Ex Parte Brown et al

Patent Trial and Appeal BoardMay 8, 2013

11234004 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DAVID B. BROWN, MICHAEL J. PARATORE, JR. and MICHAEL B. VIOLA ________________ Appeal 2011-003130 Application 11/234,004 Technology Center 3700 ________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER and MITCHELL G. WEATHERLY, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003130 Application 11/234,004 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 23-26, 28-30, 32-36, 38-40, 44 and 46. App. Br. 5. Claims 1-22, 27, 37, 43, 45, 49 and 50 have been cancelled while independent claims 31, 41 and 42 are deemed allowable. App. Br. 5. The rejection of claims 47 and 48 has been withdrawn and these claims are objected to by the Examiner. Ans. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to vehicle exhaust systems, and more particularly to evaluating operation of an exhaust treatment system.” Spec., para. [0001]. Independent system claim 23 and similar independent method claim 33 are illustrative of the claims on appeal and are reproduced below: 23. An exhaust treatment diagnostic system comprising: an inlet temperature sensor that monitors an inlet temperature of a catalyst; an outlet temperature sensor that monitors an outlet temperature of the catalyst; and a control module that determines an engine temperature and, if the engine temperature is less than an engine temperature threshold, that selectively performs a diagnosis of an exhaust treatment system during a selected time period that is initiated during a cold start, and that outputs a passing status when a differential between the outlet temperature and the inlet temperature is greater than a predetermined threshold during the selected time period. Appeal 2011-003130 Application 11/234,004 3 33. A method comprising: monitoring an inlet temperature of a catalyst; monitoring an outlet temperature of the catalyst; determining an engine temperature, and if the engine temperature is less than an engine temperature threshold selectively performing a diagnosis of an exhaust treatment system during a selected time period that is initiated during a cold start; and outputting a passing status when a differential between the outlet temperature and the inlet temperature is greater than a predetermined threshold during the selected time period. REFERENCES RELIED ON BY THE EXAMINER Fujishiro US 3,882,451 May 6, 1975 Schnaibel US 5,860,277 Jan. 19, 1999 Hoshi US 6,401,450 B1 Jun. 11, 2002 Yamamoto US 6,438,943 B1 Aug. 27, 2002 THE REJECTIONS ON APPEAL 1. Claims 23, 24, 28, 32-34, 38, 44 and 46 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujishiro and Hoshi. Ans. 4. 2. Claims 25, 26, 35 and 36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujishiro, Hoshi and further in view of design choice. Ans. 6. 3. Claims 29 and 39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujishiro, Hoshi and Yamamoto. Ans. 7. 4. Claims 30 and 40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujishiro, Hoshi and Schnaibel. Ans. 7. Appeal 2011-003130 Application 11/234,004 4 ANALYSIS The rejection of claims 23, 24, 28, 32-34, 38, 44 and 46 as being unpatentable over Fujishiro and Hoshi Both independent claims 23 and 33 on appeal include the conditional limitation that “if the engine temperature is less than an engine temperature threshold” then a diagnosis of an exhaust treatment system is performed “during a selected time period that is initiated during a cold start.” Both independent claims also include the limitation of a “passing status” being “when a differential between the outlet temperature and the inlet temperature is greater than a predetermined threshold during the selected time period.” The Examiner primarily relies on Fujishiro for teaching the limitations of these independent claims with the exception that the Examiner relies on Hoshi for teaching “that it is conventional in the art to selectively perform (in steps 107-110) a diagnosis of the catalyst (3) during a selected time period that is initiated during an engine cold start (steps 101 and 102 with Y answers).” Ans. 5. Appellants contend that Fujishiro “does not disclose selectively performing a diagnosis of an exhaust treatment system during a cold start” as claimed. App. Br. 10. While we agree that Fujishiro is directed to performing diagnosis after the engine is warmed (Fujishiro 2:54 to 3:16), the Examiner also relied on Hoshi for teaching diagnosis during cold start. Ans. 5, see also Hoshi fig. 5 and steps 101 and 102 with “yes” answer. Appellants’ contention is not persuasive. We find persuasive, however, Appellants’ contention that “Hoshi and Fujishiro teach away from their combination.” App. Br. 12, see also App. Br. 13. This is based on Fujishiro teaching diagnosis on a warm engine wherein a “passing status” is achieved upon the input and output temperature Appeal 2011-003130 Application 11/234,004 5 sensors having a high or large temperature difference. Fujishiro 2:54 to 3:16, see also Fujishiro 1:33-39. This is in contrast to Hoshi which teaches diagnosis on a cold engine and wherein a “passing status” is achieved upon the temperature sensors having a small temperature difference. Hoshi 8:33- 37, 8:62 to 9:2 and 10:9-21, see also fig. 5 and step 110 with pass and fail outcomes 105, 112. The Examiner indicates that it would have been obvious to utilize “the teaching by Hoshi in the system and method of Fujishiro et al., since the use thereof would have been routinely practiced by those with ordinary skill in the art to accurately diagnose an operating function of a catalyst.” Ans. 5. The Examiner does not explain how the desire for accurate diagnosing of an operating function would lead one skilled in the art to combine a first teaching directed to a warm engine and a passing status being a high temperature difference with a second teaching directed to a cold engine and a passing status being a low temperature difference. While there is no overt criticism in either reference directed to the other’s teaching, we are nevertheless skeptical that one skilled in the art would combine the two together “to accurately diagnose an operating function of a catalyst” as the Examiner concludes in view of their contradictory and opposite teachings. Our reviewing courts have provided instruction that for a rejection based on obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion” but at the same time, “an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) and In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Here, we are of the opinion that the Examiner’s articulated reasoning is missing a Appeal 2011-003130 Application 11/234,004 6 rational underpinning necessary for the conclusion of obviousness based on the combination of Fujishiro and Hoshi. Accordingly, we reverse the Examiner’s rejection of independent claims 23 and 33 and dependent claims 24, 28, 32, 34, 38, 44, and 46. The rejections of dependent claims 25, 26, 29, 30, 35, 36, 39 and 40 as being unpatentable over Fujishiro and Hoshi when combined with either design choice, Yamamoto or Schnaibel In the rejection of each of these claims, the Examiner relies on teachings additional to those of Fujishiro and Hoshi discussed supra. We agree with Appellants that none of these additional references “remedy the deficiencies of Fujishiro and Hoshi” with respect to independent claims 23 and 33 discussed above. App. Br. 14. Accordingly, we likewise reverse the rejection of claims 25, 26, 29, 30, 35, 36, 39 and 40. DECISION The Examiner’s rejections of claims 23-26, 28-30, 32-36, 38-40, 44 and 46 are reversed. REVERSED mls