Ex Parte Odendall

Patent Trial and Appeal Board

Nov 13, 2012

11103606 (P.T.A.B. Nov. 13, 2012)

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.
11/103,606 04/12/2005 Bodo Odendall 21450 8633
77176 7590 11/13/2012
Novak Druce + Quigg LLP
300 New Jersey Ave, NW
Fifth Floor
WASHINGTON, DC 20001
EXAMINER
TRAN, BINH Q
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
11/13/2012 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 BODO ODENDALL
____________________

Appeal 2012-006353
Application 11/103,606
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006353
Application 11/103,606
2
STATEMENT OF THE CASE
Bodo Odendall (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 2, 3, 6-8, and 15-22. Specifically, the
Examiner rejected, under 35 U.S.C. § 103(a), claims 2, 6-8, 15, 16, and 18-
21 as unpatentable over Nada (US 5,099,646, iss. Mar. 31, 1992) and Lewis
(US 6,964,159 B2, iss. Nov. 15, 2005); claim 3 as unpatentable over Nada,
Lewis, and Gopp (US 5,157,919, iss. Oct. 27, 1992); and claims 17 and 22
as unpatentable over Nada, Lewis, and Suzuki (US 6,405,527 B2, iss. Jun.
18, 2002).1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 18, reproduced below, is illustrative of the claimed subject
matter.
18. A process for the lambda control of an internal combustion
engine with an exhaust catalyst, comprising
recording a post-catalyst lambda value of an exhaust gas
flow leaving the exhaust catalyst with a lambda probe mounted
downstream from the exhaust catalyst as control probe, and
setting a post-catalyst lambda value with a lambda
control mechanism to a predetermined value such that a
specific, predetermined degree of oxygen charging of an
oxygen reservoir of the exhaust catalyst is set, the value
predetermined for the degree of charging of the oxygen

1 The Examiner also rejected claims 6 and 22 under 35 U.S.C. § 112, second
paragraph, as indefinite. Ans. 6; Final Rej. 2. However, this rejection has
been rendered moot by the Amendment filed February 21, 2011, which was
entered by the Examiner (Advisory Action, mailed March 11, 2011). As so
amended, claim 6, from which claim 22 depends, no longer contains “the
limitations ‘the post-catalyst lambda value’ on lines 6-7 and ‘the first lambda
value’ on line 11.” See Ans. 6 (emphasis added). Consequently, we do not
review this rejection.
Appeal 2012-006353
Application 11/103,606
3
reservoir being predetermined as a function of a predetermined
degree of conversion of the exhaust catalyst, wherein
inputting of oxygen into the exhaust catalyst modeled or
determined as a function of the post-catalyst lambda value, and
adjustment of the predetermined post-catalyst lambda
value is effected as a function of the input of oxygen,
the degree of charging of the oxygen reservoir with
oxygen to be anticipated is determined on the basis of the input
of oxygen in conjunction with an oxygen reservoir charging
model, and
the degree of charging of the oxygen reservoir with
oxygen to be anticipated is compared to the predetermined
degree of charging of the oxygen reservoir with oxygen, in such
a way that, when a divergence is established by adjustment of
the lambda value appropriate adjustment of the actual degree of
charging with oxygen is effected in the direction of the assigned
predetermined degree of charging with oxygen.
OPINION
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. In addition to these factual
determinations, the examiner must also provide “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Only if
Appeal 2012-006353
Application 11/103,606
4
this initial burden is met does the burden of coming forward with evidence
or argument shift to the appellant. See Oetiker, 977 F.2d at 1445. See also
Piasecki, 745 F.2d at 1472. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the arguments.
See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472.
We agree with Appellant that the Examiner’s rejection “fails to
address independent claims 6 and 15” and provides “no articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness” of the subject matter of these claims. See App. Br. 5. The
mere allusion to “claim[] 15, . . . , and as best understood, claim 6” (Ans. 6,
Final Rej. 3) is insufficient, by itself, to satisfy the Examiner’s initial burden
of establishing a prima facie case of obviousness, by making the factual
determinations and providing some articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. The
Examiner’s rejection makes findings and articulates reasoning to address the
limitations of claim 18 (Ans. 6-8; Final Rej. 3-5), but does not specifically
address the limitations of claims 6 and 15, many of which either are not
present in claim 18 or differ substantially from the limitations of claim 18
addressed by the Examiner’s rejection. The Examiner’s statement that
“claim 18 is the narrowest independent claim; therefore, claims 6 and 15 are
not necessary to address in a separately [sic] rejection” (Ans. 14) is incorrect
and does not make up for the deficiency in the Examiner’s rejection of
claims 6 and 15, and their dependent claims.
Appeal 2012-006353
Application 11/103,606
5
The Examiner’s quotation of language from the Board Decision in the
earlier appeal (2009-004561)2 in the present application is equally
unavailing to make up for, or excuse, the deficiency in the Examiner’s
rejection of claims 6 and 15, and their dependent claims. See Ans. 14.3
For the above reasons, we do not sustain the Examiner’s rejection of
claims 6 and 15, and of their dependent claims 2, 7, 8, and 16, as
unpatentable over Nada and Lewis.
The Examiner’s rejections of claim 3 as unpatentable over Nada,
Lewis, and Gopp, and of claim 17 as unpatentable over Nada, Lewis, and
Suzuki, suffer from the same deficiency as the rejection of claim 15, from
which claims 3 and 17 depend. Thus, we do not sustain them.
The Examiner’s rejection of claim 22 as unpatentable over Nada,
Lewis, and Suzuki suffers from the same deficiency as the rejection of claim
6, from which claim 22 depends. Thus, we do not sustain it.
Appellant also argues that the Examiner fails to provide adequate
analysis to support the conclusion of obviousness of the subject matter of
claim 18. App. Br. 5. Appellant correctly observes that the rejection does
little more than paraphrase the claim language with occasional insertions of
parenthetical references, the relevance of which to the paraphrased claim

2 Ex parte Odendall, 2009-004561 (BPAI 2010),
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009004561-
01-28-2010-1.
3 The language quoted by the Examiner was directed to rejections of claims
that differed in scope from claims 6 and 15 before us in the present appeal
based on combinations of references that are different from the references
applied in the rejections in the present appeal. Further, the “unpersuasive”
arguments asserted by Appellant in the earlier appeal differ from the
arguments made by Appellant in the present appeal. Accordingly, the
language quoted from the earlier Board Decision is not germane to the
rejections before us in this appeal.
Appeal 2012-006353
Application 11/103,606
6
limitations is not always clear. App. Br. 6. Merely by way of example, as
pointed out by Appellant, the steps 303 and 312 of Nada, referenced
parenthetically by the Examiner purportedly to address the claimed step of
“setting a post-catalyst lambda value with a lambda control mechanism to a
predetermined value such that . . . ,” do not in fact set any values. See App.
Br. 6; Ans. 7. Rather, at step 303, Nada determines whether the output
voltage VOX of the air-fuel ratio (lambda) sensor 14 is smaller than a first
threshold value V1 (i.e., VOX < V1?). Nada, col. 5, ll. 23-25; fig. 3A. If VOX
is larger than V1, Nada determines at step 312 whether VOX is larger than a
second threshold value V2 (i.e.,VOX > V2?). Nada, col. 5, ll. 25-27; fig. 3A.
The Examiner’s rejection goes on to explain that “adjustment of the
predetermined post-catalyst lambda value (V1 or V2) is effected as a
function of the input of oxygen (i.e., rich region causes a decrease of oxygen
stored by the catalyst; and lean region causes an increase of oxygen stored
by the catalyst).” Ans. 7. The Examiner does not point to any portion of
Nada to support the finding regarding the adjustment of V1 or V2, and the
relevance of the parenthetical to that finding is not apparent.
For the above reasons, the Examiner does not adequately articulate the
requisite findings and reasoning with some rational underpinning to support
a conclusion of obviousness of the subject matter of claim 18. Accordingly,
we do not sustain the Examiner’s rejection of claim 18 and its dependent
claims 19-21.
DECISION
The Examiner’s decision rejecting claims 2, 3, 6-8, and 15-22 is
reversed.
REVERSED

Appeal 2012-006353
Application 11/103,606
7
hh