Ex Parte Koban et al

Patent Trial and Appeal Board

Mar 21, 2017

13439288 (P.T.A.B. Mar. 21, 2017)

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.
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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.
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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
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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
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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.
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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.
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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.
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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
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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.
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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.
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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
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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).
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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
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