041l9.000400.36
`
`REEXAMINATION
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Inter Partes Reexamination of:
`
`JOSEPH ALLAN PATCHETT ET AL.
`
`Patent No. 7,229,597
`
`Issued: June 12, 2007
`
`Examiner: Unassigned
`
`Group Art Unit: Unassigned
`
`CATALYZED SCR FILTER AND
`For:
`EMISSION TREATMENT SYSTEM
`
`'
`
`September 7, 2011
`
`Mail Stop Inter Partes Reexamination
`Central Reexamination Unit
`Commissioner for Patents
`P .0. Box 1 45 0
`
`Alexandria, VA 22313-1450
`
`RE§ QUEST FOR INTER PAR TES REEXAMINATION
`
`Pursuant to 35 U.S.C. §§ 311 through 318 and 37 C.F.R. §§ 1.902 through 1.997, inter
`
`partes reexamination is requested of United States Patent No. 7,229,597 (“the ‘597 Patent”),
`
`which issued on June 12, 2007, in the name of Joseph Allan Patchett et al.
`
`BASF-2003.001
`
`

`
`TABLE OF CONTENTS
`
`IDENTIFICATION OF EVERY CLAIM FOR WHICH
`
`REXAMINATION IS REQUESTED ................................................................................ ..l
`
`The ‘597 Patent .................................................................................................................. ..l
`
`A.
`
`The Background ofthe ‘597 Patent ....................................................................... ..l
`
`RELATED LITIGATION ................................................................................................. ..5
`
`CERTIFICATIONS ........................................................................................................... ..5
`
`A.
`
`B.
`
`Real Party of Interest ............................................................................................. ..5
`
`No Estoppel Exists ................................................................................................. ..5
`
`PRIOR ART AS BASIS FOR REEXAMINATION ......................................................... ..5
`
`A.
`
`U.S. Patent Application Pub. No. 2002/0039550 (Schafer-
`Sindlinger) .............................................................................................................. ..5
`
`WO 02/26351 (Ohno) ............................................................................................ ..6
`
`U.S. Patent No. 5,516,497 (Speronello) ................................................................. ..6
`
`WO O1/96717 (Chapman) ...................................................................................... ..6
`
`Japanese Patent Publication No. JP 09-] 73866 (Nakanishi) ................................. ..7
`
`European Patent Application Publication NO. EP 0766993A2
`(Araki) .................................................................................................................... ..7
`
`Heck, R.M. et al., “Catalytic Air Pollution Control,” (2d ed. 2002)
`(Heck), pp. 204-208 ............................................................................................... ..7
`
`U.S. Patent Application Pub. NO. 2003/0101718 (Pfeifer) .................................... ..7
`
`I.
`
`J.
`
`U.S. Patent No. 6,928,806 (Tennison) ................................................................... ..8
`
`W0 03/054364 A2 (Blakcrnan) ............................................................................. ..8
`
`STATEMENT UNDER 37 C.F.R. § l.510(B)(1) POINTING OUT
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY AND
`DETAILED EXPLANATION UNDER 37 C.F.R. § 1.5 l0(B)(2) OF THE
`PERTINENCY AND MANNER OF APPLYING THE CITED PRIOR
`ART .................................................................................................................................... ..8
`
`BASF-2003.002
`
`

`
`Claims 1-8 and 10-15 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over U.S. Patent Application Pub. No.
`2002/0039550 (Schafer—Sindlinger) in view of WO 02/26351
`(Ohno) .................................................................................................................. .. 10
`
`1.
`
`Claim 9 is unpatentable under 35 U.S.C. § l03(a) as being
`obvious over Schafer-Sindlinger in view of Ohno and
`International Publication No. WO 01/96717 (Chapman) ........................ ..20
`
`Claims 1-8 and 10-15 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over U.S. Patent Application Pub. No.
`2002/0039550 (Schafer-Sindlinger) in View of Japanese Patent
`Publication No. JP 09—173866 (Nakanishi) ......................................................... ..22
`
`1.
`
`Claim 9 is unpatentable under 35 U.S.C. § l03(a) as being
`obvious over Schafer—Sindlinger in view of Nakanishi and
`International Publication No. WO 01/96717 (Chapman) ......................... .30
`
`Claims 1-8 and 10-15 are unpatentable under 35 U.S.C. § l03(a) as
`being obvious over U.S. Patent Application Pub. No.
`2003/010 1 718 (Pfcifcr) in vicw of Japancsc Patent Publication No.
`JP 09-173 866 (Nakanishi) and U.S. Patent Application Pub. No.
`2002/0039550 (Schafer-Sindlinger) ..................................................................... ..3l
`
`1.
`
`Claim 9 is unpatentable under 35 U.S.C. § l03(a) as being
`obvious over Pfeifer in view of Nakaishi, Schafer-
`
`Sindlinger, and International Publication No. WO 01/96717
`(Chapman) ................................................................................................ ..40
`
`Claims 1-8 and 10-15 are unpatentable under 35 U.S.C. § l03(a) as
`being obvious over U.S. Patent Application Pub. No.
`2002/0039550 (Schafer-Sindlinger) in view of EP 0766993A2
`(Araki) and Heck, R.M. et al., “Catalytic Air Pollution Control,”
`(2d ed. 2002) (Heck), pp. 204-208 ....................................................................... ..4l
`
`1.
`
`Claim 9 is unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Schafer—Sindlinger in view of Araki, Heck,
`pp. 204-208, and International Publication No. W0
`01/967 1 7 (Chapman) ............................................................................... ..51
`
`Claims 1-8 and 10-15 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over W0 02/26351 (Ohno) in view of U.S. Patent
`No. 5,516,497 (Speronello), and U.S. Patent No. 6,928,806
`(Tennison) ............................................................................................................ ..52
`
`1.
`
`Claim 9 is rendered unpatentable under 35 U.S.C. § 103(a)
`as being obvious over Ohno in view of Speronello,
`
`BASF-2003.003
`
`

`
`Tennison, and International Publication No. WO 01/96717
`
`(Chapman) ................................................................................................ ..64
`
`Claims 1, 2, 7, 8, and 10-15 are unpatentable under 35 U.S.C. §
`103(a) as being obvious over Japanese Patent Pub. No. JP 09-
`173866 (Nakanishi) in View of U.S. Patent No. 6,928,806
`(Tennison) ............................................................................................................ ..65
`
`1.
`
`Claims 3-6 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over Nakanishi in view of Tennison and U.S.
`Patent No. 5,516,497 (Speronello) ........................................................... ..72
`
`Claim 9 is unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Nakanishi in view of Tennison and
`
`International Publication No. WO 01/96717 (Chapman) ........................ ..74
`
`Claims 1, 2, 7, 8, and 10-15 are unpatentable under 35 U.S.C. §
`103(a) as being obvious over EP 0766993A2 (Araki) in view of
`Heck, R.M. et al., “Catalytic Air Pollution Control,” (2d ed. 2002)
`(Heck), pp. 204-208, and U.S. Patent No. 6,928,806 (Tennison) ........................ ..75
`
`1.
`
`Claims 3-6 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over Araki in View of Heck, pp. 204-208,
`Tennison, and U.S. Patent No. 5,516,497 (Spcroncllo) ........................... ..83
`
`Claim 9 is unpatentable under 35 U.S.C. § l03(a) as being
`obvious ovcr Araki in view of Heck, pp. 204-208,
`Tennison, and International Publication No. WO 01/96717
`
`(Chapman) ................................................................................................ ..85
`
`Claims 1, 2, 7, 8, and 10-15 are unpatentable under 35 U.S.C. §
`l03(a) as being obvious over U.S. Patent Application Pub. No.
`2003/0101718 (Pfeifer) in view of Japanese Patent Publication No.
`JP 09-173866 (Nakanishi) and U.S. Patent No. 6,928,806
`(Tennison) ............................................................................................................ ..86
`
`1.
`
`Claims 3-6 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over Pfeifer in view of Nakanishi, Tennison,
`and U.S. Patent No. 5,516,497 (Speronello) ............................................ ..93
`
`Claim 9 is unpatentable under 35 U.S.C. § 103(a) as being
`obvious over Pfeifer in view of Nakanishi, Tennison, and
`
`International Publication No. WO 01/96717 (Chapman) ........................ ..95
`
`Claims 1-15 are unpatentable under 35 U.S.C. § 103(a) as being
`obvious over WO 02/26351 (Ohno) in view of U.S. Patent No.
`5,516,497 (Speronello) and WO 03/054364 (Blakeman) .................................... ..96
`
`VII.
`
`CONCLUSION .............................................................................................................. .. 108
`
`iv
`
`BASF-2003.004
`
`

`
`APPENDIX
`
`Copy of U.S. Patent No. 7,229,597 (patent to be reexamined)
`
`Heck, R.M. et al., “Catalytic Air Pollution Control,” pp. 204-208, 216-217 (2d ed. 2002)
`(Heck)
`
`WO 02/26351 (Ohno)
`Japanese Patent Publication No. JP 09—173866 (Nakanishi)
`
`EP 0766993A2 (Araki)
`W0 03/054364 (Blakeman)
`
`WO 01/96717 (Chapman)
`BASF’s 10 May 2010 response to the 2 Oppositions filed in the corresponding European
`Patent No. EP 1663458 B1
`
`August 2, 2011 Office Action in U.S. Patent Application No. 11/676,798, which claims
`priority to the ‘597 Patent
`
`March 24, 2009 Notice of Allowance and September 16, 2009 Responsive Amendment in
`U.S. Patent Application No. 12/028,300, which claims priority to the ‘597 Patent
`Certificate of Service
`
`BASF-2003.005
`
`

`
`IDENTIFICATION OF EVERY CLAIM FOR
`
`WHICH REXAMINATION IS REQ QUESTED
`
`Reexamination is requested of claims 1-15 of the ‘597 Patent.
`
`The ‘597 Patent
`
`A.
`
`The Background of the ‘S97 Patent
`
`The ‘597 Patent is generally directed to a system for treatment of an exhaust stream
`
`comprising oxides of nitrogen (NOx) and particulate matter. Abstract. The claims of the ‘597
`
`Patent recite an emission treatment system that includes an oxidation catalyst, an injector
`
`downstream of the oxidation catalyst for metering ammonia or an ammonia precursor into the
`
`exhaust stream, and a selective catalytic reduction (SCR) catalyst composition downstream of
`
`the injector.
`
`Prior to the filing date of Application No. 10/634,659 (“the ‘659 Application”), from
`
`which the ‘597 Patent issued, systems for treating exhaust streams comprising NOX and
`
`particulate matter were well known in the art. The ‘597 Patent itself acknowledges that such
`
`systems were known in the art, with these systems including an oxidation catalyst, an SCR
`
`catalyst downstream from the oxidation catalyst, and a reduetant source introduced into the
`
`exhaust stream between the oxidation catalyst and the SCR catalyst.
`
`‘S97 Patent, col. 3, ll. 40-
`
`47. The ‘597 Patent further acknowledges that these systems could also include a particle filter.
`
`I_d. at col. 3, 11. 48-57.
`
`Along these lines, multiple prior art publications teach systems that included the general
`
`components of the system claimed in the ‘597 Patent. For example, U.S. Patent Application Pub.
`
`No. 2002/0039550 (Schafer—Sindlinger) discloses a system that includes an oxidation catalyst
`
`and a downstream SCR catalyst for reduction of NOx in an exhaust stream. Para. 0035 . In the
`
`system of Scha1°er—Sindlinger, the oxidation catalyst oxidizes nitrogen monoxide in the exhaust
`
`BASF-2003.006
`
`

`
`stream to nitrogen dioxide. Li. A reducing agent, such as ammonia, is then injected into the
`
`exhaust stream before the stream reaches the SCR catalyst. Li. The SCR catalyst then provides
`
`for reduction of the nitrogen dioxide to produce nitrogen and water. Li. Other examples of
`
`similar prior art exhaust gas treatment systems can be seen in U.S. Patent No. 6,696,031 (Twigg)
`
`and U.S. Patent No. 6,680,037 (Allansson). Twigg discloses an exhaust treatment system that
`
`includes an oxidation catalyst 13, an ammonia injector 20, and a SCR catalyst 22 downstream of
`
`the oxidation catalyst and ammonia injector for reduction of NOx. Col. 4, ll. 30-52 and Fig. 1.
`
`The system of Twigg also includes a wall flow filter for trapping soot in the exhaust stream. Col.
`
`3, ll. 27-38. Similarly, Allansson discloses an exhaust treatment system that includes an
`
`oxidation catalyst 6, a wall flow filter 8 for trapping particulate matter, an SCR reductant injector
`
`33, and a SCR catalyst 34 downstream of the oxidation catalyst and reductant injector. Col. 3, l.
`
`59 to col. 4, l. 1 and Fig. 3. Still further examples of this type of system can be seen in WO
`
`03/054364 (Blakcman) and U.S. Patent No. 6,928,806 (Tennison), both of which describe
`
`exhaust treatment systems using an oxidation catalyst, an injector providing a reducing agent,
`
`and a downstream reduction catalyst with an SCR composition. Thus, the general components of
`
`the exhaust gas treatment system recited in the claims of the ‘597 Patent were well known in the
`
`art prior to the filing date of the ‘659 Application. The claims of the ‘S97 Patent further specify
`
`that the SCR catalyst composition is provided on a wall flow monolith.
`
`Prior to the filing date ofthe ‘659 Application, however, wall flow monoliths having
`
`alternate cell openings plugged in checkerboard fashion on one end, with the other end plugged
`
`in a similar fashion, but one cell displaced were well known in the art. See, e.g., 1-leek, R.M. et
`
`al., “Catalytic Air Pollution Control,” (2d ed. 2002) (Heck), pp. 216-217; WO 02/26351 (Ohno),
`
`p. 1, 11. 13-16 and Figs. 1-2. Exhaust gas entering the wall flow monolith at the upstream end is
`
`BASF-2003.007
`
`

`
`forced through the porous walls separating the channels and exits through the opposite end
`
`through an adjacent channel. Li. Additionally, the use of wall flow filters as automotive diesel
`
`particulate filters, which contain catalysts to promote combustion of trapped soot, was well
`
`known prior to the filing date ofthe ‘597 Patent.
`
`‘597 Patent, col. 1, l. 66 - col. 2, l. 26. In
`
`addition, SCR catalysts for NOx reduction were also well known prior to the earliest filing date
`
`of the ‘597 Patent. For example, U.S. Patent No. 2,975,025 (Cohn) discloses the use of a
`
`platinum group-metal containing catalyst for the selective removal of oxides of nitrogen from
`
`waste or tail gases using ammonia as a reductant. Cohn, col. 2, ll. 13-21. See also U.S. Patent
`
`No. 4,961,917 (Byrne) and U.S. Patent No. 5,516,497 (Speronello), both of which are
`
`incorporated by reference in their entirety in the ‘597 Patent.
`
`The ‘597 Patent recognizes that at the time of its filing, future emissions standards had
`
`been adopted requiring NOx reduction in diesel exhaust.
`
`‘597 Patent, col. 2, ll. 27-40. Thus,
`
`there is a clear case of market forces dictating the combination of a known wall flow filter with
`
`known SCR catalysts for NOx reduction. KSR Int’! Co. v. Teleflex Inc., 550 U.S. 398, 417
`
`(2007). The ‘597 Patent states that a method is provided that “allows wall flow substrates to be
`
`loaded with practical levels of SCR catalyst without causing excessive back pressure across the
`
`coated article when implemented in emission treatment systems.” Col. 6, ll. 36-40. None of the
`
`claims of the ‘597 Patent, however, are directed to a method, but instead all are directed to an
`
`exhaust stream treatment system.
`
`Significantly, it was already known prior to the filing date of the ‘659 Application that a
`
`wall flow filter could be coated with a substantial amount of an SCR catalyst in a manner to
`
`avoid excessive back pressure. Ohno, p. 1, ll. 7-9, p. 3, ll. 5-6 and p. 28, ll. 14-24. See also JP
`
`BASF-2003.008
`
`

`
`09—173866 (Nakanishi), which shows a loading of20 to 180 g/L (0.33 g/in3 to 2.95 g/in3).
`
`Nakanishi, para. [0014] on p. 3.
`
`Moreover, a person of ordinary skill in the art seeking to apply a catalyst coating
`
`dispersed throughout the wall surface and the pores of a wall flow filter would have been well
`
`aware that to successfully do so without creating excessive back pressure, i.e., plugging the
`
`pores, one would have to consider the porosity and average pore size of the filter substrate as
`
`well as the particle size of the catalyst coating.
`
`In that regard, Ohno taught that it was important
`
`for the wall flow filter to have an average pore size preferably in a range of 10-150 mm or 10-100
`
`um and preferably a porosity greater than 40% and less than 70% to avoid unacceptable back
`
`pressure when impregnated with a catalyst coat layer. Ohno, p. 8, 11. 15-16 and p. 9, 11. 6-13.
`
`The same reference also recognized the importance of controlling the standard deviation of the
`
`pore size to avoid problems when the slurry holding the catalyst was applied to the ceramic
`
`particles within the filtcr wall. Li. at p. 5, ll. 3-10.
`
`Moreover, Ohno makes very clear that it is important that the solution of metal
`
`compounds penetrates into the pores of the cell wall to create a “carrier film.” Li. at p. 25, ll. 11-
`
`13. Also, Ohno makes clear that a NOx selective reduction type catalyst may be applied to the
`
`filter with the carrier film. Q at p. 28, ll. 13-15.
`
`Thus, a wall flow filter having an SCR catalyst permeating the filter in a manner adopted
`
`to avoid excessive back pressure buildup was not new at the time the ‘659 Application was filed.
`
`In addition, significant guidance was provided by the prior art to select the appropriate
`
`parameters, i.e., porosity and pore size of the filter and particle size of the catalysts coating, and
`
`amount of coating so as to distribute a catalyst throughout the wall surface and the pores of the
`
`wall flow filter without incurring excessive back pressure and to provide useful catalytic activity.
`
`BASF-2003.009
`
`

`
`In sum, the claims of the ‘S97 Patent are directed to nothing more than a conventional
`
`exhaust treatment system, with the system including a wall flow filter having an SCR catalyst
`
`composition that was obvious in view of the prior art at the time the application that led to the
`
`‘597 Patent was filed. The use of the claimed wall flow filter in the conventional exhaust
`
`treatment system amounts to nothing more than the use of a known technique in a known system
`
`to yield predictable results.
`
`III.
`
`RELATED LITIGATION
`
`The ‘597 Patent has not been asserted in any litigation.
`
`CERTIFICATION S
`
`A.
`
`Real Party of Interest
`
`The real party of interest for this request is Johnson Matthey, Inc.
`
`B.
`
`No Estoppel Exists
`
`Requester certifies it is not estopped under 37 C.F.R. § 1.907 from filing this Request for
`
`Inter Partes Reexamination.
`
`V.
`
`PRIOR ART AS BASIS FOR REEXAMINATION
`
`Requester submits that the following documents raise substantial new questions of
`
`patentability of the claims of the ‘597 Patent as set forth below. The substantial new questions of
`
`patentability are set forth in Section VI. below.
`
`Copies of the listed foreign patent literature are submitted with this Request for Inter
`
`Partes Reexamination. In accordance with MPEP § 2618, however, copies of the U.S. Patents
`
`and U.S. Patent Publications discussed below are not provided.
`
`A.
`
`U.S. Patent Application Pub. No. 2002/0039550 (Schafer-Sindlinger)
`
`U.S. Patent Application Pub. No. 2002/0039550 (Schafer-Sindlinger) is applicable under
`
`35 U.S.C. § 102(b) against the claims of the ‘597 Patent.
`
`BASF-2003.010
`
`

`
`Schafer—Sindlinger or its equivalents was not made of record or otherwise discussed
`
`during the prosecution of the ‘6S9 Application (which issued as the ‘S97 Patent).
`
`B.
`
`wo 02/26351 (Ohno)
`
`W0 02/26351 (Ohno) is applicable under 35 U.S.C. § 102(b) against the claims of the
`
`‘S97 Patent. A certified English translation is also being submitted herewith and the pincites
`
`refer to this document.
`
`Ohno or its equivalent was not made of record or otherwise discussed during prosecution
`
`of the ‘6S9 Application.
`
`C.
`
`U.S. Patent No. 5,516,497 (Speronello)
`
`U.S. Patent No. S,Sl6,497 (Speronello) is applicable under 35 U.S.C. § 102(b) against the
`
`claims ofthe ‘S97 Patent.
`
`Speronello was cited in an Information Disclosure Statement by the Applicants during
`
`prosecution of the ‘6S9 Application. Also, the Examiner rejected claims of the ‘6S9 Application
`
`as being obvious in View of a combination of references that included Speronello. Speronello,
`
`however, still raises a substantial new question of patentability of the claims of the ‘S97 Patent
`
`because it is being applied below in combinations not previously considered. Specifically, it is
`
`being considered with disclosures that provide a catalyst coating that permeates the Walls of a
`
`wall flow filter, which the Applicants in the ‘6S9 Application argued was not disclosed by
`
`Speronello.
`
`D.
`
`VVO 01/96717 (Chapman)
`
`WO Ol/96717 (Chapman) is applicable under 35 U.S.C. § 102(b) against the claims of
`
`the ‘S97 Patent.
`
`Chapman or its equivalent was not made of record or otherwise discussed during
`
`prosecution of the ‘6S9 Application.
`
`BASF-2003.011
`
`

`
`E.
`
`Japanese Patent Publication No. JP 09-173866 (N akanishi)
`
`Japanese Patent Publication No. JP 09-173866 (Nakanishi) is applicable under 35 U.S.C.
`
`§ l02(b) against the claims of the ‘597 Patent. A certified English translation is being submitted
`
`herewith and the pincites herein refer to this document.
`
`Nakanishi or its equivalent was not made of record or otherwise discussed during
`
`prosecution of the ‘659 Application.
`
`F.
`
`European Patent Application Publication No. EP 0766993A2 (Araki)
`
`EP 0766993A2 (Araki) is applicable under 35 U.S.C. § l02(b) against the claims of the
`
`‘597 Patent.
`
`Araki or its equivalent was not made of record or otherwise discussed or applied during
`
`prosecution of the ‘659 Application.
`
`G.
`
`Heck, R.M. et al., “Catalytic Air Pollution Control,” (2d ed. 2002) (Heck), pp.
`204-208
`
`Heck, R.M. et al., “Catalytic Air Pollution Control,” (2d ed. 2002) (Heck), pp. 204-208,
`
`is applicable under 35 U.S.C. § l02(b) against the claims of the ‘597 Patent.
`
`Heck was not made of record or otherwise discussed or applied during prosecution of the
`
`‘659 Application.
`
`H.
`
`U.S. Patent Application Pub. No. 2003/0101718 (Pfeifer)
`
`U.S. Patent Application Pub. No. 2003/0101718 (Pfeifer) is applicable under 35 U.S.C. §
`
`l02(e) against the claims of the ‘597 Patent.
`
`Pfei fer was not made of record or otherwise discussed or applied during prosecution of
`
`the ‘659 Application.
`
`BASF-2003.012
`
`

`
`l.
`
`U.S. Patent No. 6,928,806 (Tennison)
`
`U.S. Patent No. 6,928,806 (Tennison) is applicable under 35 U.S.C. § l02(e) against the
`
`claims of the ‘S97 Patent.
`
`Tennison was cited in an Information Disclosure Statement by the Applicants in the ‘659
`
`Application. Tennison, however, was not otherwise discussed or applied during prosecution of
`
`the ‘659 Application.
`
`J.
`
`VVO 03/054364 A2 (Blakeman)
`
`W0 03/054362 A2 (Blakeman) is applicable under 35 U.S.C. §§ l02(a) and l02(e)
`
`against the claims of the ‘597 Patent.
`
`The U.S. equivalent to Blakeman (U.S. Patent Application Pub. No. 2005/0069476) was
`
`cited in an lnformation Disclosure Statement by the Applicants in the ‘659 Application.
`
`Blakeman, however, was not otherwise discussed or applied during prosecution the ‘659
`
`Application.
`
`STATEMENT UNDER 37 C.F.R. § 1.510(B)(1) POINTING oUT
`SUBSTANTIAL NEW QUESTIONS OF PATENTABILITY AND
`DETAILED EXPLANATION UNDER 37 C.F.R. § 1.510(B)(2) OF THE
`PERTINENCY AND MANNER OF APPLYING THE CITED PRIOR ART
`
`Indcpcndcnt claim 1 of the ‘597 Patent is directed to an cmission treatment system for
`
`treatment of an exhaust stream comprising NOx and particulate matter. The emission treatment
`
`system has the following features:
`
`0
`
`0
`
`an oxidation catalyst;
`
`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
`
`BASF-2003.013
`
`

`
`0
`
`a wall flow monolith comprising an SCR catalyst.
`
`With respect to the wall flow monolith SCR catalyst, independent claim 1 recites:
`
`0
`
`a wall flow monolith in fluid communication with and downstream of the injector,
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`wherein the wall flow monolith has a plurality of longitudinally extending passages
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`formed by longitudinally extending walls bounding and defining the passages,
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`wherein the passages comprise inlet passages having an open inlet end and a closed
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`outlet end, and outlet passages having a closed inlet end and an open outlet end,
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`the wall flow monolith comprises an SCR catalyst composition that permeates the
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`walls at a concentration of at least 1.3 g/in3, and
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`the wall flow monolith has a wall porosity of at least 50% with an average pore size
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`of at least 5 microns.
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`A full recitation of the features of the claims is provided in the attached copy of the ‘597
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`Patent.
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`The following sections set forth each proposed rejection along with a statement pointing
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`out the substantial new question of patentability. Also included with each section is a detailed
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`explanation of the manner in which the cited references apply to the features listed above, as well
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`as other features of the claims.
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`The rejections proposed below raise substantial new questions of patentability which are
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`non-cumulative technological teachings with respect to what was discussed in the prosecution of
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`the ‘S97 Patent. In particular, each rejection presents a catalyst coating that permeates the walls
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`of a wall flow surface not previously considered during prosecution.
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`The following headings set forth each of the proposed rejections.
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`BASF-2003.014
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`

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`A.
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`Claims 1-8 and 10-15 are unpatentable under 35 U.S.C. § 103(a) as being
`obvious over U.S. Patent Application Pub. No. 2002/0039550 (Sehafer-
`Sindlinger) in View of WO 02/26351 (Ohno)
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`The combination of Sehafer-Sindlinger and Ohno is non—cumulative, and raises a
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`substantial new question of patentability, for at least the reason that the references teach claimed
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`features that the Applicants argued and the Examiner agreed were not taught by the prior art
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`applied during prosecution of the ‘659 Application. For example, as will be discussed below
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`Ohno suggests an SCR catalyst composition that permeates the walls of a wall flow monolith.
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`The Applicants argued that this feature was not taught by the prior art during prosecution of the
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`‘659 Application, and the Examiner cited this as one of the features not disclosed or suggested
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`by the prior art in the reasons for allowance of the ‘659 Application. November 27, 2006
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`Amendment, p. 6; December 28, 2006 Notice of Allowability, p. 2.
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`Sehafer-Sindlinger discloses a system for treatment of an exhaust stream comprising
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`oxides of nitrogen. See, eg, para. [0001]. The system of Sehafer-Sindlinger includes an
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`oxidation catalyst for forming or increasing the nitrogen dioxide content in the exhaust gas
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`stream. Figure 1; para. [0015]. The system further comprises an injector in fluid communication
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`with and downstream of the oxidation catalyst, with the injector providing ammonia or an
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`ammonia precursor (urea) into the exhaust stream. Para. [0035].
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`Regarding the claim term “periodically meters”, the ‘597 Patent does not provide an
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`express definition for the term. The ‘597 Patent, however, cites U.S. Patent No. 4,963,332
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`(Brand) as disclosing an exemplary dosing system for injecting NOx reductant into an exhaust
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`stream. ‘597 Patent, col. 10, ll. 34-38. The system of Brand monitors the nitrogen oxide content
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`of an exhaust stream and injects a reducing agent into the exhaust stream so as to achieve a
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`stoichiometric ratio of reducing agent to nitrogen oxide. Col. 1, ll. 51-64; col. 2, ll. 25-45. Thus,
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`the ‘597 Patent indicates that an interpretation of the claimed periodic metering of ammonia or
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`10
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`BASF-2003.015
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`ammonia precursor is providing the ammonia or ammonia precursor so as to achieve a specific
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`ratio with the NOx in the exhaust stream. The injector of Schafer-Sindlinger injects the
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`ammonia or ammonia precursor such that a specific molar ratio of NH3/NOx is achieved. Para.
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`[O035]. Thus, the injector of Schafer-Sindlinger “periodically meters” ammonia or an ammonia
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`precursor as that term is used in the ‘597 Patent.
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`The emission treatment system of Sehafer-Sindlinger further comprises an SCR catalyst
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`downstream of the injector for reducing the nitrogen dioxide with the injected ammonia or
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`ammonia precursor. See paras. [0019]-[0020]. The SCR catalyst is in the form ofa metal (e.g.,
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`iron or copper)-promoted zeolite catalyst. Para. [0014]. Schafer-Sindlinger indicates that the
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`zeolite catalyst is “preferably applied, in the form of coating, to honeycomb structures made of
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`ceramic or metal .
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`.
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`. A coating concentration of up to 200 grams of catalyst powder per liter [3.3
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`g/in3] of honeycomb structure is preferably striven for.” Para. [0024]. In a specific example,
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`Schafer-Sindlinger uses a “conventional honeycomb structure” made of cordierite to support the
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`zeolite catalyst. Para. [O038].
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`Ohno discloses a honeycomb-shaped monolith, which can be made of cordierite, and
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`which is capable of supporting a catalyst for efficient reduction of nitrogen oxide (NOX) included
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`in an exhaust gas stream. See, e.g., Ohno, p. 1, 11. 7-9; p. 7, ll. 18-22; and Figs. 1-3. More
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`specifically, Ohno teaches a filter configured as a wall flow monolith having a plurality of
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`longitudinally extending passages formed by longitudinally extending walls bounding and
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`defining the passages, where the passages comprise inlet passages having an open inlet end and a
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`closed outlet end, and outlet passages having a closed inlet end and an open outlet end. Fig. 1(a)
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`and Fig. l(b). The cell walls, i.e., the walls of the pores, of the wall flow monolith of Ohno are
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`covered by a catalyst layer. P. 7, 11. 3-8 and Figs. 1-3. One example filter taught by Ohno has a
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`BASF-2003.016
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`

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`porosity of 50% and a pore size of 10 um. Example 5 in Table 1 on p. 30. An object of Ohno
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`was to keep the pressure loss of the exhaust low when the amount of the catalyst on the filter is
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`increased for raising combustion reactivity of soot. See p. 1, 11. 28-30, p. 2, ll. 2-5. It is
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`explicitly stated that the catalyst of Ohno can be an SCR catalyst. P. 28, ll. 13-15.
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`Thus, Schafer-Sindlinger discloses an emission gas treatment system that includes a
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`zeolite SCR catalyst, and specifies that the SCR catalyst should be supported on a honeycomb-
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`shaped structure. Ohno teaches a honeycomb-shaped structure, which supports an SCR catalyst,
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`and which has the configuration ofa wall flow monolith having a porosity and pore size that
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`keep pressure loss of exhaust low. Accordingly, it would have been obvious to one of ordinary
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`skill in the art to use the wall flow monolith configuration of Ohno as the support for the zeolite
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`SCR catalyst in the system of Schafer-Sindlinger.
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`In fact, such a combination amounts to
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`nothing more than applying the known structure and technique of Ohno to the exhaust treatment
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`system of Schafer-Sindlinger to yield predictable results, i.e., providing a catalyst support that
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`would not cause excessive pressure loss.
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`Regarding the meaning of the claim term “permeates,” the ‘597 Patent at col. 10, ll. 21-
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`22, states that permeate “means that the catalyst composition is dispersed throughout the wall of
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`the substrate.” The Applicants during prosecution of U.S. Patent Application No. 12/028,300
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`(“the ‘300 Application”), which claims priority to the ‘597 Patent and has the same disclosure as
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`the ‘S97 Patent, reiterated this interpretation in response to an Office Action and the Examiner in
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`the ‘300 Application adopted this interpretation in the Notice of Allowance. See September 16,
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`2009 Responsive Amendment in the ‘300 Application, p. 15, March 24, 2009 Notice of
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`BASF-2003.017
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`Allowability, p. 2. (copies of which are enclosed).1 Clearly, the term “permeates” should have
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`the same interpretation in the ‘597 Patcnt as in the application claiming priority to the ‘597
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`Patent. Thus, to say that the catalytic material is “dispersed throughout the wall of the substrate”
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`(emphasis added) must mean that the catalytic material is dispersed throughout the wall surface
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`and the network of pores of the filter that extend from one side of the filter walls to the other side
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`of the filter walls.
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`The catalyst of Ohno is clearly present throughout the wall surface and the network of
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`pores ofthe wall flow filter. P.7, 11. 3-8, Figs. 3(a) and 3(b). Ohno, p. 25,11. 18-19
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`(“consequently, the metal oxide solution can completely cover the surface of the each of the SiC
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`particles 4”). Thus, the catalyst of Ohno permeates the walls of the wall flow monolith.
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`Regard