Ex Parte Koban et alDownload PDFPatent Trial and Appeal BoardMar 21, 201713439288 (P.T.A.B. Mar. 21, 2017) Copy Citation 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. 13/439,288 04/04/2012 Wieland Koban B248 2390US.1 (88418 8751 0113 109171 7590 03/23/2017 Womble Carlyle Sandridge & Rice, LLP Attn: IP Docketing P.O. Box 7037 Atlanta, GA 30537-7037 EXAMINER KATZ, VERA ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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): IPDocketing@wcsr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WIELAND KOBAN, DIRK A. GROBSCHMIDT, MICHAEL P. GALLIGAN, CHRISTOPHER R. CASTELLANO, ALEXANDER GOREL, and KENNETH E. VOSS Appeal 2015-007171 Application 13/439,288 Technology Center 1700 Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and AVELYN M. ROSS, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s decision rejecting claims 1—8. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellants, the real party in interest is BASF Corporation. Appeal Br. 3. 2 Our decision refers to the Specification (Spec.) filed April 4, 2012, the Examiner’s Final Office Action delivered September 12, 2014, Appellants’ Appeal Brief (Appeal Br.) filed February 12, 2015, the Examiner’s Answer (Ans.) mailed June 3, 2015, and Appellants’ Reply Brief (Reply Br.) filed July 23, 2015. Appeal 2015-007171 Application 13/439,288 STATEMENT OF THE CASE The invention relates to coatings for preventing hydrocarbon buildup on engine and/or powertrain components. Spec. 12. Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. 1. An article comprising: a. an engine or powertrain component; b. a coating applied to the engine or powertrain component, the coating comprising a mixed metal oxide, the mixed metal oxide comprising Ce, Pr, Al, Zr and La. REJECTIONS The Examiner maintains, and Appellants request our review of, the following grounds of rejection: 1. Claims 1, 3—5, and 7 under 35 U.S.C. § 102(b) (pre-AIA) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) (pre- AIA) as unpatentable over Punke;3 2. Claims 6 and 8 under 35 U.S.C. § 103(a) as unpatentable over Punke; and 3. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Punke in view of Suck.4 ANALYSIS Rejection 1: § 102(b)/§ 103(a) based on Punke alone The Examiner finds Punke teaches an article as recited in claim 1, comprising a diesel engine component and a coating applied to the engine 3 US 2006/0057046 Al, published March 16, 2006. 4 US 6,886,548 B2, issued May 3, 2005. 2 Appeal 2015-007171 Application 13/439,288 component, wherein the coating comprises a mixed metal oxide of ceria- zirconia-praseodymia and a first refractory oxide such as alumina, zirconia, and/or lanthanum oxide. Ans. 2. Alternatively, the Examiner concludes it would have been obvious to form a coating on the diesel engine component from a mixed oxide of Ce, Pr, Al, Zr, and La because Punke teaches a small group of possible first refractory oxides including Al and La, to be used alone or in combination, without distinguishing between them. Id. at 2—3. Appellants contend that this rejection is in error because Punke teaches coating a catalyzed soot filter which is not an engine or powertrain component as claim 1 requires. Appeal Br. 8. In support of this argument, Appellants assert that the invention addresses the problem of the formation of carbonization residues in internal combustion engines from unbumt fuel and lubrication oil fed to the engine. Id. at 8—9, quoting Spec. 14. Appellants assert that the Specification lists examples of “engine and powertrain components,” none of which include catalyzed soot filters. Id. at 9. In addition, Appellants argue that because the Specification teaches that the inventive coating may be applied to an “engine, exhaust gas system or powertrain component,” this teaching clearly indicates that the exhaust gas system is not an engine or powertrain component. Id. Appellants further proffer dictionary definitions of “engine” (“a machine for converting thermal energy into mechanical energy or power to produce force and motion”) and “powertrain” (“a train of gears and shafting transmitting power from an engine, motor, etc., to a mechanism being driven”), neither of which, Appellants urge, suggest that the exhaust is part of the “engine.” Id. In addition, Appellants argue that Suck further supports Appellants’ argument that Punke’s catalyzed soot filter, which is part of a diesel engine 3 Appeal 2015-007171 Application 13/439,288 exhaust system, is not an engine or powertrain component. Id. at 10, citing Suck, Fig. 1, and 1:8—32. Because Figure 1 merely teaches an exhaust port, Appellants assert that the remainder of the exhaust system would not be considered part of the engine. Id. at 10-11. Moreover, Appellants assert that the Examiner has not provided any evidence to support the finding that Punke’s catalyzed soot filter would be considered an engine or powertrain component. Id. at 11. We have considered the respective positions articulated by the Examiner and Appellants, and find a preponderance of the evidence favors Appellants. It is axiomatic that during examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An applicant seeking a narrower construction must either show why the broader construction is unreasonable or amend the claim to expressly state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997). The Examiner does not contest Appellants’ proffered definitions for “engine” and “powertrain.” Nor does the Examiner contest Appellants’ assertions that these definitions are consistent with their disclosure, especially regarding the problem for which the invention was disclosed to solve as described in paragraph 4 of the Specification. The Examiner’s finding that Punke has multiple teachings relating to engine exhaust does little to support the Examiner’s interpretation of engine component as covering exhaust system components such as a soot filter. As Appellants’ contend, the Examiner’s position is simply circular reasoning, i.e., that the fact sought to be proven is proven by the fact, “the exhaust part of the engine 4 Appeal 2015-007171 Application 13/439,288 or a filter of the engine exhaust each is a component of an engine, since multiple teachings of Punke are related to engine exhaust” (Ans. 5). Similarly unreasonable is the Examiner’s interpretation of claim 1 as failing to require that the coating be applied directly to the engine or powertrain component, thereby permitting its indirect application thereto. See Ans. 6. As the Examiner finds, “the exhaust is attached to the engine or the engine component.” Id. That fact, however, does not lead to indirect application of the coating to the engine or engine component. To accept the Examiner’s proposition would be to find that all components of a vehicle carrying the engine are applied to the engine, including the vehicle’s exterior paint and the windshield wiper fluid. We decline to extend the scope of claim 1, therefore, to include indirect coating of engine or powertrain components by direct coating of components attached to the engine or powertrain. With regard to the Examiner’s finding that “Punke clearly teaches applications of the coatings to an engine or a vehicle which is a powertrain,” (Ans. 6, citing Punke 126, 128, 144), we note that these paragraphs of Punke merely describe tests of the soot filter when installed on a vehicle. The Examiner fails to explain how testing the soot filter on a vehicle teaches that the coating on the soot filter becomes a coating on the engine or powertrain of the vehicle.5 5 We note that a vehicle is neither an engine nor a powertrain, though a vehicle may include an engine and powertrain. However, we similarly note that an engine may be part of the powertrain of the vehicle. See https://www.merriam-webster.com/dictionary/power+train (“the intervening mechanism by which power is transmitted from an engine to a propeller or axle that it drives; also this mechanism plus the engine”), last visited March 9, 2017. 5 Appeal 2015-007171 Application 13/439,288 On this record, in our view, the Examiner’s interpretation of “an engine or powertrain component” as being sufficiently broad to encompass exhaust system components such as a soot filter is unreasonable because it is inconsistent with Appellants’ Specification as would be understood by one of ordinary skill in the art. Appellants’ proffered interpretation, on the other hand, is consistent with the Specification. As such, we construe Appellants’ claims, taking this definition as the ordinary and customary meaning of “an engine or powertrain component.” Anticipation, a factual inquiry, is established when the Examiner shows that a single prior art reference would have described to one skilled in the art an embodiment that contains all features of the claimed invention arranged as specified in claim 8, either expressly or inherently, in a manner enabling one skilled in the art to practice the embodiment without undue experimentation. See, e.g., ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Therasence, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d 1075, 1083 (Fed, Cir. 2008); Celeritas Techs., Ltd. v. Rockwell Inti Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (A claim is anticipated only where “each and every limitation is found either expressly or inherently in a single prior art reference.”); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990). Because the Examiner’s finding of anticipation is founded on an unreasonable claim construction, the Examiner has not established that each and every limitation of claim 1 is found, expressly or inherently, in Punke. 6 Appeal 2015-007171 Application 13/439,288 Accordingly, we cannot sustain the Examiner’s anticipation rejection based on Punke. Turning next to the Examiner’s obviousness rejection of claim 1 over Punke, this rejection also relies on the unreasonable claim construction that “an engine or powertrain component” encompasses exhaust system components such as Punke’s soot filter. The Examiner has the initial duty of supplying the requisite factual basis and may not resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be made explicit.”); see also, In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), quoted with approval in KSR, 550 U.S. at 418. We find the Examiner has not supplied the requisite rational underpinning to support the obviousness conclusion for the reasons set forth above. Accordingly, we cannot sustain the Examiner’s obviousness rejection of claim 1 over Punke alone. 7 Appeal 2015-007171 Application 13/439,288 Rejection 2: § 103(a) rejection of claims 6 and 8 Claims 6 and 8 depend ultimately from independent claim 1. The Examiner does not provide any reasoning or evidence to address the deficiencies in the application of Punke to claim 1. Therefore, for the same reasons given above, we cannot sustain the Examiner’s obviousness rejection of claims dependent on claim 1 based on Punke alone. Rejection 3: § 103(a) rejection of claim 2 over Punke in view of Suck Claim 2 depends from claim 1 and further requires that the engine or powertrain component is a turbocharger, valve, piston, piston fireland, firedeck, compressor housing, intake port, injection nozzle, combustion chamber, shroud, swirl generator, and combinations thereof. The Examiner acknowledges that Punke fails to teach the coating applied to one of these listed engine or powertrain components. Ans. 4. Nonetheless, the Examiner finds Suck demonstrates applications of mixed oxide catalytic coatings, including rare earth oxides, to a combustion chamber or a piston in order to protect the component from aggressive deposits. Id. at 5. The Examiner concludes that forming Punke’s catalytic coating on the combustion chamber or piston components would have been obvious to provide protection of these components from aggressive deposits as Suck suggests. Id. Appellants contend that Punke and Suck deal with different problems. Appeal Br. 13. In particular, Appellants argue that Punke fails to teach the coating, which is used for catalyzing pollutants in the exhaust gas stream downstream from the engine, would be suitable for preventing formation of carbonization residues on engine components in the combustion chamber of 8 Appeal 2015-007171 Application 13/439,288 an engine.6 Id. at 12—13. Appellants contend that the Examiner failed to provide any evidence or reasoning as to why the ordinary artisan would use Punke’s catalytic coating, which Punke teaches for treating exhaust gas, for preventing the formation of carbonization residues with any reasonable expectation of success. Id. at 13. As the Examiner correctly notes (Ans. 8), Appellants do not explain why the Examiner’s stated motivation for the use of Punke’s coating on an engine component is deficient. In particular, both Punke and Suck relate to catalytic coatings on components exposed to unbumed hydrocarbons and other carbonaceous materials. See Punke Tflf 2 and 3; Suck 1:11—31. Both Punke and Suck teach a catalytic coating for oxidation of these materials. See Punke 14; Suck 144-46 and 3:56—60. Both Punke and Suck teach catalytic coatings with similar metal oxide components. See Punke ]Hf 33— 35; Suck 2:10-29. Both Punke and Suck teach coatings to protect the coated component from aggressive deposits or particulates facilitating their oxidation. See Punke 171; Suck 1:44-46. Therefore, Appellants’ arguments that Punke and Suck are directed to different problems and that the Examiner has failed to adequately support the obviousness conclusion lack merit. Likewise, Appellants’ argument that Punke fails to teach that the catalyst coating would be suitable for preventing formation of carbonization residues on engine components in the combustion chamber of the engine fails to address the above Examiner findings and fails to address the art as a whole. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 6 We note Appellants’ claims are not limited to components of engines in the combustion chamber thereof, but include other components such as a turbocharger. 9 Appeal 2015-007171 Application 13/439,288 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”). We are satisfied, on this record, that the Examiner has established a prima facie conclusion of obviousness based on a proper combination of the teachings of Punke and Suck with a reasonable expectation of success. Absolute predictability is not required to establish a prima facie case of obviousness. In re Droge, 695 F.3d 1334, 1338 (Fed. Cir. 2012) (“Obviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success.”) (citing In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)). Accordingly, we sustain the Examiner’s obviousness rejection of claim 2 over Punke in view of Suck. “An affirmance of a conclusion of obviousness of an independent claim may be made when based on a prior determination of obviousness of a corresponding dependent claim.” Ex Parte Janakiraman, 2009 WF 1270322 (BPAI 2009); see also, In re Muchmore, 433 F.2d 824, 825 (CCPA 1970) (“Since we agree with the board’s conclusion of obviousness as to these narrow claims, the broader claims must likewise be obvious.”). Because claims 2 depends from claim 1, broader claim 1 must also be held obvious over Punke in view of Suck. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007). In addition, Appellants do not contest the Examiner’s findings that Punke teaches the limitations of dependent claims 3—7. As such, we affirm the Examiner’s conclusion of obviousness as to these claims as well. 10 Appeal 2015-007171 Application 13/439,288 Claim 8 depends on claim 7, which itself depends from claim 1. Claim 7 requires that lanthanum oxide and zirconia amount to about 50 wt.% of the coating. Claim 8 requires that the coating comprises about 3 wt.% Pd, about 30 wt.% ceria, about 7 wt.% oxides of Pr and La, about 40 wt.% zirconia, and about 20 wt.% alumina. The Examiner finds Punke teaches a coating comprises, inter alia, an oxide of Pr in the range of 10-50 wt.%, which overlaps or is substantially close to that of claim 8. Ans. 3 and 7. In addition, the Examiner finds that any possible difference between Punke’s lower limit of 10 wt.% Pr oxide and claim 8’s “about” 7 wt.% fails to patentably distinguish claim 8 over Punke. The Examiner concludes it would have been obvious to have selected the overlapping portion of the ranges disclosed in Punke. Id. at 4. Appellants contend that the Examiner failed to point to specific passages or teachings in Punke to provide the amount of Pr as recited in this claim. Appeal Br. 12. Appellants argue that Punke’s range for the oxide of Pr does not overlap the range of claim 8, and the Examiner has not explained why Punke’s range nonetheless would encompass the claim 8 range. Reply Br. 4. Further, Appellants argue that the Examiner has not shown that the skilled artisan would have expected the values in the claimed range and those of Punke for the oxide of Pr to have the same properties such that they are “close enough” to establish a prima facie case of obviousness. Id. Appellants’ arguments are not persuasive of reversible error. Appellants may overcome a prima facie case of obviousness by establishing that the claimed ranges are critical, or generally by showing that the claimed ranges achieve unexpected results relative to the prior art range. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). However, we note that 11 Appeal 2015-007171 Application 13/439,288 Appellants do not contest the Examiner’s finding that Appellants do not disclose any criticality for the amount of the oxide of Pr in the inventive coating. Appellants merely disclose a “very specific embodiment” which contains “about 7 wt% oxides of Pr and La, about 40 wt% zirconia.” Spec. 1 7; see also Tflf 10, 20, and 37. In addition, we note that claim 8 depends from claim 7 which requires that the oxides of Pr and Zr account for “about 50% by weight” of the coating on an oxide basis. Thus, when taken with claim 8’s recitations of about 7 wt.% Pr oxide and about 40 wt.% zirconia, which together total about 47 wt.%, the amount of variance provided by the term “about” may be at least 3 wt.% (such that about 47 wt.% is covered within about 50 wt.%). The use of “about” in a claimed range can also expand the scope of a claim so as to sweep in the prior art. In re Ayers, 154 F.2d 182, 185 (CCPA 1946) (Court found at least about 10% anticipated by about 8% because it permitted “some tolerance and the use of the words ‘at least’ before ‘about’ in the claim” was not viewed as a modification critical in character). Thus, the lower limit of the amount of Pr oxide, 10 wt.%, found by the Examiner to be taught by Punke does, as the Examiner found (Ans. 3—4, 8), overlap with the amount required by claim 8, about 7 wt.%. More importantly, we note that Punke discloses that the ceria- zirconia-praseodymia composite may be between 20-80 wt.% of the catalyst coating, wherein praseodymia may be between 10-50 wt.% of the composite. Punke 133. Therefore, the actual amount of Pr oxide in the coating may be between 2 40 wt.%.7 In other words, Appellants’ amount of Pr oxide is fully encompassed within Punke’s broader range. Because the range taught by Punke encompasses the recited range, obviousness is 7 10% of 20% equals 2% (.lx .2) and 50% of 80% equals 40% (.5 x .8). 12 Appeal 2015-007171 Application 13/439,288 established. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“Aprima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). Accordingly, we also sustain the Examiner’s obviousness rejection of claim 8. CONCLUSION Upon consideration of the record, and for the reasons given above and in the Appeal and Reply Briefs, the rejections of claims 1, 3—5, and 7 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable over, Punke, as well as claims 6 and 8 under 35 U.S.C. §103(a) as unpatentable over Punke, are reversed. However, for the reasons given above and in the Examiner’s Answer, the rejection of the Examiner rejecting claim 2, and by extension, claims 1 and 3—8 under 35 U.S.C. § 103(a) as unpatentable over Punke in view of Suck is affirmed. DECISION The decision of the Examiner rejecting claims 1—8 is affirmed. 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation