use of
models to generate data for the feed forward control. Spec. ¶¶ 22, 32. The
Specification also discloses that “[k]nown models [including known
temperature models,] were used for this scenario to provide simulations to
understand the parameters required to be taken into account in the control of
multi SCR systems to avoid excessive NH3 slip.” Id. ¶ 28. Thus, these
steps are also directed to a mathematical concept.
iv) using said relationship and the measured or estimated amount of
NH3 in the second catalytic unit of step ii and the measured or
estimated temperature of the first catalytic unit of step iii to provide
the limit value for the amount of NH3 to be stored in said first
catalytic unit
This step recites using the claimed relationship with estimated values
to arrive at a NH3 amount limit to be stored in said first catalytic unit. The
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Specification describes that the limit value “is compared with a measured or
estimated actual value, and consequent to said comparison, the amount of
urea injected upstream of said first unit is controlled.” Spec. ¶¶ 9, 25. This
step is recited at a high level of generalization and merely provides
information to be used in the process. Providing information is a step that
can be performed in the human mind. As such, these steps are mental steps
that are also directed to a mental process.
This step is also directed to a mathematical concept because the
parameters can be determined using a model. Spec. ¶ 28.
The Examiner further finds that the additional step of using the
provided limit value for the amount of NH3 in the control of said catalytic
exhaust system by controlling injection of urea into the catalytic exhaust
system does not add significantly more to this abstract idea because it is a
generic control recited at a high level of generality. Final Act. 2. Thus, this
additional step, considered individually and in combination with the other
steps, does not make the claim significantly more than the mathematical
concept or the mental process itself.
Therefore, we agree with the Examiner’s determination that claim 11
recites an abstract idea. In this case, claim 11 recites the abstract ideas of a
mathematical concept and a mental process.
We note that Appellant does not dispute the Examiner’s findings for
Step 2A, prong 1. See generally Appeal Br.
Having determined that the subject matter of claim 11 recites an abstract
idea, we now consider whether the claim as a whole integrates the recited
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judicial exception into a practical application of the exception.6
MPEP § 2106.04(d)(2). We follow the MPEP to analyze independent claim 11
to determine if the claims recite additional elements that integrate the judicial
exception into a practical application (Step 2A, prong 2).
Appellant argues the claims integrate the abstract idea into a practical
application because the claims provide that a specific technical solution to a
technical problem of loading NH3 optimally in the first and second catalytic
units to prevent NH3 slip in all driving conditions. Appeal Br. 8; Spec. ¶ 4.
According to Appellant, the technical problem in the prior art results from
the conventional feed-forward control focusing on the first catalytic unit
while using the second catalytic unit as a passive NH3 trap. Appeal Br. 8.
Appellant contends this requires calibrating the prior art systems such that
the amount of NH3 released from the first catalytic unit is limited in all
conditions to make sure that no NH3 is released from the second catalytic
unit during severe thermal transients. Appeal Br. 8. Appellant asserts the
claimed method provides a control strategy which maximizes the NH3 stored
in the first catalytic unit while maintaining NH3 slip from the exhaust system
below the requisite limits under any driving condition. Appeal Br. 8.
Appellant argues the control strategy utilizes a relationship between a
temperature of the first catalytic unit, an amount of NH3 stored in the second
catalytic unit, and a limit value of an amount of NH3 permitted in the first
catalytic unit by providing the limit value of the amount of NH3 permitted in

6 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office Guidance).
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the first catalytic unit simply by measuring or estimating the amount of NH3
stored in the second catalytic unit and by measuring or estimating the
temperature of the first catalytic unit and controlling the injection of urea
into the exhaust system can be controlled based on the determined limit
value of the amount of NH3 permitted in the first catalytic unit. Appeal
Br. 8.
Appellant’s arguments do not persuade us that the problem or solution
is technological. The Federal Circuit is clear that “[t]he abstract idea itself
cannot supply the inventive concept, no matter how groundbreaking the
advance.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed.
Cir. 2019) (quotation omitted). The Specification describes the invention as
using a feed forward control-based system to optimize performance. Spec.
¶ 26. The Specification describes that the “data used in the feed forward
controller (e.g. provided in the look-up tables) can be provided; by
performing requisite testing or simulation” using “known models.” Spec.
¶¶ 27–28. This data are used to build a three dimensional (3D) parameter
map using a different model, where the 3D parameter map provides requisite
information for operating the feed forward based system. Spec. ¶ 29. In the
end, a “target parameter can be determined for example by storing in a look-
up table, and this [is] used in control strategies or control models.” Spec.
¶ 31.
In essence, the Specification describes generating a reference table
from which desired parameters can be selected for input into the feed
forward controller. As we discuss above, the claim steps can be performed
mentally. Moreover, the improved integration of data is an improvement in
the judicial exception itself, i.e., in the mathematical functions. Thus,
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Appellant cannot rely on the abstract idea as providing significantly more.
We have also considered Appellant’s arguments to the extent that
Appellant argues the modeled data improve the operation of the feed
forward controller by providing “a control strategy which maximizes the
NH3 stored in the first catalytic unit while maintaining NH3 slip from the
exhaust system below the requisite limits under any driving condition.”
Appeal Br. 8. These arguments are also unavailing.
A patent-ineligible abstract idea of a mathematical formula is not
transformed into a patent-eligible invention by “limiting the use of an
abstract idea ‘to a particular technological environment.”’ Alice, 573 U.S. at
223, (quoting Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)). In this case,
the Specification discusses the generation of better data as input for the feed
forward controller to control the process. The feed forward controller is
simply using the data to perform as expected, provide an output to control a
process according to certain parameters. Appellant fails to explain
adequately how the claim improves the way a feed controller operates.
Compare McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314–16 (Fed. Cir. 2016) (the Specification explained how the particular
rules recited in the claim enabled the automation of specific animation
tasks), with Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1264–65 (Fed. Cir. 2016) (the Specification failed to provide details
regarding the manner in which the invention accomplished the alleged
improvement); and MPEP § 2016.05(a).
We now turn to the Step 2B to consider if there is an inventive
concept that is sufficient to ensure that the patent amounts to significantly
more than a patent on the patent-ineligible concept. MPEP § 2106.05.
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Independent claim 11 does not include additional elements that
contain inventive concept that would amount to significantly more than the
judicial exception because the feed forward controller is component that is
well-understood, routine, and/or conventional. Spec. ¶ 4; Final Act. 2.
In sum, whether the additional limitations are considered individually
or in ordered combination, claim 11 fails to recite an inventive concept
beyond the abstract idea.
Rejection II (under 35 U.S.C. § 112, Lack of Written Description)
After review of the respective positions provided by Appellant and the
Examiner, we reverse the Examiner’s rejection of claims 11–23 under
35 U.S.C. § 112(a) for the reasons Appellant presents and add the following.
The purpose of the written description requirement in 35 U.S.C.
§ 112(a) is to “clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (citation
omitted)). In addition, the written description requirement of 35 U.S.C.
§ 112(a) applies to all claims including original claims that are part of the
disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal
Circuit, “[a]lthough many original claims will satisfy the written description
requirement, certain claims may not.” Ariad, 598 F.3d at 1349; see also
LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed.
Cir. 2005); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559,
1568 (Fed. Cir. 1997).
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
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the original disclosure a description of the invention defined by the claims.
See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad, 598
F.3d at 1351 (citations omitted). This test “requires an objective inquiry into
the four corners of the specification from the perspective of a person of
ordinary skill in the art.” Id. “Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.” Id.
Claims 11–237, 8
The Examiner finds the original disclosure does not provide written
descriptive support for the entire breadth of what the claim entails with
respect to the parameters associated in a relationship and
measured/estimated parameters used to provide a limit for the NH3 amount
to be stored in a first catalytic unit. Final Act. 3–4. The Examiner further
finds the relationship of step (i) provides optimum efficiency while retaining

7 In the Appeal Brief, Appellant acknowledges that claim 23 is rejected
under this ground. Appeal Br. 7, 9. However, Appellant appears to limit
arguments only for claims 11–22. Appeal Br. 10. Given (1) the Examiner
maintained the rejection of claim 23 and (2) Appellant’s acknowledgement
noted above, we understand the arguments presented for this ground
addresses all claims rejected.
8 For this argument, Appellant does not address any claim separate from the
others. Appeal Br. 10. Accordingly, we focus our discussion to independent
claim 11. We note that the Examiner addresses specifically claim 23 in the
Answer. Ans. 9. The Examiner’s position on this claim is consistent with
the position the Examiner expresses for claim 11. Therefore, we address
both claims together.
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emission requirements but the Specification, as originally filed, fails to
define the relationship between the three parameters to achieve this optimum
efficiency. Final Act. 4.
After consideration of the Appellant’s arguments (Appeal Br. 9–11),
we agree with the Appellant that there is reversible error in the Examiner’s
determination that claims 11–23 lack adequate written descriptive support.
The Examiner’s premise for this rejection is that the original
disclosure does not explain how the claimed parameter relationship provides
a limit value for the NH3 amount to be stored in said first catalytic unit.
Ans. 7–8. According to the Examiner, Figure 4 and paragraphs 25 and 26 of
the Specification disclose a specific relationship between the three
parameters of interests but that relationship cannot be read into the claims
because the claimed relationship is broader. Ans. 8. Specifically, the
Examiner contends that the Specification does not disclose the computer and
the algorithm(s) that achieve the claimed relationship in sufficient detail that
one of ordinary skill in the art can reasonably conclude that the inventor
possessed the claimed subject matter at the time of filing. Ans. 9. The
Examiner also contends that the Specification does not disclose how the
NH3 limit value controls the injection of urea. Ans. 9.
We first note, however, that claim 11 recites generic steps. Appellant
directs attention to paragraphs 25–28 of the Specification as providing
written descriptive support for these generic steps. Appeal Br. 9–11. As
Appellant argues, Application Figure 4 exemplifies a relationship between
the claimed parameters in the form of a 3D parameter plot that illustrates
that if two parameters are known, the third parameter can be determined.
Appeal Br. 9–10. The Examiner fails to present any evidence or reasoning
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to explain why persons skilled in the art would not recognize in the original
disclosure a description of the invention defined by the claims from this
disclosure.
The Examiner contends that one skilled in the art would not be able to
use the claimed parameters to control the injection of urea into the process
without more specific information about a computer and algorithms involved
in arriving at the parameters. Ans. 9. Yet, the claim does not require the use
of algorithms because the data can be found using a lookup table. Appeal
Br. 27, 31.
Moreover, we also note the Examiner’s stated position appears to be
more appropriate to address a lack of enablement issue 35 U.S.C. § 112
instead of a lack of written description issue as presented. However, such a
rejection is not before us for review on appeal.
Claims 14–16, 18
The Examiner finds the Specification, as originally files does not
provide written descriptive support for the “model” in claims 14–16 and 18
because the Specification does not define it.
Appellant argues that paragraphs 26, 27, and 29 of the Specification
and Application Figures 3 and 4 provide adequate written descriptive
support for what is a model. Appeal Br. 11.
We have considered the Examiner’s reasoning and Appellant’s
arguments with respect to this issue and agree with Appellant that there is
reversible error in the Examiner’s determination that claims 14–16 and 18
lack adequate written descriptive support.
The Specification describes using a known model to control a single
SCR unit. Spec. ¶¶ 13, 22. The Specification describes this model as “a
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phenomenological chemical model, accounting for the main parameters that
influence NOx conversion and resulting NH3 coverage: space velocity,
catalyst temperature, modeled NO2/NOx ratio in the feed-gas, NH3 storage
capacity, NH3 coverage, etc.” Id. ¶ 22. The Specification further descries
the “control adapts the urea dosing such that the modeled NH3 coverage
matches target NH3 coverage.” Id. ¶ 22. This portion of the disclosure also
describes generally that parameters can be measured using sensors or
estimated by a model. Id. ¶ 22. The Specification also discloses that
“[k]nown models [including known temperature models,] were used for this
scenario to provide simulations to understand the parameters required to be
taken into account in the control of multi SCR systems to avoid excessive
NH3 slip.” Id. ¶ 28. From the information provided by the known models,
“[a] model was then built which outputs the maximum acceptable NH3
stored in the SCRoF as a function of the SCRoF temperature and stored
mass in the U/F SCR.” Id. ¶ 29.
Thus, the Specification provides a reasonable description of what a
model is and how it is used. The Examiner has not explained sufficiently
why persons skilled in the art would not recognize in the original disclosure
a description of the invention defined by the claims 14–16 and 18.
Claims 19–229
The Examiner finds that the Specification, as originally filed, fails to
disclose the corresponding structure, material, or acts for performing the

9 We note that Appellant treats the Examiner’s rejection of these claims as
based on a ground different from a lack of written descriptive support.
Appeal Br. 12. For the purposes of this opinion, we address Appellant’s
arguments as directed to the Examiner’s stated rejection under 35 U.S.C.
§ 112.
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entire claimed function and to clearly link the structure, material, or acts to
the function to the various means plus function language in claims 19–22.
Final Act. 4.
Appellant argues that the Specification describes a feed forward
controller/3D map as the means configured to use the relationship and the
measured or estimated parameters. Appeal Br. 12; Spec. ¶¶ 26, 29;
Application Fig. 4. Appellant also argues that paragraphs 29 and 32 of the
Specification describe open-loop control or a sensor and models as means
configured to measure or estimate the parameters. Appeal Br. 12. Appellant
contends one of ordinary skill in the art would understand from this
disclosure that a controller is not limited to performing only one aspect. Id.
After consideration of the Appellant’s arguments, we agree with the
Appellant that there is reversible error in the Examiner’s determination that
claims 19–22 lack adequate written description support.
In the Answer, the Examiner states that one skilled in the art would
not understand the structures Appellant identifies. Ans. 10. However, the
Examiner has not explained adequately why the components Appellant
identifies are not structure or why one skilled in the art would not understand
the components to be structures. Nor does the Examiner provide a technical
explanation why the components Appellant identifies are not sufficient
structure to support the disputed claim language.
Accordingly, we reverse the Examiner’s prior art rejection of claims
11–23 under 35 U.S.C. § 112(a) for the reasons the Appellant presents and
we give above.
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Rejection III (under 35 U.S.C. § 112(d)
Claim 17
The Examiner finds dependent claim 17 does not further limit the
subject matter of independent claim 11 because it does not add any more
limitations to independent claim 11 that are not there already. Final Act. 6.
According to the Examiner, claim 11 already uses the comparison of the
measured value and NH3 limit value on the first catalytic unit and control the
urea injection recited in dependent claim 17. Final Act. 6.
We have considered the Examiner’s reasoning and Appellant’s
arguments with respect to this issue and agree with Appellant that there is
reversible error in the Examiner’s determination for the reasons Appellant
presents. Appeal Br. 13.
Moreover, the Examiner points to no language in claim 11 reciting the
comparison step of claim 17. Nor does the Examiner explain adequately
how claim 11 recites such a feature.
Accordingly, we reverse the Examiner’s prior art rejection of claim 17
under 35 U.S.C. § 112(d) for the reasons the Appellant presents and we give
above.
CONCLUSION
The Examiner’s rejection of claims 11–18 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 11–23 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement is reversed.
The Examiner’s rejection of claim 17 under 35 U.S.C. § 112(d) as
being of improper dependent form is reversed.
Appeal 2020-006588
Application 15/112,931

19
Because the affirmed rejection does not reach all the claims, our
decision is an affirmance in part.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11–18 101 Eligibility 11–18
11–23 112 Written
Description
11–23
17 112 Improper
Dependency
17
Overall
Outcome
11–18 19–23
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). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART