UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0 Box 1450
`Alexandria, Virginia 22313-1450
`WWW.1]SPi.0 gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAM < ) INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,745
`
`09/07/20] 1
`
`7229597
`
`04] 1900040036
`
`4882
`
`13872
`
`7590
`
`08/13/2013
`
`Servilla Vxfhitney LLC (Reexaminations)
`33 Wood Avenue South
`Second Floor, Suite 210
`Iselin, NJ 08 8 3 0
`
`EXAMINER
`LOPEZ. CARLOS N
`
`ART UNIT
`3991
`
`MAIL DATE
`
`08/ 1 3/201 3
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`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—9OA (Rev. 04/07)
`
`BASF-2001.001
`
`

`
`Transmittal of Communication to
`
`Third Party Requester
`.
`.
`Inter Partes Reexamination
`
`95/001745
`E
`'
`Xa"""°'
`CARLOS LOPEZ
`
`7229597
`A U '
`" mt
`3991
`
`Control No.
`
`Patent Under Reexamination
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`lj (THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS) TI
`
`FITZPATRICK CELLA HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above—identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the interpartes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the interpartes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand—carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20130722
`
`BASF-2001.002
`
`

`
`Control No.
`
`Patent Under Reexamination
`
`Right of Appeal Notice
`
`95/001,745
`Examiner
`CARLOS LOPEZ
`
`7229597
`Art Unit
`3991
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 16 October 2012
`
`Third Party(ies) on 15 November 2012
`
`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41 .20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41 .20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed 16 October 2012
`
`[I will be entered
`
`IZI will not be entered*
`
`*Reasons for non-entry are given in the body of this notice.
`
`1a. IE Claims 1 are subject to reexamination.
`
`1b. I:| Claims j are not subject to reexamination.
`2. I] Claims j have been cancelled.
`
`. I] Claims _ are confirmed. [Unamended patent claims].
`
`.
`
`.
`.
`.
`.
`.
`
`I:l Claims j are patentable. [Amended or new claims].
`
`IE Claims 1 are rejected.
`I:l Claims
`are objected to.
`I:I are not acceptable.
`[I are acceptable.
`I:l The drawings filed on
`I:l The drawing correction request filed on j is I:I approved. I:I disapproved.
`I:l Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`
`I:I been received.
`10. I:I Other
`
`Attachments
`
`I:I not been received.
`
`I:I been filed in Application/Control No.
`
`1. I] Notice of References Cited by Examiner, PTO-892
`2.
`IE Information Disclosure Citation, PTO/SB/O8
`3.
`|:|
`
`U_S_ Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Right of Appeal Notice (37 CFR 1.953)
`
`Part of Paper No. 20130722
`
`BASF-2001.003
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Inter Partes Reexamination
`
`Right of appeal Notice
`
`Procedural History
`
`A request for inter partes reexamination of claims 1-15 of United States Patent
`
`Number 7, 229, 597 to Patchett et a|.al (hereinafter "the ‘597 Patent"), was filed by a
`
`third party requester on September 7, 2011. An order granting the reexamination
`
`request and a first office action on the merits were mailed on 11/30/11. Patent Owner
`
`timely filed a response on 2/8/12. Subsequently, Third Party Requester filed its
`
`response on 3/9/12 and petitioned to waive the page limit of C.F.R 1.943(b). The
`
`Petition was granted on 8/14/12. An action closing prosecution (ACP) was mailed on
`
`8/16/12. An extension of time was filed by the patent owner on 8/24/12 and was
`
`granted on 8/31/12. The patent owner filed a response to the ACP (“PO ACP
`
`response”) on 10/16/12 and petitioned to waive the page limit of C.F.R 1.943(b). The
`
`patent owner's petition to waive the page limit was granted on 2/20/13. The third party
`
`filed comments to patent owner response to the ACP (“Third party ACP response”) on
`
`11/15/12 along with a petition waive the page limit. Third party‘s petition to waive the
`
`page limit was dismissed on 2/20/13 as being unnecessary.
`
`Patent Owner’s Amendment after ACP
`
`The Patent Owner’s amendment filed on 10/16/12 will not be entered for the
`
`reasons that follow.
`
`BASF-2001.004
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 3
`
`An amendment after ACP “wiii be subject ta the Ci"i'L'=3*F§i:'i of § 1.116 as to whether
`
`or not it shaii be admitted.” See 3}’ C.F.R. 1.§3:’31 ta). 3? C.F.i3»2 5; 1.116 (b) states the
`
`foiiowing:
`
`(1) Ah amendariant may be made can-eating ciaims or eompiying with any
`requirement of form expresety set forth in a previetts Office action;
`(2) An amendment presenting rejeeteci oiaims in better form fer censitteratioh on
`appeai may be admitted; at
`(3) An amettciment toticititig the rnetits of the appiicaiion or patent under
`teexaminaiian may be admitted upon a shawing of good and sufficieh't reasons
`why the amendment is necessary and was not eartier presented.
`
`The amendment by the patent owner filed after ACP proposes, among other
`
`things, to insert the phrases "slurry loaded washcoat,” and "including a zeolite and a
`
`base metal component."
`
`As to 1.116 (b) (1), the proposed amendment does not cancel any claims or is
`
`complying with any requirements expressed in the previous office action.
`
`As 1.116 (b) (2), the proposed amendment does not place the rejected claims in
`
`better form for consideration on appeal because the amendment would necessitate new
`
`grounds of rejections under 35 U.S.C 112 15‘ and 2”” paragraph, which would also
`
`necessitate that prosecution be re-opened contrary to the statutory requirement that
`
`inter partes reexamination be conducted with special dispatch within the office.
`
`Specifically, according to the patent owner the phrase “slurry loaded washcoat”
`
`provides a “washcoat partially or fully fills the pores” of the filter wall. See PO ACP
`
`response at page 14. However, this structural feature of partial or fully filled pores is not
`
`disclose in the specification in such a way as to reasonably convey to one skilled in the
`
`BASF-2001.005
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 4
`
`:"eE<ava:1t art that the Et'we:":toa"{sj;, at the time the application was filed, had possesrsion of
`
`the claimed invention.
`
`Regarding the 112 2”“ paragraph rejection the patent owner argues that the
`
`phrase “slurry loaded “has been inserted into the claims to provide further structural
`
`distinction over Ohno’s chemically derived layers.” PO ACP response at page 16.
`
`However, neither the specification nor the patent owner addresses what additional
`
`structural feature is imparted by the phrase “slurry loaded.” Accordingly, a 112 2nd
`
`paragraph rejection would have to be made because it is indefinite as to what structural
`
`feature is imparted by the phrase "slurry loaded."
`
`Additionally, the proposed amendment would not overcome the prior art
`
`rejections of record.
`
`As to 1.116 (b) (3), the patent owner argues that the amendment could not have
`
`been presented earlier because the patent owner could not anticipate that the office
`
`would interpret the phrase “washcoat” as a coating. See PO ACP response at page 7,
`
`second paragraph. However, this is not good and sufficient reasons to enter the
`
`amendment because the patent owner’s specification uses the phrase “washcoat” as
`
`imparting a coating. As detailed below, the ‘597 patent under reexam describes the
`
`slurry contacted flow substrates as “The coated substrates..." Accordingly, the patent
`
`owner could have anticipated that the PTO would have construed the term “washcoat”
`
`as imparting a coating structure. Furthermore, if we held patent owner's argument that
`
`the patent owner could have not anticipated what the PTO would do, then the PTO as
`
`BASF-2001.006
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 5
`
`whole would be hard pressed to not enter every amendment after ACP; Essentially
`
`1.116 (b) would be superfluous.
`
`Moreover, the amendment to the claims is not in separate paper which would
`
`result in a notice of non—compliant amendment.
`
`Information Disclosure Statements and Declarations
`
`The information disclosure statements filed by the Patent Owner on 9/14/12,
`
`1/22/13, 4/17/13, 6/24/13 and 8/5/13 have been considered. Additionally the Second
`
`Haller declaration, Wandeclaration, Farrauto declaration, Patchett declaration and
`
`Dettling declarations filed on 10/16/12 have been entered.
`
`The declarations by Rajaram, Blakeman, Phillips, and Maurer filed on 11/15/12,
`
`all submitted by the third party, have been entered.
`
`Evidence Relied Upon
`
`1. U.S. Patent Application Pub. No. 2002/0039550
`2. WO O2/26351
`3. WO 01/9671?
`
`4. Japanese Patent Publication No. JP 09-173866
`5. European Patent Application Publication No. EP O766993A2
`6. Heck, RM. et al., ""Cata|ytic Air Pollution Control," (2d ed. 2002) (Heck), pp. 204-208
`7. U.S. Patent Application Pub. No. 2003/0101718
`8. U.S. Patent No. 5,516,497
`9. U.S. Patent No. 6,928,806
`10. W0 O3/054364 A2
`
`Scope of Claims
`
`BASF-2001.007
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 6
`
`In reexamination, patent claims are construed broadly. In re Yamamoto, 740 F.2d
`
`1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984) (claims given "their broadest
`
`reasonable interpretation consistent with the specification").
`
`The ‘597 Patent is drawn to an emission treatment system for NOx and particulate
`
`matter. Representative of the claimed invention is independent claim 1 claiming the
`
`following:
`
`1. An emission treatment system for treatment of an exhaust stream comprising NOx
`and particulate matter, the emission treatment system comprising:
`
`a) an oxidation catalyst;
`
`b) an injector in fluid communication with and downstream of the oxidation catalyst,
`wherein the injector periodically meters ammonia or an ammonia precursor into the
`exhaust stream; and
`
`c) a wall flow monolith in fluid communication with and downstream of the injector,
`wherein the wall flow monolith has a plurality of longitudinally extending passages
`formed by longitudinally extending walls bounding and defining said passages,
`
`wherein the passages comprise inlet passages having an open inlet end and a closed
`outlet end, and outlet passages having a closed inlet end and an open outlet end,
`
`wherein the wall flow monolith comprises a washcoat of SCR catalyst composition that
`permeates the walls at a concentration of at least 1.3 g/in‘°’; wherein the wall flow
`monolith has a wall porosity of at least 50% with an average pore size of at least 5
`microns.
`
`The limitation “permeates” means that the "catalyst composition is dispersed
`
`throughout the wall of the substrate.” See ‘597 Patent at col. 10, II. 20-23. Accordingly,
`
`catalyst that penetrates the claimed wall flow monolith is deemed as permeating the
`
`BASF-2001.008
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 7
`
`wall flow monolith. See also col. 9, II. 60-67 of the ‘597 Patent describing the claimed
`
`wall as "the wall itself may consist all, or in part of the catalytic material."
`
`The phrase “periodically meters ammonia or ammonia precursor” is interpreted
`
`as injecting ammonia or ammonia precursor into the exhaust stream. See also batch
`
`type process of injecting ammonia described in col ‘IO,
`
`II. 55-67 of the ‘597 Patent and a
`
`continuous flow type injection described in col. 10, II. 45-54 of the ‘597 Patent.
`
`The phrase “washcoat” is supported by the ‘597 patent at col. 10, l.4—22. This
`
`citation shows that “To it a wall flow substrate with the SCR catalyst..." a slurry
`
`contacts the wall flow substrate. The ‘597 patent describes the slurry contacted flow
`
`substrates as “The coated substrates...” Accordingly, the structural feature imparted
`
`by the product—by—process phrase “washcoat” is deemed as a coating. See also
`
`Pfeifer's paragraph 37 describing the coating on the particles as the “so called wash
`
`coat.”
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the 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 time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the manner in which the invention was made.
`
`BASF-2001.009
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Ground 1
`
`The requester proposes rejecting claims 1-8 and 10-15 under 35 U.S.C. 103(a)
`
`as being unpatentable over U.S. Patent Application Pub. No. 2002/0039550 (Schafer-
`
`Sindlinger) in view of WO 02/26351 (Ohno), wherein reference will be made to the
`
`certified translation of Ohno.
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`ADOPTED in the non-final Office Action mailed on November 30, 201 1, and remains
`
`ADOPTED for the reasons set forth in the arguments section of this office action and for
`
`the following reasons:
`
`Schafer—Sind|inger discloses a system for treatment of an exhaust stream
`
`comprising oxides of nitrogen. See 1] [OOO1]. The system of Schafer—Sind|inger includes
`
`an oxidation catalyst for forming or increasing the nitrogen dioxide content in the
`
`exhaust gas stream. See Figure 1 ; 1] [OO15]. The system further comprises an injector in
`
`fluid communication with and downstream of the oxidation catalyst, with the injector
`
`providing ammonia or an ammonia precursor (urea) into the exhaust stream. See 1j
`
`[OO35].
`
`The emission treatment system of Schafer—Sind|inger further comprises an SCR
`
`catalyst (deemed as the claimed wall flow monolith) downstream of the injector for
`
`reducing the nitrogen dioxide with the injected ammonia or ammonia precursor. See 1]
`
`[0O19]—[0O20]. The SCR catalyst is in the form of a metal (e.g., iron or copper)-promoted
`
`zeolite catalyst. See 1] [OO14]. Schafer—Sind|inger indicates that the zeolite catalyst is
`
`"preferably applied, in the form of coating, to honeycomb structures made of ceramic or
`
`BASF-2001.010
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 9
`
`metal... A coating concentration of up to 200 grams of catalyst powder per liter (3.3
`
`g/in‘°’) of honeycomb structure is preferably striven for." See 11 [0024]. Schafer-Sindlinger
`
`uses a "conventional honeycomb structure" made of cordierite to support the zeolite
`
`catalyst. See 11 [OO38].
`
`Schafer—Sindlinger
`
`is silent detailing the claimed specific filter substrate, to
`
`support the SCR catalyst, such as the claimed pore size, porosity and structural
`
`passages. However, Ohno discloses a SCR filter substrate configured as a wall flow
`
`monolith having a plurality of longitudinally extending passages formed by longitudinally
`
`extending walls bounding and defining the passages, where the passages comprise
`
`inlet passages having an open inlet end and a closed outlet end, and outlet passages
`
`having a closed inlet end and an open outlet end. See Ohno at page 28, II. 13-15, Fig. I
`
`(a) and Fig. l (b). The cell walls, i.e., the walls of the pores, of the wall flow monolith of
`
`Ohno are covered by a catalyst layer. See page 7, ll.3-8 and Figs. 1-3. The filter
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`substrate taught by Ohno has porosity of 50% and a pore size of 10 pm. Example 5 in
`
`Table 1 on p. 30. Ohno, at page 2, ll.1 -7, further teaches that its catalyst carrying filter
`
`substrate provides minimal loss of exhaust gas pressure.
`
`At the time the invention was made, it would have been obvious to a person of
`
`ordinary skill in the art to have utilized the wall flow monolith taught by Ohno as the filter
`
`substrate of Schafer—Sindlinger, wherein Schafer—Sindlinger’s catalyst is added between
`
`the pores of the wall flow monolith in the manner taught by Ohno in order to provide an
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`SCR filter having minimal loss of exhaust pressure.
`
`BASF-2001.011
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 10
`
`Regarding the amendment to claim 1 requiring that the catalyst be a washcoat,
`
`Ohno teaches of providing a coating (“washcoat” as instantly claimed) around the
`
`particles that form the monolith. See Ohno at page 12, 4th full paragraph. Ohno further
`
`teaches that providing a coating around the particles prevents clogging of the pores.
`
`At the time the invention was made it would have been obvious to a person of
`
`ordinary skill in the art to have provided the SCR catalyst of Schafer-Sindlinger in the
`
`manner taught by Ohno in order to prevent clogging of the pores.
`
`As for claim 2, see Example 5 in table 1 on page 30 of Ohno.
`
`As for claims 3-4, Schafer-Sindlinger discloses an SCR catalyst that is zeolite
`
`with a copper base metal component. See Schafer-Sindlinger 1]. [O011]—[OO13].
`
`As for claims 5 and 6, see Schafer-Sindlinger 1] [0037] and [0013] respectively.
`
`As for claim 7, as noted above, the catalyst composition has a concentration of
`
`3.3 g/in3.
`
`As for claim 8, see 1] [0037] of Schafer-Sindlinger.
`
`As for claim 10, see 1] [0003] and [0035] of Schafer-Sindlinger.
`
`As for claim 11, see 1] [0016] of Schafer-Sindlinger.
`
`As for claims 12 and 13, see 1] [0035] and [0019] of Schafer-Sindlinger.
`
`As for claims 14-15, the catalyst of Ohno is present throughout the walls of the
`
`filter, which have an inlet side and an opposing outlet side. See Ohno p. 4, at ll.44—45,
`
`Figs. 3(a) and 3(b).
`
`BASF-2001.012
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Ground 2
`
`The requester proposes rejecting claim 9 under 35 U.S.C. 103(a) as being
`
`unpatentable over Schafer-Sindlinger in view of Ohno, as applied to claims 1 and 8
`
`above, and in further view of International Publication No. WO 01/96717 (Chapman).
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`ADOPTED in the non—final Office Action mailed on November 30, 201 1, and remains
`
`ADOPTED for the reasons set forth in the arguments section of this office action and for
`
`the following reasons:
`
`The combined teachings of Schafer-Sindlinger and Ohno are silent to disclosing
`
`the carrier substrate for the oxidation catalyst.
`
`Like Schafer-Sindlinger, Chapman discloses a system for treatment of exhaust
`
`gas, e.g., from a diesel engine. Chapman page 1, at II. 10-11. Chapman’s system
`
`includes an oxidation catalyst promoting oxidation of nitrogen oxide to nitrogen dioxide,
`
`so that the nitrogen dioxide can be reduced with ammonia or an ammonia precursor
`
`using a downstream SCR catalyst. Id. at page 11 at II. 13-19. Chapman further teaches
`
`that the oxidation catalyst can be provided as a washcoat on a flow through honeycomb
`
`monolith, with the washcoat including a high surface area oxide carrier substrate such
`
`as a zeolite. Id. at page 3, line31 to page 4, line 1.
`
`Accordingly, Chapman indicates that zeolites were known in the art for
`
`supporting oxidation catalysts in coatings applied to honeycomb structures in exhaust
`
`treatment systems. Therefore, it would have been obvious to one of ordinary skill in the
`
`BASF-2001.013
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 12
`
`art to use the known technique of a zeolite support for the oxidation catalyst in the
`
`system of Schafer- Sindlinger.
`
`Ground 3
`
`The requester proposes rejecting claims 1-8 and 10-15 under 35 U.S.C. 103(a)
`
`as being unpatentable over Schafer-Sindlinger in view of Japanese Patent Publication
`
`No. JP O9-173866 (Nakanishi).
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`NOT ADOPTED in the non-final Office Action mailed on November 30, 2011, and
`
`remains NOT ADOPTED for the reasons set forth in the arguments section of this office
`
`action and for the following reasons:
`
`The Nakanishi reference is being relied by the request to modify Schafer-
`
`Sindlinger’s SCR catalyst to permeate the claimed wall flow monolith. See page 25 of
`
`the request. However, Nakanishis' teachings are drawn to a catalyst that filters out soot
`
`not a SCR catalyst that converts NOX to N2. See Nakanishi paragraphs 1 and 15. Soot
`
`filters function by trapping particulate soot from the exhaust and burning the soot using
`
`a catalyst that lowers the soot combustion temperature. See ‘597 Patent at col. 2, ll. 5-
`
`16. An ammonia based SCR catalyst, such as Schafer- Sindlinger’s SCR catalyst,
`
`functions by reducing NOX with ammonia to N2. See ‘597 Patent at col. 2, II. 27-40.
`
`Accordingly, Schafer-Sindlinger in view of Nakanishi fails to provide a prima facie case
`
`of obviousness because a person of ordinary skill in the art in modifying a filter having a
`
`BASF-2001.014
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 13
`
`SCR catalyst would not on its face, use the teachings pertaining to a catalyst for soot
`
`removal.
`
`Ground 4
`
`The requester proposes rejecting claim 9 under 35 U.S.C. 103(a) as being
`
`unpatentable over Schafer-Sindlinger in view of Nakanishi, as applied to claims 1 and
`
`8 above, and in further view of Chapman.
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`NOT ADOPTED in the non-final Office Action mailed on November 30, 2011, and
`
`remains NOT ADOPTED for the reasons set forth in the arguments section of this office
`
`action and for the following reasons:
`
`As noted in Ground 3 above, the combined teachings of Schafer-Sindlinger in
`
`view of Nakanishi do not meet the limitations of claims 1 and 8 from which claim 9
`
`depends.
`
`Ground 5
`
`The requester proposes rejecting claims 1-8 and 10-15 under 35 U.S.C. 103(a)
`
`as being unpatentable over U.S. Patent Application Pub. No. 2003/0101718 (Pfeifer) in
`
`view of Nakanishi and Schafer-Sindlinger.
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`NOT ADOPTED in the non-final Office Action mailed on November 30, 2011, and
`
`BASF-2001.015
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 14
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`remains NOT ADOPTED for the reasons set forth in the arguments section of this office
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`action and for the following reasons:
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`Pfeifer teaches of using a wall flow monolith in a system to purify exhaust gas
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`emitted from the internal combustion of a diesel engine. Pfeifer, para. [0O27]; Pfeifer
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`teaches that the wall flow filter can be used as part of a system for SCR of NOx that
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`includes adding ammonia or an ammonia precursor to the exhaust stream as a reducing
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`agent. Pfeifer, Para. [O042]. Nakanishi is relied upon to teach the following as noted in
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`page 33 of the request:
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`Nakanishi clearly teaches that a person of ordinary skill could successfully apply
`a catalytic material in the amount of up to 2.95 g/ins to a wall flow filter without an
`undesirable loss in pressure.
`
`However, as noted in Ground 3 above, Nakanishi’s teachings are drawn to a catalyst for
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`soot not a SCR catalyst for the reduction of NOx to N2. See Nakanishi paragraphs 1
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`and 15.
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`Accordingly, Pfeifer in view of Nakanishi and Schafer-Sindlinger do not provide a
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`prima facie case of obviousness because a person of ordinary skill in when seeking to
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`modify the concentration of SCR catalyst would not seek concentrations pertaining to a
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`catalyst for soot removal.
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`It is noted that Schafer-Sindlinger does disclose the claimed catalyst loading. The
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`request relies on Schafer-Sindlinger to show that an ammonia injector and oxidation
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`catalyst are known to be placed upstream the SCR catalyst. See page 35 of the
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`request.
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`BASF-2001.016
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Ground 6
`
`The requester proposes rejecting claim 9 under 35 U.S.C. 103(a) as being
`
`unpatentable over Pfeifer in view of Nakanishi, Schafer—Sind|inger, as applied to
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`claims 1 and 8 above, and in further view of Chapman.
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`NOT ADOPTED in the non-final Office Action mailed on November 30, 201 1, and
`
`remains NOT ADOPTED for the reasons set forth in the arguments section of this office
`
`action and for the following reasons:
`
`As noted in Ground 5 above, the combined teachings of Pfeifer in view of
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`Nakanishi and Schafer—Sind|inger do not meet the limitations of claims 1 and 8 from
`
`which claim 9 depends.
`
`Ground 7
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`The requester proposes rejecting claims 1-8 and 10-15 under 35 U.S.C. 103(a)
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`as being unpatentable over Schafer—Sind|inger in view of EP 0766993A2 (Araki) and
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`Heck, R.M. et al., "Catalytic Air Pollution Control," (2d ed. 2002) (Heck).
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`This rejection was proposed by the Third Party requester in the Request and was
`
`NOT ADOPTED in the non-final Office Action mailed on November 30, 2011, and
`
`remains NOT ADOPTED for the reasons set forth in the arguments section of this office
`
`action and for the following reasons:
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`Schafer—Sind|inger is discussed supra. The request relies on Araki to substitute
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`the SCR catalyst with a NOx adsorber that permeates the walls of a wall flow monolith.
`
`BASF-2001.017
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 16
`
`The request relies on Heck to substitute Araki’s NOX adsorber with a SCR catalyst as
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`originally taught by Schafer-Sindlinger. There is no teaching, suggestion or motivation
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`to substitute Schafer-Sindlinger SCR catalyst with a NOX adsorber and then revert back
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`to a SCR catalyst.
`
`Ground 8
`
`The requester proposes rejecting claim 9 under 35 U.S.C. 103(a) as being
`
`unpatentable over Schafer-Sindlinger in view of Araki, Heck, as applied to claims 1
`
`and 8 above, and in further view Chapman.
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`NOT ADOPTED in the non-final Office Action mailed on November 30, 2011, and
`
`remains NOT ADOPTED for the reasons set forth in the arguments section of this office
`
`action and for the following reasons:
`
`As noted in Ground 7 above, the combined teachings of Schafer-Sindlinger in
`
`view of Araki, Heck do not meet the limitations of claims 1 and 8 from which claim 9
`
`depends.
`
`Ground 9
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`The requester proposes rejecting claims 1-8 and 10-15 under 35 U.S.C. 103(a)
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`as being unpatentable over Ohno in view of U.S. Patent No. 5,516,497 (Sperone||o),
`
`and U.S. Patent No. 6,928,806 (Tennison).
`
`BASF-2001.018
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 17
`
`This rejection was proposed by the Third Party requester in the Request and was
`
`adopted for claims 1-8, 10, 12-15 but was not adopted for claim 1 1 in the non-final
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`Office Action mailed on November 30, 201 1. The proposed rejection remains
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`ADOPTED for claims 1-8, 10, 12-15, and remains NOT ADOPTED for claim 11 for the
`
`reasons set forth in the arguments section of this office action and for the following
`
`reasons:
`
`Ohno discloses a catalyst (deemed as the claimed SCR catalyst) capable of
`
`reducing oxides of nitrogen (NOx) present in diesel engine exhaust. See Ohno, p. 1,
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`ll.
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`7-9 and p. 28, ||.12-16. Ohno describes the SCR catalyst as being held in a wall flow
`
`monoliths within cell walls. See p. 7, ll.3-8, Fig. 2 and Fig. 3(a). The wall flow monolith of
`
`Ohno has a plurality of longitudinally extending passages formed by longitudinally
`
`extending walls bounding and defining the passages, where the passages comprise
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`inlet passages having an open inlet end and a closed outlet end, and outlet passages
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`having a closed inlet end and an open outlet end. Fig. l(a) and Fig. l(b). The cell walls,
`
`i.e., the walls of the pores, of the wall flow monolith of Ohno are covered by the catalyst
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`coat layer. See p. 7, ll.3-8 and Figs. 1-3. Ohno further discloses an example where the
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`wall flow monolith has a porosity of 50% and a pore size of 10 pm. See example 5 in
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`Table 1 on p. 30. The catalyst of Ohno is present throughout the wall surface and the
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`network of pores of the wall flow monolith. See p.7, 11.3-8, Figs. 3(a) and 3(b). Thus,
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`the catalyst of Ohno permeates the walls of the wall flow monolith. Ohno is silent to
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`disclosing the concentration of the SCR catalyst and the type of SCR catalyst used.
`
`BASF-2001.019
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 18
`
`However, Speronello teaches that ammonia based catalysts are known in the art
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`to reduce NOx present in engine exhaust. See Speronello at col.4, II. 48-67. Ammonia
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`based SCR catalyst functions by metering ammonia into the exhaust, upstream the
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`SCR catalyst, in order to reduce NOx.
`
`ld. Speronello further teaches that the SCR
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`catalyst is coated on to the monolithic support at a loading of about 1.6 g/ins (Example
`
`1.|. at col. 8, II. 58-60) and also discloses SCR catalysts at loadings of about 1.5 g/ins,
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`about 1.7 g/ins, about 1.8 g/ins and about 2.0 g/ins (Examples 1.11.-1 Vll. on col. 9, ll.27-
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`29, 61- 63, Col. 10, ||.27—28, 65-66, col. 11, ||.40—41,col. 12, l.47). This shows that the
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`amount of SCR catalyst is a result effective variable. Additionally, figure 1 of Speronello
`
`shows that an increase in the amount of catalyst copper, of the in the SCR catalyst
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`composition, increases the conversion of NOx to N2 and H20. Thus, it would have been
`
`obvious to one of ordinary skill in the art to have optimized the amount of the SCR
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`catalyst composition, as shown by Speronello, to be placed on the wall flow filter of
`
`Ohno in order to provide an effective amount of NOx reduction.
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`Accordingly, the combined teachings of Ohno and Speronello provide for an
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`ammonia SCR catalyst on wall monolith having the claimed porosity, pore size and SCR
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`concentration. However, the combined teachings of Ohno and Speronello are silent
`
`disclosing adding an oxidation catalyst upstream the wall flow monolith having the SCR
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`catalyst.
`
`Tennison discloses a system to control of NOx and particulate matter emissions
`
`from a diesel engine. See col. 1, ll.51 -62. The system of Tennison includes an oxidation
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`catalyst 13 for rapid conversion of hydrocarbons (HC), carbon monoxide (CO), and
`
`BASF-2001.020
`
`

`
`Application/Control Number: 95/001,745
`Art Unit: 3991
`
`Page 19
`
`nitrous oxide (NO). Col. 3, ll.54-57, Fig. 2A. The system further comprises an injector 16
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`in fluid communication with and downstream of the oxidation catalyst. Col. 3, ll.31— 35,
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`Fig. 2A. The injector meters a reductant into the exhaust stream. Id. The reductant is
`
`derived from urea (an ammonia precursor), and is periodically metered by a pump
`
`through a control valve, with the pump and control valve being controlled by a controller.
`
`Col. 3, 11.31—37. The system of Tennison further comprises an SCR catalyst 14
`
`downstream of the injector for reducing oxides of nitrogen in the exhaust stream with
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`the injected reductant. Col. 3, ll.31— 35; Fig. 2A. The SCR catalyst is, preferably, a base
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`metal/zeolite formulation with optimum NOx conversion performance in the range of
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`200-500 °C. Col. 3, ll. 28-3. As noted by Tennison at col. 1,
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`II. 55-62, "This placement of
`
`the emission system components provides improved NOx convers