Gandhi et al.v.Beckmann et al.

Patent Trial and Appeal Board

Nov 30, 2016

12877901 (P.T.A.B. Nov. 30, 2016)

BoxInterferences@uspto.gov Paper No. 124
Tel: 571-272-7822 Entered: November 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

THOMAS BECKMANN and ALEXANDER MASSNER
Junior Party
(Patent No. 7,584,605)

v.

HAREN S. GANDHI, JOHN VITO CAVATAIO,
ROBERT HENRY HAMMERLE, and
YISUN CHENG
Senior Party
(Application 12/877,901)

Patent Interference No. 105,822 (HHB)
(Technology Center 1700)

Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

JUDGMENT – 37 C.F.R. § 41.127(a)
In view of our decisions on motions (Papers 114 and 117) and our decision
upon remand from the Federal Circuit in Beckmann v. Gandhi, 646 Fed. Appx. 950
(Fed. Cir. 2016) (Paper 123), it is:
2

ORDERED that Junior Party, Beckmann’s claims 1–4 (corresponding to
Count 1) of Beckmann’s involved patent, U.S. Patent No. 7,584,605 will be
cancelled pursuant to 35 U.S.C. §135(a);
FURTHER ORDERED that Gandhi’s claims 3, 4, 6, and 9 (corresponding to
Count 1) of Gandhi’s involved application, U.S. Patent Application No. 5
12/877,901, are finally refused pursuant to 35 USC §135(a);
FURTHER ORDERED that a copy of this judgment be made of record in
the files of Beckmann’s involved patent, U.S. Patent No. 7,584,605 and Gandhi’s
involved application, U.S. Patent Application No. 12/877,901;
FURTHER ORDERED that if there is any settlement agreement or related 10
documents which have not been filed, attention is directed to 35 U.S.C. §135(c)
and 37 C.F.R. §41.205;
FURTHER ORDERED that a party seeking judicial review timely serve
notice on the Director of the United States Patent and Trademark Office (37 C.F.R.
§§ 90.1 and 104.2); and 15
FURTHER ORDERED that attention is directed to Biogen Idec MA, Inc., v.
Japanese Foundation for Cancer Research, 785 F.3d 648, 654–57 (Fed. Cir.
2015).

20
3

cc (e-mail):

Attorneys for Beckmann:

Michael H. Jacobs, Esq.
Vincent J. Galluzzo, Esq. 5
CROWELL & MORING, LLP
Intellectual Property Group
MJACOBS@CROWELL.COM
VGALLUZZO@CROWELL.COM
10
Attorneys for Gandhi:

E. Anthony Figg, Esq.
R. Danny Huntington, Esq.
ROTHWELL, FIGG, ERNST & MANBECK, PC 15
EFIGG@RFEM.COM
DHUNTINGTON@RFEM.COM

BoxInterferences@uspto.gov Paper No. 123
Tel: 571-272-7822 Entered: November 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

THOMAS BECKMANN and ALEXANDER MASSNER
Junior Party
(Patent No. 7,584,605)

v.

HAREN S. GANDHI, JOHN VITO CAVATAIO,
ROBERT HENRY HAMMERLE, and
YISUN CHENG
Senior Party
(Application 12/877,901)

Patent Interference No. 105,822 (HHB)
(Technology Center 1700)

Before RICHARD E. SCHAFER, JOHN G. NEW, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION – MOTION – 37 C.F.R. §41.125(a)

Interference 105,822
2

I. INTRODUCTION
This interference is before us on remand from the Federal Circuit. See
Beckmann v. Gandhi, 646 Fed. Appx. 950 (Fed. Cir. 2016). The Federal Circuit
vacated and remanded the portion of our earlier decisions (Papers 114 and 117)
denying Beckmann’s motion alleging that Gandhi’s claims 3–5, 7, 8, and 10–17
are not supported by a written description (“Beckmann Motion 1”; Paper 30) and 5
granting Gandhi’s motion in part alleging that Beckmann’s claims 3 and 4 of
Beckmann’s involved patent (“Beckmann ’605”) are unpatentable in view of prior
art (“Gandhi Motion 1”; Paper 26).
Specifically, the court affirmed (1) our construction of claims 3 and 4 of
Beckmann ’605 as well as (2) our decisions that claims 3 and 4 of Beckmann ’605 10
are unpatentable over cited prior art as presented in Gandhi Motion 1 (Paper 26).
Beckmann, 2016 WL 1720502 at 2, 21, 29. In addition, the court agreed with the
Board that claims 1 and 2 of Beckmann ’605 do not require a “third [exhaust gas]
supplying step be controlled in terms of exhaust gas composition and duration.”
Id. at 17. However, the court found the Board erred in construing claims 1 and 2 15
of Beckmann ’605 as not requiring the third “supplying” step that is “separate” and
“distinct” from the other two exhaust gas supplying steps, i.e., the lean and rich
exhaust gas supplying steps. Id. at 3. In particular, the court concluded:
Beckmann’s claims 1 and 2 require a third exhaust gas supplying
step that is separate and distinct from the other two exhaust gas 20
supplying steps.
Id.
Because the court reversed our construction of Beckmann’s claims 1 and 2,
the court vacated our determination that those claims are unpatentable over the
cited prior art, and remanded the portion of our decisions (Papers 114 and 117) 25
relating to claims 1 and 2 of Beckmann ‘605 for further proceedings. Id.
Separately, the court concluded “the Board’s finding that Gandhi ’901
Interference 105,822
3

contains an adequate written description of the ‘minimizing the oxygen content . . .
prior to a rich cycle’ limitation of claims 5, 8, 11, and 17 is unsupported by
substantial evidence” and, based on that conclusion, vacated that finding and
remanded for further proceedings. Id. at 3, 28–29. In support of that conclusion,
the court noted: 5
[t]he Board did not consider and analyze whether the ’901
application provides an adequate written description of the “prior
to” limitation. We therefore vacate its written description
decision as to claims 5, 8, 11, and 17.
10
Id. at 28.
We limit our consideration to the issues of (1) whether the court’s
construction of claims 1 and 2 of Beckmann ’605 changes our determination that:
(i) Beckmann failed to rebut the presumption under 37 C.F.R. §41.207(c) that
claims 1 and 2 of Beckmann ’605 are patentable over prior art cited in Beckmann 15
Motion 2 (Paper 42), including Kinugasa ’024 (Ex. 2008), Kinugasa ’241 (Ex.
2009) and Binder ’499 (Ex. 2010), and (ii) claims 1 and 2 of Beckmann ’605 are
unpatentable over prior art cited in Gandhi Motion 1 (Paper 26), including
Gandhi’s grandparent application, US Patent No. 7,332,135 (“Gandhi ’135”) and
Surnilla, U.S. Patent No. 6,604,504 (“Surnilla ’504”), an issue that was originally 20
presented in Gandhi Motion 1 (Paper 26) but was not previously addressed by the
Board; and (2) whether Beckman has established that Gandhi ’901 does not
provide adequate written description support for the “prior to” limitation, i.e.,
“minimizing the oxygen content . . . prior to a rich cycle” limitation as recited in
claims 5, 8, 11, and 17, as presented in Beckmann Motion 1 (Paper 30). 25
Familiarity with the Federal Circuit’s opinion, our earlier opinion (Paper 114) and
our earlier opinion on reconsideration (Paper 117) are presumed.
We have re-evaluated the parties’ motions in light of the Federal Circuit’s
Interference 105,822
4

comments and instructions. Based on the court’s revised construction of claims 1
and 2 of Beckmann ’605, we conclude Beckmann has rebutted the presumption
under 37 C.F.R. §41.207(c) that claims 1 and 2 of Beckmann ‘605 are not
unpatentable over prior art cited in Beckmann Motion 2 (Paper 42). However, we
conclude Gandhi has established that Beckmann’s claims 1 and 2 are unpatentable 5
over prior art cited in Gandhi Motion 1 (Paper 26). In addition, we also conclude
Beckmann has not established in Beckmann Motion 1 (Paper 30) that that the
written description of Gandhi ’901 does not provide adequate written description
support for the “prior to” limitation, i.e., “minimizing the oxygen content . . . prior
to a rich cycle” limitation recited in Gandhi’s claims 5, 8, 11, and 17. 10

II. GANDHI MOTION 1 (PAPER 26) – LACK OF PATENTABILITY
OVER PRIOR ART
A.
Claim 1 of Beckmann ’605 is reproduced below: 15
1. A method for purifying the exhaust gas from an
internal combustion engine having an exhaust-gas purification
system including a nitrogen oxide storage catalytic converter and
an SCR [selective catalytic reduction] catalytic converter
downstream of the nitrogen oxide storage catalytic converter, 20
comprising the steps of:

supplying the nitrogen oxide storage catalytic converter
with exhaust gas containing an excess of oxidizing constituents;
25
supplying the nitrogen oxide storage catalytic converter
with exhaust gas containing an excess of reducing constituents;
and

supplying the nitrogen oxide storage catalytic converter, 30
between the oxidizing constituents supplying step and the
reducing constituents supplying step, with an exhaust gas which
has a lower content of oxidizing constituents than in the
Interference 105,822
5

oxidizing constituents supplying step and a lower content of
reducing constituents than in the reducing constituents supplying
step,

wherein the step between the oxidizing constituents 5
supplying step and the reducing constituents supplying step is
terminated at the earliest when the nitrogen oxide storage
catalytic converter is predominantly filled by exhaust gas
delivered in [the] step between the oxidizing constituents
supplying step and the reducing constituents supplying step. 10

Ex. 1003, 13:15–39.
Beckmann’s claim 2 depends from claim 1, and further recites that the
nitrogen oxygen storage catalytic converter (a.k.a., lean NOx trap or lean NOx
absorber) is formed as a parallel arrangement of two lean NOx traps to operate 15
alternately by the use of a switching device that directs exhaust gas into the lean
NOx traps. Ex. 1003, 14:2–10.
Both claims 1 and 2 of Beckmann ’605 recite three steps: (1) supplying . . .
exhaust gas containing an excess of oxidizing constituents (i.e., lean exhaust gas);
(2) supplying . . . exhaust gas containing an excess of reducing constituents (i.e., 20
rich exhaust gas); and (3) during the period between those two steps, supplying . . .
exhaust gas that has a lower content of oxidizing constituents than in the oxidizing
step and a lower content of reducing constituents than in the reducing step (e.g.,
transitional exhaust gas). The intermediate transitional step (i.e., third supplying
step) ends at the earliest when the catalytic converter is filled by exhaust gas 25
delivered during that step.
The Federal Circuit construed the third supplying step recited in
Beckmann’s claims 1 and 2 as “a third exhaust gas supplying step that is separate
and distinct from the other two exhaust gas supplying steps,” Beckmann v. Gandhi,
646 Fed. Appx. 950, 961. We turn to whether Beckmann’s claims 1 and 2 would 30
Interference 105,822
6

have been obvious over the cited prior art, including Gandhi ’135, Surnilla ’504
and Schenk.
B.
Gandhi, as the movant, bears the burden of proving by a preponderance of
the evidence that claims 1 and 2 of Beckmann ‘605 are unpatentable over prior art. 5
37 C.F.R. §§ 41.121(b) and 41.208(b); see also Bosies v. Benedict, 27 F.3d 539,
541–42 (Fed. Cir. 1994).
C.
Obviousness is determined on the basis of underlying factual inquiries,
including: (1) the scope and content of the prior art; (2) differences between the 10
claimed subject matter and the prior art; (3) the level of ordinary skill in the art;
and (4) secondary considerations of nonobviousness. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). A patent claim is unpatentable under 35 U.S.C. § 103 if
“the differences between the claimed subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious at the 15
time the invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (emphasis added). However, a conclusion of obviousness “cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of 20
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
D.
Gandhi contends that (1) Beckmann’s claim 1 is unpatentable under
35 U.S.C. § 103(a) as obvious over Gandhi ’135 and Surnilla ’504, and (2)
Beckmann’s claim 2 is unpatentable under 35 U.S.C. § 103(a) as obvious over 25
Interference 105,822
7

Gandhi ’135, Surnilla ’504, and Schenk1 (Exhibit 1006). Gandhi Motion 1,
Paper 26, 2–3, 9–12. To support its contention, Gandhi proffers detailed
explanations and analyses regarding how each element of claims 1 and 2 of
Beckmann ’605 is met or is rendered obvious by Gandhi ’135 and Surnilla ’504, as
set forth in the claim charts attached as APPENDIX 3 – Attachment C. Paper 42, 5
10–11 & APPENDIX 3 (claim charts). Gandhi also relies upon a Declaration of
Dr. Michael Harold. Ex. 1001.
Beckmann Claim 1
In particular, Gandhi contends that Gandhi ’135 (Ex. 1005) discloses all
elements of Beckmann’s claim 1, except for the third supplying step of a 10
transitional exhaust gas having an intermediate exhaust gas composition.
However, such a feature is known in the art as disclosed by Surnilla ’504. As such,
the combination of Gandhi ’135 and Surnilla ’504 is said to disclose and render
“obvious” the invention of Beckmann’s claim 1. Paper 26, 2–3, 9–11.
Gandhi ’135 discloses a method of purifying an exhaust gas using a lean 15
NOx trap (i.e., lean NOx absorber or nitrogen oxide storage catalytic converter of
Beckmann’s claims 1 and 2) and SCR catalyst located downstream of the lean NOx
trap. Ex. 1005, Abstract, Fig. 2 (as reproduced below).

1 Schenk et al., “High Efficiency NOx and PM Exhaust Emission Control for
Heavy-Duty On-Highway Diesel Engines,” SAE Technical Paper Series, SAE
2001-01-1351, published March 5, 2001, and presented at SAE World
Congress on March 5–8, 2001 (Ex. 1006).
Interference 105,822
8

Gandhi ’135 further discloses: (1) supplying the lean NOx trap with a lean
exhaust gas (i.e., exhaust gas containing an excess of oxidizing constituents) to trap
NOx (Ex. 1005, 5:31–33); (2) supplying the lean NOx trap with a rich exhaust gas
(i.e., an exhaust gas containing an excess of reducing constituents) to purge NOx
from the trap (Ex. 1005, 5:34–39); (3) cyclical lean and rich operations, and 5
transitioning there between as reproduced in Fig. 1a below. (Ex. 1005, 1:38–43,
1:66–2:2).
As shown in Gandhi’s Figure 1a, the transition from lean to rich conditions
is illustrated below:
10
Ex. 1005, p. 3.
Gandhi’s Figure 1a shows the lean NOx trap operating in lean and rich
conditions. Ex. 1005, 1:38–39. In particular, the lean NOx trap functions: (1) to
absorb NOx when the engine is running under lean conditions, and (2) to purge the
NOx absorbed by the lean NOx trap during the lean cycle, when the engine is 15
running under rich conditions. Ex. 1005, 1:39–52. According to Gandhi ’135,
“[t]he reduction caused during the rich cycle purges the lean NOx [trap], and the
lean NOx [trap] is then immediately available for the next lean NOx storage/rich
NOx reduction cycle.” Id.
Interference 105,822
9

Surnilla ’504 discloses the third supplying step of a transitional exhaust gas
having an intermediate gas composition. Paper 26, 2:17–22. Specifically, Surnilla
’504 teaches an improvement to the operation of “lean burn” internal combustion
engines. Ex. 1007, 1:9–12. Surnilla ’504 notes that prior engine emission control
systems used devices such as a three-way catalytic converter to remove and store 5
NOx from the exhaust generated when the engine runs with a lean air-fuel ratio.
Ex. 1007, 1:29–34. Because the storage device becomes filled with NOx and can
no longer remove NOx from the exhaust, it is necessary to purge the filled device.
Ex. 1007, 1: 34–54. Purging is done by transitioning the engine to a stoichiometric
or rich air-fuel ratio. Ex. 1007, 1:35–40. The prior emissions systems controlled 10
the air-fuel ratio to cycle between a first air-fuel ratio—lean (storage) conditions—
and a second air-fuel ratio—stoichiometric/rich (purging) conditions. Ex. 1007,
1:40–54.
Surnilla ’504 also teaches that it was known that during the transition
between storage and purging conditions, there will likely be increased levels of 15
NOx in the tailpipe emissions. Ex. 1007, 2:6–10. Surnilla’s invention addresses
the problem of increased NOx emissions during the transition period. Ex. 1007,
2:32–40. Surnilla’s system sequentially steps the air-fuel mixture between the first
and second air-fuel ratios and vice versa. Ex. 1007, 2:43–62. The sequential
stepping is said to avoid excessive NOx emissions during the transitions between 20
the first and second (lean and stoichiometric). Ex. 1007, 2:62–3:2. In the case of
embodiments including a NOx storage device, the air-fuel ratio is set to a value rich
compared to the stoichiometric value to purge the NOx storage trap. Ex. 1007,
3:37–46. Thus, in a preferred embodiment the air-fuel ratio is stepped to a rich-
value to begin the NOx purge. Ex. 1007, 3:46–50. Upon completion of the purge 25
event, the air-fuel ratio is returned, “in a ‘step’ fashion, to a stoichiometric air-fuel
ratio.” Ex. 1007, 3:55–58. As further noted by Surnilla ’504, the stepping method
Interference 105,822
10

is preferably employed when transitioning from a lean air-fuel ratio to an enriched
air-fuel ratio suitable for purging NOx stored in the NOx trap 34 (Figure 1). Ex.
1007, 6:8–12; Fig. 1. The sequence of stepped enrichment of the air-fuel ratio
submitted to the NOx trap 34 from a “lean” value of 18 to a “rich” value of 12 is
illustrated in Figure 4. Ex. 1007, 6:16–20. The stoichiometric value is said to be 5
14.65. Ex. 1007, 4:56–61. We reproduce Surnilla’s Figure 4 below.

For the reasons detailed above, we find that Surnilla ’504 teaches, as
separate and distinct steps
supplying the nitrogen oxide storage catalytic converter, between 10
the oxidizing constituents supplying step and the reducing
constituents supplying step, with an exhaust gas which has a
lower content of oxidizing constituents than in the oxidizing
constituents supplying step and a lower content of reducing
constituents than in the reducing constituents supplying step. 15

As shown in Surnilla’s Figure 4, the exhaust gas supplied to the NOx storage
converter 34 is stepped from a lean value of 18 to a NOx purging rich value of 12.
The intermediate steps have values that are less lean, i.e., have a lower content of
oxidizing constituents than the lean value of 18, and are less rich, i.e., have a lower 20
content of reducing constituents than the rich value of 12. As noted above, the
Interference 105,822
11

composition of the exhaust with an air-fuel ratio of 12 is said to be suitable for
purging NOx storage converter 34. Ex. 1007, 6:8–20.
In our view, it would have been obvious to incorporate Surnilla’s stepped
transition technique in the process and system taught by Gandhi ‘135 to achieve
the benefits of reduced NOx emissions during the lean to rich transition as taught 5
by Surnilla ’504. According to Dr. Harold’s testimony, both Gandhi ’135 and
Surnilla ’504 are directed to reducing NOx emissions. Ex. 1001, ¶ 34. Gandhi
’135 achieves reductions by arranging a lean NOx trap and SCR catalyst and by
alternating lean and rich operations. Ex. 1005, Abstract. Surnilla ’504 achieves
reductions in NOx emissions by controlling the transitions from lean to rich in a 10
step-wise manner with steps that are “separate” and “distinct” from the lean and
rich operations. Ex. 1007, 2:43–3:5. Thus, one of ordinary skill in the art would
have been motivated to implement the known stepping transition disclosed in
Surnilla ’504 in the system disclosed in Gandhi ’135 to further reduce NOx
emissions as of October 25, 2003. Such a combination would have been obvious 15
to a person of ordinary skill in the art as of October 25, 2003 because it is merely
the use of a known technique to improve a similar method in a predictable way.
Ex. 1001 ¶ 51.
Beckmann argues that it would not have been obvious to modify the Gandhi
‘135 system by adding Surnilla’s stepping technique. Beckmann Opposition 1 20
(Paper 47), 11–14. According to Beckmann, the composition supplied to
Surnilla’s NOx catalytic converter is unknown. Paper 47, 13:1–15. Relying on Dr.
Kröcher’s testimony, Beckmann argues that, as shown in Surnilla’s Figure 1, the
exhaust gas passes through unidentified emission control element 32 prior to
reaching NOx trap 34. Paper 47, 14:3–6. Because the device 32 is not identified, 25
one skilled in the art would not have been able to determine the exhaust gas
composition supplied to NOx trap 34 based upon the air-fuel ratios from the engine.
Interference 105,822
12

Beckmann also directs us to the cross examination testimony of Gandhi’s expert,
Dr. Harold. Beckmann represents that Dr. Harold testified to the effect that the
content of the exhaust gas leaving Surnilla’s emission control device 32 and
entering NOx trap 34, cannot be known without the specific details of device 32.
Paper 47, 12:13–14:12. 5
We are not convinced by Beckmann’s argument and relied upon evidence.
Notwithstanding the presence or absence of an upstream device, Surnilla ’504
expressly ties the stepped lean to rich transition of the engine directly to the
character of the exhaust composition (i.e., rich or lean) entering the downstream
NOx trap and the activities within in the NOx trap: 10
In accordance with another feature of the invention, where the
invention is used in combination with a downstream device that
stores a selected exhaust gas constituent, such as NOx, when the
engine's air-fuel ratio is lean and releases previously-stored
selected constituent when the engine is operated at an air-fuel 15
ratio at or rich of the stoichiometric air-fuel ratio, the method
preferably includes enriching the air-fuel mixture to a third air-
fuel mixture supplied to at least one cylinder for a predetermined
time, whereupon the trap is purged of stored amounts of the
selected constituent. In a preferred embodiment, the air-fuel 20
mixture supplied to the last set of cylinders being stepped from a
lean air-fuel ratio to a stoichiometric air-fuel ratio is, instead,
immediately stepped to a rich air-fuel ratio to begin the purge
event. Where desired, the air-fuel mixture supplied to at least
one other set of cylinders, each already operating with a 25
stoichiometric air-fuel ratio, is simultaneously stepped to the rich
air-fuel ratio. Upon completion of the purge event, the enriched
air-fuel mixture supplied to each enriched set of cylinders is
returned, again in a “step” fashion, to a stoichiometric air-fuel
ratio. 30

Ex. 1007, 3:37–57. Surnilla ’504 also describes using the stepped engine transition
specifically with respect to NOx trap 34 as shown in Surnilla’s Figure 1:
Interference 105,822
13

In accordance with another feature of the invention, the method
is preferably also employed when transitioning from a lean
engine operating condition to an enriched engine operating
condition suitable for “purging” NOx stored in the trap 34,
because of the trap's reduced instantaneous efficiency (i.e., the 5
reduced instantaneous NOx -absorption rate) and/or a lack of
available NOx-storage capacity in the trap 34 which triggered the
need for the purge in the first instance. Still further, the last set
of cylinders 18 to be stepped to stoichiometric operation is
preferably immediately stepped through stoichiometric operation 10
to rich operation, thereby immediately commencing the purge
event, as illustrated in FIG. 4.

Ex. 1007, 6:8–20. Thus, Surnilla ’504 teaches that the exhaust gas entering the
NOx trap 34 is lean (i.e. includes an excess of oxidizing constituents) necessary for 15
storing NOx and is transitioned through intermediate steps to a rich composition
(i.e., one that includes an excess of reducing constituents) necessary to purge the
NOx trap. As taught by Surnilla ’504, it is the step-wise transition from lean to
reach that achieves Surnilla’s goal of avoiding increased levels of NOx emissions
from the NOx trap and in the tailpipe emissions during the lean to rich transition. 20
Ex. 1007, 2:32–40. Thus, notwithstanding the presence of device 32, the exhaust
gas provided to NOx trap 34 is cycled between lean (storage) and rich (purging)
values
Beckmann also relies on Dr. Kocher’s testimony to argue that there was no
motivation to combine Surnilla’s teachings with those of Gandhi ‘135. Beckmann 25
Opposition 1, Paper 47, 14:7–12. According to Beckmann, Surnilla ’504 does not
suggest that its “complex” transitioning technique would be useful in a system that
uses a combination of a lean NOx trap and an SCR catalyst. Beckmann Opposition
1, Paper 47, 14:7–12.
We are not persuaded by Beckmann’s argument. Both the Gandhi ’135 and 30
the Surnilla ’504 addresses the problem, inter alia, of NOx getting past the NOx
Interference 105,822
14

trap and becoming part of the tailpipe emissions. Ex. 1005, 1:60–2:7; Ex. 1007,
2:32–40. While both documents address this same goal or reducing those
emissions, neither’s solution is said to totally eliminate NOx tailpipe emissions.
Gandhi ’135 says the use of a NOx trap in conjunction with an SCR-catalyst
increases the overall conversion of NOx from 55% to 80%. Ex. 1005, 6:18–35. 5
Surnilla ’504 says the invention is “characterized by reduced levels of a selected
engine-generated exhaust gas constituent, such as NOx, whereby overall tailpipe
emissions of a selected exhaust gas constituent may be advantageously further
reduced.” Ex. 1007, 2:32–40 (emphasis added). In light of the requirements to
minimize NOx emissions (see Ex. 1005, 2:44–47) one having ordinary skill in the 10
art would have had ample reason to incorporate Surnilla’s technique of reducing
NOx emissions during the lean to reach transition with Gandhi’s technique to
maximize NOx reduction.
Beckmann Claim 2
Beckmann’s claim 2 depends from claim 1 and adds the additional 15
requirement of a parallel arrangement of two NOx storage catalytic converters that
are operated alternatively by a switching device selective that directs the exhaust
gas between the two converters. We reproduce Beckmann’s claim 2 in the margin.
Gandhi’s motion relies on the combination of Gandhi ’135, Surnilla ’504
and the Schenk publication (Ex. 1006). Gandhi Motion 1, Paper 26, 11:3–8; 12:3–20
6. Schenk shows that the system of alternately using two parallel NOx storage
converters and switching between them was a technique known to those working
in the art to effectively reduce NOx emission. Schenk’s system is described in the
Abstract and shown in Schenk’s Figure 1:
25
A diesel exhaust emission control system consisting of catalyzed
diesel particulate filters and NOx adsorber catalysts arranged in
a dual-path configuration was developed and evaluated using a
Interference 105,822
15

1999-specification 5.9 liter medium-heavy-duty diesel engine.
NOx adsorber regeneration was accomplished via a secondary
exhaust fuel injection system. An alternating restriction of the
exhaust flow between the two flow paths allowed injection and
adsorber regeneration to occur under very low space velocity 5
conditions. NOx and PM reductions in excess of 90% were
observed over a broad range of steady-state operating conditions
and over the hot-start HDDE-FTP transient cycle.

Ex. 1006, p. 4 (emphasis added). 10
Ex. 1006, Figure 1, p. 5. Schenk further teaches that during operation “[one] half
of the exhaust system had its exhaust flow restricted to just a small fraction (<5%)
of the total flow and operated in a regeneration mode.” Ex. 1006, 5, 2nd column.
In our view to employ Schenck’s known system and technique for reducing
NOx emissions in conjunction with the other known systems and techniques 15
described by Gandhi ’135 and Surnilla ’504 would have been obvious. The subject
matter of Beckmann’s claim 2 simply arranges known elements with each
preforming its known function and provides no more than would be expected from
Interference 105,822
16

the arrangement. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Beckmann argues that its claim 2 requires “that the parallel nitrogen oxide
storage catalytic converters ‘are operated alternately by switching of a switching
device arranged to selectively direct exhaust gas into said elements.’” Beckmann 5
Opposition 1, Paper 47, 15:12–14. According to Beckmann, Schenk (Ex. 1006)
does not teach alternate switching because in Schenk’s system, while one branch is
fully opened, the other is only “partially” blocked. Beckmann argues: “that the
disclosed restriction is not a total restriction of the exhaust gas so that the adsorbers
are operated alternatively, but rather a partial restriction that requires the exhaust 10
gas to be provided to both NOx adsorbers at all times.” Beckmann Opposition 1,
Paper 47, 16:2–4.
We are not convinced by Beckmann’s argument. We discern no basis to
limit “operated alternately by switching of a switching device arranged to
selectively direct exhaust gas into said elements” in the way urged by Beckmann. 15
Beckmann’s claim 2 does not expressly require fully blocking the passages.
Instead, Beckmann’s claim 2 simply recites a parallel arrangement of two lean NOx
traps to operate alternately by the use of a switching device that directs exhaust gas
into the lean NOx traps. Ex. 1003, 14:2–10. In any event, the argument is simply
inconsistent with Beckmann’s specification which teaches partially blocking one of 20
the parallel systems. Beckmann describes that in the use of a parallel arrangement
of two NOx storage catalytic converters shown schematically in Fig. 3, the exhaust
gas can be supplied “substantially” to either of the parallel exhausts:
The embodiment illustrated in FIG. 3 differs from that shown in
FIG. 1 by virtue of the fact that the nitrogen oxide storage 25
catalytic converter 4 is designed as a parallel arrangement of a
first nitrogen oxide storage catalytic converter element 4a and a
second nitrogen oxide storage catalytic converter element 4b.
Interference 105,822
17

Furthermore, there is a switching device 6 which enables the
exhaust-gas stream supplied to it through the exhaust pipe 3 to
be distributed as desired between the nitrogen oxide storage
catalytic converter elements 4a, 4b via the exhaust pipe branches
3a and 3b. It is preferable for the switching device 6. It is 5
preferable for the switching device 6 to be designed as a
switching valve, in such a way that the exhaust gas can be
supplied substantially either to the first nitrogen oxide storage
catalytic converter element 4a or to the second nitrogen oxide
storage catalytic converter element 4b. 10
Ex. 1003, 10:9–23 (emphasis added). See also Ex. 1003, 10:59–11:11 (exhaust gas
predominately supplied) and 11:44–50 (exhaust gas primarily supplied).
Beckmann’s argument is inconsistent with its own specification. In the absence of
express claim language requiring total blockage, we conclude that the language of
Beckmann’s claim 2 requiring the parallel nitrogen oxide storage catalytic 15
converters “are operated alternately by switching of a switching device arranged to
selectively direct exhaust gas into said elements” does not require that total
blocking of either exhaust path.
We conclude, therefore, that the subject matter of Beckmann’s claim 2
would have been obvious over the combined teachings of Gandhi ’135, Surnilla 20
’504 and Schenk (Ex. 1006).
For these reasons, we are persuaded that Gandhi has established that
Beckmann’s claims 1 and 2 are unpatentable under 35 U.S.C. § 103(a) as being
obvious over Gandhi ’135, Surnilla ’504, and Schenk (Ex. 1006).
25
III. BECKMANN MOTION 2 (PAPER 42) –
CROSS-APPLICABILITY OF PRIOR ART
A.
In the decision on motions (Paper 114), we found Beckmann established that
Gandhi’s claims 3, 4, 6, and 9 are unpatentable under 35 U.S.C. §§ 102(b) and 30
Interference 105,822
18

103(a) based on prior art, including Kinugasa ’024 (Ex. 2008), Kinugasa ’241 (Ex.
2009) and Binder ’499 (Ex. 2010) as presented in Beckmann Motion 2 (Paper 42).2
Paper 114, 41:21–25. In addition, we also found Beckmann rebutted the
presumption under 37 C.F.R. § 41.207(c) that Beckmann’s claims 3 and 4 are not
unpatentable over the same prior art asserted against Gandhi’s claims 3, 4, 6, and 5
9, because the asserted prior art does not teach or suggest a “third [exhaust gas]
supplying step” that is controlled in terms of exhaust gas composition and duration,
as recited by Beckmann’s claims 3 and 4. Paper 114, 43:25–44:2.
However, we found Beckmann failed to rebut the presumption under 37
C.F.R. § 41.207(c) that Beckmann’s claims 1 and 2 are unpatentable over the same 10
prior art asserted against Gandhi’s claims 3, 4, 6, and 9. As such, we found
Beckmann’s claims 1 and 2 are unpatentable over the same cited prior art. Paper
114, 53.
B.
In light of the Federal Circuit’s construction of the third supplying step 15
recited in claims 1 and 2 of Beckmann ’605, i.e., “a third exhaust gas supplying
step that is separate and distinct from the lean and rich exhaust gas supplying
steps” but that “third [exhaust gas] supplying step [need not] be controlled in terms
of exhaust gas composition and duration,” we revisit the issue of whether
Beckmann has rebutted the presumption under 37 C.F.R. §41.207(c) that claims 1 20
and 2 of Beckmann ’605 should be patentable over the same prior art asserted by
Beckmann against Gandhi’s claims. We are persuaded by Beckmann’s arguments
that the asserted prior art, including Kinugasa ’024 (Ex. 2008), Kinugasa ’241 (Ex.
2009), and Binder ’499 (Ex. 2010) does not anticipate or render obvious claims 1
and 2 of Beckmann ’605. Paper 42, 14:19–15:17. 25

2 That decision was not appealed to the Federal Circuit and, as such, remains final.
Interference 105,822
19

Kinugasa ʼ241 (Exhibit 2009)
Kinugasa ʼ241 discloses an exhaust gas purification system, shown in Figure
1, for an internal combustion engine capable of removing NOx in the exhaust gas
of a lean burn engine with high efficiency. Ex. 2009, 1:6–12; Ex. 2007 ¶¶ 52–70.
Figure 1 of Kinugasa ʼ241 is reproduced below: 5

As shown in Figure 1 of Kinugasa ’241, the exhaust gas purification system
includes in the direction of the exhaust gas flow from engine 1, (1) a NOx
absorbent 3 and (2) a denitrating catalyst 7. The NOx absorbent 3 is arranged to
receive alternate supplies of lean and rich exhaust gases from the engine 1, and is 10
also known as the NOx catalytic converter of Beckmann’s claims 1 and 2. Ex.
2009, 13:28–30, 35–44. The denitrating catalyst 7 is arranged downstream of the
NOx absorbent 3, and is also known as the SCR [selective catalytic reduction]
catalytic converter of Beckmann’s claims 1 and 2. Ex. 2009, Fig. 1; Ex. 2007 ¶¶
47–70. 15
The overall operation of the arrangement of Figure 1 of Kinugasa ’241 is
illustrated in Figure 3, a relevant portion of which is reproduced below.
Interference 105,822
20

As shown in Figure 3 of Kinugasa ’241, the curve (A) illustrates that during
time period I, cylinders #2 – #4 of engine 1 produce lean exhaust gas, which is
supplied to NOx absorbent 3 (NOx catalytic converter), via first exhaust passage
142. Ex. 2009, 13:28–30. When time period I ends and during time period II, 5
cylinders #2 – #4 of engine 1 produce rich exhaust gas NOx absorbent 3 (NOx
catalytic converter). Ex. 2009, 13:35–40. As illustrated by the curve during time
period IIa in section (B) of Figure 3, the transition from lean condition to rich
condition causes a NOx spike at the outlet of NOx absorbent 3 (NOx catalytic
converter) during the rich mode. Ex. 2009, 13:35–50. 10
Because a NOx spike of Kinugasa ’241 occurs during the transition in which
the NOx absorbent 3 (NOx catalytic converter) transitions from lean to rich
condition and during the rich mode, we are persuaded that Kinugasa ʼ241 does not
teach or suggest a third [exhaust gas] supplying step that is separate and distinct
from the rich and lean exhaust gas supplying steps, as recited in Beckmann’s 15
claims 1 and 2. Paper 42, 15:7–17.
Kinugasa ʼ024 (Exhibit 2008)
Kinugasa ʼ024 also discloses a number of embodiments for an exhaust-gas
purification system including at least two of (1) a three-way catalyst; (2) a NOx
absorbing-reducing catalyst; and (3) an NH3 adsorbing-denitrating catalyst, as 20
shown, for example, in Figure 26. Ex. 2008. A first set of embodiments is
disclosed in which a three-way catalyst is used to generate ammonia and a second
Interference 105,822
21

set of embodiments in which a NOx absorbing-reducing catalyst is used to generate
ammonia. Ex. 2008, 5:23–25, 32–36
Figure 26 of Kinugasa ’024 shows such a system as reproduced below.

As shown in Figure 26 of Kinugasa ’024, a pair of NOx absorbing-reducing 5
catalysts 70a, 70b are connected to exhaust manifolds 133a, 133b with a NH3
adsorbing-denitrating catalyst 9 connected downstream. Ex. 2008, 29:48–52; Ex.
2007 ¶¶ 85, 86, 89. According to Kinugasa ’024, the exhaust-gas purification
system is supplied with alternating lean and rich exhaust gases; in the rich mode,
NOx and ammonia are released from the NOx absorbing-reducing catalysts. Ex. 10
2008, 19:22–26, 28:1–8, 29:54–56.
Like Kinugasa ʼ241, we are persuaded that Kinugasa ’024 does not teach or
suggest a third supplying step that is separate and distinct from the rich and lean
exhaust gas supplying steps, as recited in Beckmann’s claims 1 and 2.
Binder ʼ499 (Exhibit 2010) 15
Binder ʼ499 discloses a method for purifying exhaust gas from engine 1 that
involves supplying a lean exhaust gas followed by a rich exhaust gas to a zoned
catalyst component comprising a NOx catalytic converter 7 and a downstream SCR
[selective catalytic reduction] catalytic converter 8. Ex. 2010 ¶¶ 22, 24, Fig. 1.
Interference 105,822
22

Binder ʼ499 discloses alternately supplying a NOx catalytic converter with
lean and rich exhaust gases and switching from the lean burn mode to the rich burn
mode to regenerate the NOx catalytic converter 7. Ex. 2010 ¶ 24.
Like Kinugasa ʼ241 and Kinugasa ’024, we are persuaded that Binder ʼ499
does not teach or suggest a third supplying step that is separate and distinct from 5
the rich and lean exhaust gas supplying steps, as recited in Beckmann’s claims 1
and 2.
C.
Gandhi argues that Beckmann’s claim 1 “simply requires that, between lean
and rich operations, the Lean NOx Trap be supplied with an exhaust gas having 10
less oxidizing constituents than lean operations and less reducing constituents than
rich conditions, and that this supplying step terminate at the earliest when the Lean
NOx Trap is predominantly full of exhaust gas supplied during this step.” Gandhi
Opposition 2, Paper 51, 7:19–23. Assuming the correctness of that statement, we
fail to see the relevance of this argument to the teachings of Kinugasa ’241, 15
Kinugasa ’024 or Binder ’499. Gandhi does not explain where such a step between
the lean and rich operations is disclosed in those references or, most importantly,
would be considered to be a step separate and distinct from the lean and rich steps.
To the extent that it might be argued that, in the systems taught by each of the
references, Beckmann’s third supplying step is inherently present as the transition 20
between the lean and rich supplying steps taught in those references, we disagree.
It is likely that during the transition between supplying the lean and rich exhaust
gas in those systems that a composition between the two is supplied. In our view,
such a minimal transition phase would not meet the requirement that the third
supplying step be “separate and distinct” from the lean and rich supplying steps. 25
Rather, the transition between lean and rich is integral to the lean and rich steps.
Interference 105,822
23

Absent some teaching, suggestion, motivation or reasoning why one
ordinarily skilled in the art would have modified the systems of the three
references by adding the separate and distinct intermediate supplying step, we see
no basis for concluding that the subject matter of Beckmann’s claims 1 and 2
would have been obvious from the references cited against Gandhi’s claims. Thus, 5
based upon the arguments of the parties and on the record before us, the
presumption of 37 C.F.R. § 41.207(c) is not applicable against Beckmann’s claims
1 and 2.
D.
Because the asserted prior art fails to teach or suggest a third supplying step 10
that is separate and distinct from the rich and lean exhaust gas supplying steps in
the manner recited in Beckmann’s claims 1 and 2, we conclude that the
presumption of 37 C.F.R. §41.207(c) does not apply against claims 1 and 2 of
Beckmann ’605 and (2) Beckmann’s claims 1 and 2 are not unpatentable over
Kinugasa ’024 (Ex. 2008), Kinugasa ’241 (Ex. 2009), and Binder ’499 (Ex. 2010). 15

IV. BECKMANN MOTION 1 (PAPER 30) –
LACK OF WRITTEN DESCRIPTION
A.
In its opinion, the court concluded “the Board’s finding that the ’901 20
application contains an adequate written description of the ‘minimizing the oxygen
content . . . prior to a rich cycle’ limitation of claims 5, 8, 11, and 17 is
unsupported by substantial evidence” and, based on that conclusion, vacated that
finding and remanded for further proceedings. Id. at 3, 28–29. In support of that
conclusion, the court noted: 25
[t]he Board did not consider and analyze whether the ’901
application provides an adequate written description of the “prior
to” limitation. We therefore vacate its written description
Interference 105,822
24

decision as to claims 5, 8, 11, and 17.

Id. at 28.
For purposes of this decision, we limit our consideration to the issue of
whether Beckman has established that Gandhi ’901 does not provide adequate 5
written description support for the “prior to” limitation, i.e., “minimizing the
oxygen content . . . prior to a rich cycle” limitation as recited in Gandhi’s claims 5,
8, 11, and 17.
B.
Gandhi’s claim 5 is representative of the “prior to” claims and recites: 10
A method for reducing pollutants in the exhaust gas of an engine
having a system including a nitrogen oxide adsorber and a NH3-SCR
catalyst downstream of the nitrogen oxide adsorber, comprising the
steps of:
15
supplying the nitrogen oxide adsorber with exhaust gas while the
engine operates under lean conditions, wherein the exhaust gas is a lean
exhaust gas;

transitioning the engine operations from lean to rich conditions; 20

supplying the nitrogen oxide absorber with exhaust gas during
said transitioning;

minimizing the oxygen content of the nitrogen oxide absorber 25
prior to rich conditions to facilitate the reduction of NOx to NH3;

completing the transition from lean to rich conditions; and

supplying the nitrogen oxide absorber with exhaust gas while the 30
engine operates under rich conditions, wherein the exhaust gas is a rich
exhaust gas.

Gandhi Clean Copy of Claims, Paper 12, Claim 5, 4–5.
Interference 105,822
25

In all Gandhi’s claims 5, 8, 11, and 17, the “prior to” language imposes a
temporal requirement that “minimizing the oxygen content” take place “prior to”
rich conditions as part of the claimed method.
C.
Beckmann, as the movant, bears the burden of proving by a preponderance 5
of the evidence that Gandhi’s claims 5, 8, 11, and 17 are unpatentable under
35 U.S.C. § 112, first paragraph, for lack of written description in the original
specification of Gandhi ‘901. 37 C.F.R. §§ 41.121(b) and 41.208(b); see also
Bosies v. Benedict, 27 F.3d 539, 541–42 (Fed. Cir. 1994).
In order to satisfy its burden, Beckmann must prove that Gandhi’s written 10
description does not convey with reasonable clarity to a person of ordinary skill in
the art that the Gandhi inventors had possession of the claimed invention as of the
filing date of the patent application. See Pandrol USA, LP v. Airboss Ry. Prods.
Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005).
D. 15
In its Motion 1, Beckmann argued that Gandhi claims 5, 7, 8, 10, 11, 16, and
17 were not supported by the written description of Gandhi’s ‘901 application
because those claims require:
“the minimization the oxygen content in the NOx
catalytic converter prior to the rich cycle.” 20
Beckmann Motion 1, 15:18–19 (emphasis added). Each of claims 5, 7, 8, 10, 11,
16, and 17 require minimizing the oxygen content of the NOx trap. Gandhi Clean
Copy of Claims, Paper 12, 4–8. However, as noted by the Federal Circuit, only
claims 5, 8, 11 and 17 include the temporal “prior to” requirement. We refer to
those claims as “the temporal claims.” 25
In our original opinion we held that Beckmann’s argument and Dr.
Kröcher’s testimony did not provide:
Interference 105,822
26

an adequate reason as to why the structures disclosed, for
example, in Gandhi’s Figures 2, 4a-4c, 7a-7c and 9, and their
accompanying text, including ¶[0041], do not convey to a person
skilled in the art the minimization of the oxygen content in the
NOx catalytic converter (lean NOx trap) prior to the rich cycle, as 5
described in Gandhi’s disclosure. Ex. 2001, Claims 5,
7, 8, 10, 11, 16, and 17, ¶[0041].
Paper 114, 23:24–29.

The Federal Circuit concluded that substantial evidence supported the 10
Board’s written description finding regarding non-temporal claims 7, 10 and 16,
but substantial evidence did not support the temporal claims. Beckman v. Gandhi,
646 Fed. Appx. 950, 965 (Fed. Cir. 2016).
In light of the Court’s remand, we have again reviewed Beckmann’s motion,
focusing on the temporal claims. 15
In its motion, Beckmann did not distinguish between Gandhi’s temporal
claims and non-temporal claims 7, 10, and 16. Beckmann’s motion only argues
that Gandhi’s written description lacked disclosure of the minimization of the
oxygen content in the NOx converter. Thus Beckmann argued:
The only possible disclosure in the Gandhi [‘9013] application 20
related to the minimization of oxygen concerns the optimization
of the NOx catalytic converter “for ammonia generation by
removing oxygen storage capacity (OSC)” and to “minimize
OSC to lessen fuel penalty.”
25

3 Beckmann’s Motion 1 (Paper 26) addressed the written description of Gandhi’s
grandparent Application 10/065,470. As we noted in our original decision, the
proper application for evaluating adequate written description for the claimed
subject matter is Gandhi’s involved ‘901 application. Because the written
description of Gandhi’s involved application and those of its parent and
grandparent applications appeared to be identical, we treated the motion as
addressing the ‘901 application. Paper 114, 8:23 – 9:7. We do here also.
Interference 105,822
27

Beckmann Motion 1, Paper 30, 15:22–24. Relying on Dr. Kröcher’s testimony
Beckmann argued that the minimization of oxygen content would require
physically changing the NOx catalytic converter which could not occur during the
operation of the system:
[A] person of ordinary skill in the art would have recognized that 5
the oxygen storage capacity referred to by Gandhi is a physical
characteristic of the NOx catalytic converter, and that changing
the oxygen storage capacity would require physical
modifications to the NOx catalytic converter. This physical
modification cannot occur while the exhaust gas purification 10
system is operating, but instead must be performed before the
system is installed in a vehicle. Thus, because Gandhi’s [‘901]
application only contemplates minimization of oxygen content
that can occur through a physical modification and not during
operation of the engine, Dr. Krӧcher confirms that Claims 5, 7, 15
8, 10, 11, 16, and 17 lack adequate written disclosure.
Beckmann Motion 1, Paper 30, 16:1–10 (citations to Kröcher’s testimony, Ex.
2004, ¶¶ 107–116, 124, and 125 excluded).
Beckmann’s motion treated all the “minimizing the oxide content” claims as
a single group and did not argue or direct us to evidence attempting to establish 20
that the claims including the “prior to” limitation—separate from the minimization
of oxygen content requirement—was not described. Beckmann Motion 1, Paper
30, 15:16–16:10. Beckmann’s motion, at best, provides only an unsubstantiated
allegation that the “prior to” limitation of Gandhi’s temporal claims is not
supported by the written description of the Gandhi ’901 application. 25
Beckmann, as the moving party, bears the burden of providing a showing
supported by appropriate evidence that if unrebutted would justify finding that the
“prior to” limitations were not supported. See 37 C.F.R. § 41.208(b). Because
Beckmann has neither provided argument nor directed us to evidence related to the
lack of a description of the temporal limitation—other than that held to be 30
Interference 105,822
28

insufficient with respect to minimizing the oxide content—Beckmann has failed to
meet its burden of establishing entitlement to a holding that the “prior to”
limitations of claims 5, 8, 11, and 17 are not adequately supported.
In the context of this inter partes proceeding, it is not our province to review
Gandhi’s written description based upon the mere allegation that a limitation is not 5
supported. We cannot make factual findings interpreting Gandhi’s written
description based upon our own expertise. Brand v. Miller, 487 F3d 862, 869 (Fed.
Cir. 2007) (“in the context of a contested case, it is impermissible for the Board to
base its factual findings on its expertise, rather than on evidence in the record”).
Rather, it is Beckmann’s burden to explain why the limitation lacks support. 10
Beckman has not provided an explanation or directed us to evidence that would
establish that the “prior to” limitation of the temporal claims lacks written
description support.
We deny Beckmann’s Motion 1 as to Gandhi’s claims 5, 8, 11, and 17.
V. HOLDINGS
Based on the court’s revised construction of Beckmann’s claims 1 and 2, and 15
after consideration of the parties’ arguments and evidence, we conclude Beckmann
has rebutted the presumption under 37 C.F.R. §41.207(c) that claims 1 and 2 of
Beckmann ‘605 are not unpatentable over prior art cited in Beckmann Motion 2
(Paper 42). We also conclude Gandhi has established that Beckmann’s claims 1
and 2 are unpatentable under 35 U.S.C. § 103(a) over prior art cited in Gandhi 20
Motion 1 (Paper 26). Gandhi Motion 1 (Paper 26) is GRANTED as to
Beckmann’s claims 1 and 2. We also conclude Beckmann has failed to prove that
Gandhi’s claims 5, 8, 11, and 17 are unpatentable under 35 U.S.C. § 112, first
paragraph, for lacking a written description support. Beckmann Motion (Paper 30)
is DENIED. 25
Interference 105,822
29

Because we hold that claims 1 and 2 of Beckmann ’605 are unpatentable
over the art cited in Gandhi Motion 1 (Paper 26), and because the Federal Circuit
affirmed the Board’s decision that claims 3 and 4 of Beckmann ’605 are
unpatentable, Beckmann has no patentable claims in the interference. Gandhi’s
remaining claims 5, 7, 8, and 10–17 have not been shown to be unpatentable. 5
Because Beckmann, the junior party, has not filed a priority statement alleging a
date of invention prior to Gandhi’s accorded filing date, there is no basis to
proceed to a priority determination. Accordingly, we enter a judgment terminating
the interference in a separate paper.
10
Interference 105,822
30

cc (e-mail):
Attorneys for Beckmann:

Michael H. Jacobs, Esq. 5
Vincent J. Galluzzo, Esq.
CROWELL & MORING, LLP
Intellectual Property Group
MJACOBS@CROWELL.COM
VGALLUZZO@CROWELL.COM 10

Attorneys for Gandhi:

E. Anthony Figg, Esq.
R. Danny Huntington, Esq. 15
ROTHWELL, FIGG, ERNST & MANBECK, PC
EFIGG@RFEM.COM
DHUNTINGTON@RFEM.COM

20