Ex Parte Donaldson et al

Patent Trial and Appeal Board

Jul 31, 2015

11589822 (P.T.A.B. Jul. 31, 2015)

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.
11/589,822 10/31/2006 George E. Donaldson 08350.6528-00000 5996
58982 7590 08/03/2015
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
TRAN, BINH Q
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
08/03/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE E. DONALDSON and JAMES J. DRISCOLL
___________

Appeal 2013-008205
Application 11/589,822
Technology Center 3700
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
George E. Donaldson and James J. Driscoll (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision to reject: (1) under 35
U.S.C. § 102(b) claims 10–14 as anticipated by Liang (US 6,363,771 B1;
iss. Apr. 2, 2002); and (2) under 35 U.S.C. § 103(a) claims 1–6, 8, 9, and
15–21 as unpatentable over Hirata (JP 2005-071007; pub. Mar. 14, 2005)1

1 The Examiner and Appellants rely on the US Patent Publication of Hirata
(US 2007/0266703 A1; pub. Nov. 22, 2007) as a translation for the Japanese
Patent. See Ans. 5–6 (mailed Aug. 31, 2010); Appeal Br. 9 (filed Mar. 8,
2010). All references to Hirata in the subject appeal refer to the US Patent
Publication.
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and Liang. Claim 7 has been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER2
The claimed subject matter relates to “a system that implements a
conservation mode of engine operation in response to low levels of a
reductant supply.” Spec. para. 1; Fig. 1. Claims 1, 10, and 15 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A control system for an engine having a supply of
fuel and a supply of reductant, the control system
comprising:
a first sensor associated with the supply of fuel to
generate a signal indicative of a quantity of fuel
remaining;
a second sensor associated with the supply of
reductant to generate a signal indicative of a quantity of
the reductant remaining; and
a controller in communication with the first and
second sensors, the controller configured to alter
operation of the engine based on input from the second
sensor to ensure3 that the remaining fuel is consumed
before consumption of the remaining reductant.

2 Appellants submitted Amendments to the Claims in the Response after
Final Action. See Response after Final Act. 1–2 (filed Oct. 21, 2009); see
also Supp. Appeal Br. 3, 5 (filed Apr. 20, 2010). In the Advisory Action,
the Examiner indicated that the proposed claim amendments “will not be
entered.” Advisory Act. 1 (mailed June 19, 2013). Accordingly, the claims
before us for review are the claims subject to the Final Office action mailed
July 22, 2009, from which Appellants take the subject appeal. These claims
were included in the Response to Non-Final Action filed March 30, 2009.
3 It appears the only difference between independent claims 1, 10, and 15
filed March 30, 2009 and those filed October 21, 2009 is that “to ensure” is
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Application 11/589,822

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ANALYSIS
Anticipation by Liang
Claims 10–14
Independent claim 10 calls for a control system for a power unit
having a supply of reductant, the control system including a “controller
configured to alter operation of the power unit based on the supply rate of
the reductant to ensure that a desired consumption rate of the reductant does
not exceed the supply rate of the reductant.” The Examiner finds that Liang
discloses the system called for in claim 1 including the above noted
limitation. Ans. 10 (citing Liang, col. 4, ll. 55–59).
Appellants contend that:
[T]he control module (42) [of Liang] is not
disclosed as being configured to alter operation of
a power unit based on a supply rate, or to alter
operation of a power unit such that a desired
consumption rate of reductant does not exceed the
supply rate of reductant. Instead, Liang discloses
only that the control module (42) derates an engine
when a level in the urea storage tank (12) falls
below a necessary amount of urea.
Appeal Br. 11 (emphasis omitted).
Appellants’ argument is persuasive. Liang describes that: “If, for
some reason, the operator is not able to refill the tank 12, the control module
42 would be capable of de-rating the compression ignition engine to a safe
minimum level until the tank 12 is filled.” Liang, col. 4, ll. 55–59; see also
Ans. 10; Appeal Br. 11; Reply Br. 1–2. We agree with Appellants that this
portion of Liang fails to “teach or even suggest that [de-rating] the engine
has any [effect] on a desired consumption rate of reductant, much less that

replaced with “such.”
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the [de-rating] of the engine results in the desired consumption rate not
exceeding a supply rate.” Reply Br. 2; see also Appeal Br. 11. Moreover,
the Examiner does not articulate sufficient technical reasoning to establish a
reasonable basis for belief that de-rating of the engine (power unit) of Liang
necessarily results in the desired consumption rate of the reductant not
exceeding a supply rate of the reductant. See Ans. 5, 10. Based on the
foregoing reasons, the Examiner fails to establish by a preponderance of the
evidence that Liang anticipates the system of independent claim 10.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 10 and its dependent claims 11–14 as anticipated by
Liang.
Obviousness over Hirata and Liang
Claims 1–6, 8, 9, and 15–21
Independent claim 1 calls for a control system for an engine having a
supply of fuel and a supply of reductant, the control system including a
“controller configured to alter operation of the engine . . . to ensure that the
remaining fuel is consumed before consumption of the remaining reductant.”
The Examiner finds that Hirata discloses most of the limitations of the
system called for in claim 1 including the above noted limitation. Ans. 11
(citing Hirata, para. 45).4
Appellants contend that:
[T]he control module (32) of Hirata is not
disclosed as being configured to alter operation of

4 The Examiner relies on Liang for disclosing a controller “configured to
alter operation of [an] engine based on input from [a] second sensor to
generate a signal indicative of a quantity of the reductant remaining.” See
Ans. 6–7.
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an engine at all, much less such that remaining fuel
is consumed before consumption of remaining
reductant. Instead, the control module (32) is
disclosed as only generating an abnormality
judgment output for the warning unit (46).
Appeal Br. 13; see also id. at 12. Appellants further contend that:
Steps 13 and 14 describe the control unit (32) of
Hirata waiting to make the abnormality judgment
until an amount of consumed fuel from a starting
point Lf1 to an ending point Lf2 reaches a preset
predetermined fuel consumption Lf. Once this
amount of fuel has been consumed, the control unit
(32) is then allowed to compare the amount of
reductant injected during the corresponding time
period to the amount of consumed fuel Lf. If the
amount of injected reductant is not within a
predetermined range of an expected value, the
injection of reductant is judged to be abnormal.
Reply Br. 3.
Appellants’ arguments are persuasive. Hirata describes that:
In step 13, it is judged whether or not the
fuel consumption ΔLf calculated from a change in
the liquid level (Lf1-Lf0) in the fuel tank becomes
equal to or greater than a preset predetermined fuel
consumption Lf, and the measurement operation of
the liquid level of the fuel tank in step 12 is
repetitively executed until ΔLf becomes equal to or
greater than Lf (ΔLf≥Lf). When ΔLf≥Lf, it is
determined that AU has reached the predetermined
fuel consumption, and control proceeds to step 14.
Hirata, para. 45, Fig. 3; see also Ans. 11; Appeal Br. 12–13; Reply Br. 2–3.

We agree with Appellants that control unit (32) of Hirata “never
affects fuel consumption in any way, but merely continues to measure the
fuel consumption until the preset predetermined fuel consumption Lf has
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been reached before triggering the abnormality judging.” Reply Br. 3. As
such, we further agree with Appellants that Hirata fails to disclose a
“controller configured to alter operation of the engine . . . to ensure that the
remaining fuel is consumed before consumption of the remaining reductant,”
as recited in claim 1. See Appeal Br. 13; Reply Br. 3. Based on the
foregoing reasons, the Examiner fails to establish by a preponderance of the
evidence that the combined teachings of Hirata and Liang render obvious the
system of independent claim 1.
Independent claim 15 is directed to a method of treating exhaust
including the step of altering the combustion of fuel “to ensure that the
remaining fuel is consumed before the remaining reductant,” and thus the
Examiner’s findings with respect to Hirata and Liang are deficient for claim
15 as well. See Ans. 5–7, 11.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 15 and their respective dependent claims 2–6, 8, 9,
and 16–21 as unpatentable over Hirata and Liang.

DECISION
We REVERSE the decision of the Examiner to reject claims 1–6 and
8–21.
REVERSED
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