041 19. 000400. 3 6
`
`REEXAMINATION
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examiner: LOPEZ, CARLOS N.
`
`Group Art Unit: 3991
`
`Confirmation No.: 4882
`
`) :
`
`) :
`
`) :
`
`)
`
`In re Inter Partes Reexamination of:
`
`JOSEPH A. PATCHETT ET AL.
`
`Patent No. 7,229,597
`
`Issued: June 12, 200'?
`
`Control No. 95/001,745
`
`Reexam Filed: September 7, 2011
`
`CATALYZED SCR FILTER AND
`For:
`EMISSION TREATMENT SYSTEM
`
`March 9, 2012
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 223 13~1450
`
`Third Party Comments After Patent Owner's Response Under 37 C.F.R. § 1.947
`
`Madam:
`
`The following is the Requestefs response to “Patent Owner’s Amendment and Response
`
`Under 37 CPR. § 1.941” as well as the attachments thereto filed on Februaxy 8, 2012, and to the
`
`Office Action dated November 30, 2011.
`
`BASF-2004.001
`
`BASF-2004.001
`
`

`
`Table of Contents
`
`REMARKS .................................................................................................................................... .. 1
`
`I.
`
`II.
`
`Introduction .........................................................................
`
`............................................. ..l
`
`The Proper Construction of “Washcoat” in the Amended Claims Means a
`Coating ...................................... .'. .........................................................................................3
`
`III.
`
`Amended Claims 1, 14 and 15 and Original Claims 2-13 ................................................. ..6
`
`A.
`
`Groundl - Rejection of Claims 1-8 and 10-15 as being obvious
`over U.S. Patent Application Pub. No. 2002:’00395 50 (Schafer-
`Sindlinger) in view of WO 02226351 (Ohno) ........................................................-.6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Ohno Teaches a Catalytic Washcoat that Permeatcs the
`Walls of a Wall Flow Filter ....................................................................... ..6
`
`Schafer-Sindlinger and Ohno are Combinable .......................................... ..8
`
`—
`Schafer-Sindlinger and Ohno Teach and Suggest a Wall
`Flow Monolith ......................................................................................... ..10
`
`Schafer—Sindlinger Does Not Require a Different Order of
`System Components than that Claimed in the ‘S97 Patent ...................... .-l 1
`
`Claim 2 ....................................................................................
`
`............... ..11
`
`Claims 3 and 4 ......................................................................................... ..1l
`
`Claim 5 ..................................................................................................... ..l2
`
`Claim 6.._-.......................................
`
`......................................................... _.12
`
`Claim 7 ..................................................................................................... .. 13
`
`B.
`
`C.
`
`Ground 2 - Rejection of Claim 9 as being obvious over Schafer-
`Sindlinger in View of Ohno and International Publication No. W0
`_01x'967l7 (Chapman) .........
`................................................................................ .- 14
`
`Ground 9- Rejection of Claims 1-8, 10, and 12-15 as being obvious
`'
`over Ohno in View of U.S. Patent No. 5,516,497 (Speronello) a_nd
`U.S. Patent "No. 6,928,806 (Tennison) .................................................................-.15
`
`1.
`
`2.
`
`Ohno Teaches a Catalytic Washcoat that Permeates the
`Walls of a Wall Flow Filter ..................................................................... ..15
`
`Attacking References Individually
`
`..................................... .'. .............. .. 15
`
`; j _
`
`BASF-2004.002
`
`BASF-2004.002
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`

`
`Tennison Teaches an Oxidation Catalyst and Reductant
`Injector ..................................................................................................... ..l6
`
`Claim 2 ........ ..- ......, ............................................................................ ..,..... ..l7
`
`Claims 3 and 4 ......................................................................................... ..17
`
`Claim 5 ..................................................................................................... ..18
`
`Claim 6 .........
`
`......................................................................... ..-. .............. ..13
`
`Claim 7 ..................................................................................................... ..18
`
`7.
`
`8.
`
`D.
`
`Ground 10- Rejection of Claim 9 as being obvious over Ohno in
`View of Speronello, Tennison, and Chapman ........._. ............................................ .-20
`
`IV.
`
`Proposed New Grounds of Rejection of Claims 1-15 Based on Hashimoto,
`' S. et aI., “SiC and Cordierite Diesel Particulate Filters Designed for Low
`Pressure Drop and Catalyzed, Uncatalyzed Systems,” SAE Technical
`Paper Series, 2002—0I—0322 (Mar. 2002) (Hashimoto) ................................................... .-2I
`
`A.
`
`Proposed New Ground of Rejection of Claims 1-8 and 10-15 as
`Being Obvious Over Hashimoto in View of WO 02f26351 (Ohno)
`and U.S- Patent Application Pub. No. 2002;’003 95 50 (Schafer-
`Sindlinger).............................................................................................................-2l
`
`1.
`
`Claim 9 is unpatentable under 35 U.S.C. § l03(a) as" being
`obvious over Hashimoto in view of Ohno, Schafer-
`Sindlinger and International Publication No. W0 01r'9671?'
`(Chapman)................................................................................................ ..26
`
`B.
`
`Proposed New Ground of Rejection of Claims 1, 2, 7, 8, and 10-15
`_
`as Being Obvious Over Hashimoto in View of WO 0206351
`(Ohno) and U.S. Patent No. 6,928,806 (Tennison)............................................. ..27
`
`1.
`
`Claims 3-6 are unpatentable under 35 U.S.C. § 103(a) as
`being obvious over I-Iashimoto in View of Ohno, Tennison,
`and
`Patent-No. 5,516,497 (Speronello) ..............................................32
`
`. Claim 9 is unpatentable under 35 U.S.C. § l03(a) as being
`obvious over Hashimoto in View of Ohno, Tennison, and
`International Publication No. W0 01f96717 (Chapman) ....................... .._.33
`
`'
`
`C.
`
`Proposed New Ground of Rejection of Claims 1, 2, 7, 8, and 10-15
`as Being Obvious Over Hashimoto in View of U.S. Patent
`Application Pub. No. 2003f0l0l718 (Pfeifer) and U.S. Patent No.
`6,928,806 (Tennison) ....
`..............................................................................34
`
`l3ASF-2004.003
`
`BASF-2004.003
`
`

`
`1.
`
`2-
`
`Claims 3-6 are unpatentabie under 35 U.S.C. § 103(a) as
`being obvious over Hashimoto in View of Pfeifer,
`Tennison, and U.S. Patent No. 5,516,497’ (Speronello) ................. ..
`
`........ ..38
`
`Claim 9 is unpatentable under 35 U.S.C'. § l03(a) as being
`obvious over I-Iashimoto in view of Pfeifer, Tennison, and
`International Publication No. W0 01f967l7 (Chapman) .............. ..
`
`....._.....40
`
`VI.
`
`VII.
`
`VIII.
`
`IX.
`
`XI.
`
`Grounds 3 and 4- Proposed Rejection of Claims 1-8 and 10-15 as being
`obvious over Schafcr-Sindlinger in view of Japanese Patent Publication
`No. 09-173 866 (Nakanishi) and of Claim 9 as being obvious over Schafer—
`Sindlinger in view of Nakanishi and Chapman ..................................................... ..
`
`..L .... .._.4o
`
`Grounds 5 and 6- Proposed. Rejection of Claims 1-8 and 10-1 5' as being
`obvious over U.S. Patent Application Publication No. 2003!0101718
`(Pfeifer) in view of Nakanishi and Schafer-Sindlinger and of Claim 9 as
`being obvious over Pfeifer, Nakanishi, Schafer-Sindlinger and Chapman ........... ..
`
`........ ..42
`
`Grounds 7 and 8- Proposed Rejection of Claims 1-8 and 10-15 as being
`obvious over Schafer-Sindlinger in view of EP 0766993 A2 (Araki) and
`Heck, R.M. et al., “Catalytic Air Pollution Control," (2d ed. 2002) (Heck),
`pp. 204-208 and of Claim 8 as being obvious over Schafer-Sindlinger in
`view of Araki, Heck, and Chapman ...............................................................
`
`...... ..
`
`........ ..44
`
`Ground 9- Proposed Rejection of Claim 1 1 as being obvious over Ohno,
`Speronello, and Tennison....................................................................................... ..
`
`........ ..45
`
`Grounds 11-13- Proposed Rejection of Claims 1, 2, 7, 8 and 10-15 as
`being obvious over Nakanishi in view of Tennison, of Claims 3-6 as being
`obvious over Nakanishi in View of Tennison and Speronello and of Claim
`9 as being obvious over Nakanishi in View of Tennison and Chapman .......................... ..45
`
`Grounds 14-16- Proposed Rejection of Claims 1, 2, 7, 8, and 10-15 as
`being obvious over Aralci in view of Heck and Tennison, of Claims 3-6 as
`being obvious over Araki in view of Heck, Tennison and Speronello and
`of Claim 9 as being obvious over Aralci, I-Ieck, Tennison, and Chapman ...............
`
`........ ..47
`
`Grounds 17-l9- Proposed Rejection of Claims 1, 2, 7, 8 and 10-15 as
`being obvious over Pfeifer in view of Nakanishi and Tennison, of Claims
`3-6 as being obvious over Pfeifer in view ofNakanishi, Tennison and
`Speronello and of Claim 9 as being obvious over" Pfeifer in View of
`Nakanishi, Tennison and Chapman ................................................................................. --48
`
`CONCLUSION ................................................................................................................ ..'. ......... ..49
`
`i-iii-
`
`BASF-2004.004
`
`BASF-2004.004
`
`

`
`I.
`
`Introduction
`
`REMARKS
`
`The Patent Owner fails to overcome rejections set forth in the Office Action dated
`
`November 30, 2012 (hereinafter “Office Action”).
`
`The claims of U.S. Patent No- ?,229,5 9'? (hereinafter “the ‘597 patent”), are directed to
`
`an emission treatment system having a wall flow monolith that comprises a washcoat, i.e.,
`coating, of SCR catalyst composition that permeates the walls of the monolith. However, the
`
`prior art of record, i.e., Ohno, Pfeifer, Araki "and Nakanishi, make very clear that it was well
`
`known to provide a catalytic washcoat that permeates the walls of a relatively high porosity
`filter so as to avoid undesirable backpressure resulting from the catalyst loading. See also
`I Hashimoto, S. et al., “SiC and Cordierite Diesel Particulate Filters Designed for Low Pressure
`
`Drop and Catalyzed, Uncatalyzed Systems,” SAE Technical Paper Series, 2002-01-03 22, col.
`
`containing Figure 21 (Mar. 2002) (Hashimoto) (copy attached). This prior art reference
`discloses that the relatively high porosity (59%) filters having a mean pore size of 25 microns (in
`fact, not coincidentally, it_ appears the same filters were used in the Example of the ‘S97 patent)‘
`were loaded with relatively high levels of catalytic washcoat within the pores of the filter, e.g.,
`10.0g/I (1.64g/i113), while maintaining favorable back pressure performance more than one year
`prior to the filing date of the ‘597 patent. Accordingly, the addition of the term washcoat to the
`
`claims does not distinguish over the prior art.
`
`_
`
`The Patent Owner also attempts to distinguish over the combinations of art that include
`
`‘Ohno by arguing that Ohno teaches away from the application of a washcoat of catalyst to a high
`
`porosity wall flow monolith. The Patent Owner’s arguments, however, are based both on an
`
`inaccurate construction of the term washcoat, and on an inaccurate reading of Ohno. As will be
`
`explained below, and as supported by the Expert Declarations being filed concurrently herewith,
`Ohno actually teaches that washcoating compositions should be applied to a wall flow monolith."
`
`_in a manner that distributes the washeoating composition through the wall surface and into the
`
`network of pores, thereby preventing pressure loss due to the catalyst clogging pores. Thus,
`
`Ohno does not teach away from the application of a washcoat, :'.e., a coating, of SCR catalyst, to
`
`' The catalyzed wall flow filters disclosed in Hashimoto were actually prepared by Engelhard
`Corporation, the predecessor in interest of the_ Patent Owner. Hashimoto, Acknowledgments.
`
`"1 '
`
`BASF-2004.005
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`BASF-2004.005
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`

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`a wall flow monolith, and it follows that Ohno in combination with the other prior art renders the
`
`claimed invention obvious, as set forth in the adopted rejections.
`
`I
`
`Moreover, in arguing that Ohno teaches away from a washcoat, the Patent Owner
`
`inaccurately construes the term “washcoat” to include a specific process of applying catalyst.
`
`The term is not defined in the ‘59? Patent. The prior art, however, as well as the declarations of
`_ experts in applying catalytic washcoating compositions to filters, filed herewith, definitely
`
`establish that the proper construction of “washcoat” is the resulting coating that is applied to a
`substrate with a fluid. Notwithstandinglthe washcoating technique used to apply the coating, the
`
`end result is a coating. The claims of the ‘S97 Patent recite an emission treatment system, not a
`
`method of producing such a system or a process of applying a catalyst to an article in a system.
`
`Thus, the addition‘ of the term “washcoat” does not distinguish over Ohno and the prior art cited
`
`in the rejections, and the amended claims should be rejected as obvious over the art of record.
`
`The Patent Owner also argues that the Schafer-Sindlinger and Tennison references, which
`are‘ cited in the proposed rejections for teaching features of the claimed system in conjunction
`
`with a wall flow monolith having SCR catalyst, teach away from the claimed invention. With
`respect to Schafer-Sindlinger, the Patent Owner asserts that the reference teaches .a catalyst
`
`loading that is contrary to the catalyst loading set -forth in Ohno. The Patent Owner’s argument-,
`
`"however, fails to consider the collective teachings of Schafer-Sindlinger and Ohno. In particular,
`
`Ohno teaches that washcoating catalyst compositions should be loaded on a wall flow monolith
`in a manner that distributes the catalyst through the wall surface and into the network ofpores,
`thereby preventing pressure loss caused by the application of a thick washcoat that would clog
`"the pores. As will be explained more fully below, one of ordinary skill in the-art would readily
`
`appreciate this teaching of Ohno when combining the reference with Schafer-Sindlinger. With -
`respect to Tennison, the Patent Owner argues that the combination would require the redesign
`
`and reconfiguration of the system of Tennison. As will be explained below, however, this
`
`argument fails to address the actual rejection and how the combined teachings of the cited
`references render obvious the claimed system. _
`I
`
`The Office Action does not adopt some of the proposed rejections set forth in the Request
`
`for Reexamination. The Office Action’s reasoning for not adopting the rejections, however, is
`
`' not correct, as will be discussed below. Requester submits herewith testimony of experts having
`
`significant experience loading catalysts onto filters- Those experts make clear that a person of
`
`BASF-2004.006
`
`BASF-2004.006
`
`

`
`ordinary skill in the art seeking to load a relatively high porosity wall flow filter with an SCR
`
`catalyst composition would have considered known techniques for loading the same filters with a
`
`soot combustion catalyst or a NOX adsorber. The art cited in the non-adopted rejections renders
`
`obvious claims of the ‘S9’? Patent, as will be explained below.
`
`Requester also proposes new art rejections based on the recently discovered Hashimoto
`
`reference. This reference makes clear that high porosity diesel particulate filters, i.e., wall flow
`filters, were in fact designed to provide low pressure drop even with significantly higher catalytic
`washcoat loadings. The prior art teaches and suggests the inclusion ofan SCR catalyst on a high
`porosity wall flow filter in conjunctionwith the rest of the claimed system components. Thus,
`
`all the claims are rendered obvious either over Hashimoto in view of the other cited art, as
`
`discussed below.
`
`II.
`
`The Proper Construction of “Washcoat” in the Amended Claims Means a Coating
`
`The Patent Owner asserts at page 10 of the Amendment that “[al washcoat is understood
`
`to a person of ordinary skill in the art as conventional powder dispersion in a liquid vehicle
`
`applied to a substrate such that upon drying, the powder remains as a coating-” While the ‘S97
`
`Patent may describe a method of slurry coating at col. 10, lines 422, it is clear that what results
`
`i_s a coating of the SCR catalyst on the wall of the filter. The claims of the ‘S97 Patent are
`
`directed to an emission treatment system. Thus, the process by which the coating is applied does
`
`not distinguish over the prior art.
`
`In fact, a washcoat is very well known as a coating layer that incorporates a catalyst. See,
`
`e.g., Heck, R.M- et a1., “Catalytic Air Pollution Control," 18 (2d ed. 2002) (Heck) (“The
`
`"catalyzed coating is composed of a high-surface-carrier such as A1203 impregnated with a
`
`catalytic components- This is referred to as the catalyzed washcoatf’) (Emphasis in original).
`
`See also, Plummer, Jr., H.K. et al., “Measurement of Automotive Catalyst Washcoat Loading
`
`-Parameters by Microscopy Techniques,” 5 Microsc. Microanal., 267, 267 (1999) (“A typical
`
`automotive exhaust catalyst consists of a monolithic ceramic substrate (commonly cordierite)
`
`that is coated with an active catalyst layer referred to as washcoat.” (Emphasis added).
`
`Moreover, the ‘59? Patent refers to “SCR catalyst composition” and “SCR catalyst washcoat”
`interchangeably (“Achieving practical levels ofSCR catalyst composition on the wall flow
`
`substrate is important for providing sufficient catalytic activity to achieve mandated NO):
`
`reduction levels, and for ‘lowering the combustion temperature of the soot fraction trapped on the
`
`_ 3 _
`
`BASF-2004.007
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`BASF-2004.007
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`

`
`filter. Achieving adequate levels of SCR washcoat compositions on the soot filter is also
`
`important to secure adequate durability for the catalyst.” ‘S97 Patent, col. 6, 11. 41-47 (emphasis
`
`added)). Thus, it is clear that as used in the claims of the ‘S97 Patent, washcoat simply refers to
`
`the dried coating, and that coating includes an SCR catalyst composition that permeates the wall
`
`flow monolith.
`
`Requester has filed herewith a Declaration of Dr. Phillip Blakeman (hereinafter the
`
`“Blakeman Declaration (A)”), who has a significant amount of expertise in the catalytic coating
`of filters. As explained by Dr. Blakeman, a person of ordinary skill in the art would have
`
`understood that a washcoat is the resulting coating that remains on a substrate after a
`washcoating composition is applied. Blakeman D-ecl. (A), '|[5. The physical form of the
`
`washcoating composition is not restricted to a powder dispersion in a slurry, but encompasses all
`
`fluid forms such that, when the fluid is removed after the coating process, a coating remains,
`
`resulting in a washcoat on the substrate.
`
`Ia’. Dr. Blakeman further opines that a washcoat is a
`
`coating that results from any washcoating technique, including, for example, application of a I
`
`washcoating composition via slurry, sol gel, or solution. Id. According to Dr. Blakeman, it was
`
`well known at the filing date of the ‘597 patent that applying a washcoating composition to a
`
`substrate with any fluid medium would result in a coating that is a washcoat. Id.
`
`In fact, it was well known that a catalyst, such as Pt, could be deposited by solution
`impregnation on high-surface-area A1203 and that “[w]hen the A1203 is bonded to a monolithic
`
`honeycomb support, .
`
`.
`
`. it is called a washcoat.” (Emphasis in original). Heck, at 5-6. It was
`
`also well known that a catalytic washcoat could be applied to a substrate using a sol gel binder
`
`and that the washcoat layer often contains a binder. -See, e.g., U.S. Patent Application Pub. No.‘
`
`20030040425, para. [0043] (“The catalytic rnaterialfbinder system forms the catalytic washcoat
`composition which is then coated onto the monolithic structure”). Thus, it is clear that there
`
`_
`
`were numerous techniques known at the filing date of the ‘S97 Patent to obtain a washcoat of a
`
`composition on a substrate. It was also well known that such coatings may, and often do, contain
`a binder-
`
`The specification and claims of the ‘S9’? Patent certainly nowhere preclude the use of a
`
`binder from the washcoat. Dr. Blakeman, in fact, opines that washcoating compositions can
`
`often contain binders to assist in binding the washcoat to the substrate. Blakeman Dec}. (A), 15.
`
`Although not explicitly stated, the Example set forth in the ‘597 patent employs ZIO2 as a binder I
`
`BASF-2004.008
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`BASF-2004.008
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`

`
`to assist in maintaining the coating on the substrate. Col. 12, l. 30; see Declaration Under 37
`
`C.F.R. § 1.131 by Joseph C. Dettling, Exhibit A (“The catalyst also contains excess copper oxide.
`and an inorganic binder, in this case ZrO2.”). Nor does the fact that the ‘S97 Patent exemplifies
`
`the use of a slurry in a washcoating technique change the fact that the resulting catalytic layer is
`
`a “coating". Certainly, none of the claims of the ‘S97 Patent exclude an alumina washcoat.“
`
`Thus, as the claims of the ‘597 patent are to an emission treatment system, the term “washcoat”
`
`would have been recognized by a person of ordinary skill as a coating. The Patent Owner has
`
`_ not alleged that its washcoat is not a coating or that the “powder” which clearly may include a
`
`binder and which “remains as a coating” is somehow not a coating.
`As noted by Dr. Blakeman and as shown by the prior art referred to herein, the definition
`
`of “washcoat” as the “well understood meaning to a person of ordinary skill in the art” is overly
`restrictive3. A person of ordinary skill would have been well aware that a washcoat is a coating
`
`that has been applied with a fluid. See Blakeman Decl. (A), 15, and the prior art references
`
`referred to herein. See also Walker Dec]. (C), ‘W8 and 14. With respect to Dr. HalIer’s opinion,
`
`although Requester "notes that while Dr. Haller’s curriculum vitae evidences a significant amount
`of experience in the study of catalysis, there is little evidence of any significant experience in the
`science of loading catalyst onto filters. In any event, the facts presented by Requester as well as
`the opinion ofpersons having significant expertise in catalyst filter technology make clear that
`the proper definition of a washcoat is a coating on -a substrate that has been applied with a fluid.
`
`By failing to recognize this broad definition of a washcoat and that there are different types of
`washcoating techniques that result in a washcoat, Dr. Haller fails to recognize that Ohno teaches
`
`a washcoat that is dispersed throughout the walls of the filter. Moreover, as previously stated,
`I because the claims presentedlby the ‘S97 Patent are directed to an emission treatment system, it
`
`is clear that washcoat is a coating, and how it was applied is immaterial-
`
`Additionally, claim terminology in a reexamination proceeding is to be given the
`
`broadest reasonable interpretation consistent with the specification and consistent with the
`
`2 Even Dr. I-Ialler ultimately concludes that the result of the application technique described in the ‘59?
`Patent is a “coating”. See Declaration of Gary L. Haller, 1]10, filed in Reexarn Control No. 951001344 for
`_U.S. Patent No. 7,902,107, which claims priority to the ‘S97 Patent, attached herewith.
`
`3 The Patent Owner attempts to use extrinsic evidence to define the term “washcoat” because it is not
`defined in the ‘S97 Patent. As shown herein, however, by testimony of experts as well as
`contemporaneous prior art, the meaning that a person of ordinary skill would have given to the term
`“washcoat” is much broader than suggested by Dr. l-laller.
`
`- 5 _
`
`BASF-2004.009
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`BASF-2004.009
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`

`
`interpretation that those skilled in the art would reach. In re Yamamoto, 740 F.2d 1569 (Fed. Cir.
`
`1934). The specification of ‘S97 Patent does not provide the express definition of a “washcoat”
`
`asserted by the Patent Owner, and as discussed above, one of ordinary skill in the art would have
`understood the term to mean a coating on a substrate. Accordingly, that interpretation should be
`
`applied to recitation of a “washcoat” in the claims of the ‘S97 Patent.
`
`111.
`
`Amended Claims 1, 14 and 15 and Original Claims 2-13
`
`A.
`
`Ground 1 - Rejection of Claims 1-8 and 10-15 as being obvious over US.
`Patent Application Pub. No. 200210039550 g-Schafer—Sindlinger) in view of
`WO 02126351 {Ohno}
`
`1.
`
`I Ohno Teaches a Catalytic Washcoat that Permeates the Walls of a
`Wall Flow Filter
`'
`
`At pages 1 1-13 of the Amendment, the Patent Owner asserts that Ohno teaches away
`‘from application of washcoats to wall flow monoliths. A careful reading of Ohno shows this is
`incorrect.
`
`First, Ohno clearly teaches a “washcoat” as that termis correctly interpreted. As
`
`discussed above, a washcoat simply refers to the dried coating, and that coating includes an SCR
`
`catalyst composition that permeates the wall flow monolith. In Ohno, the high porosity filter is
`
`covered with a thin alumina film that is dispersed throughout the wall of the substrate. Ohno, p.
`12, 11. 20-26, p. 20, ll. 13-15-. The resulting thin alumina film is in fact a washcoat as it is
`
`deposited from a solution of metal compound to form a coating on the ceramic substrate. In fact,
`
`prior to the filing date of the ‘S97 Patent, the sol-gel method was a well known technique used to
`
`create a coated filter substrate. See, e.g.,-U.S. Patent Application Pub. No. 2003f004D425, para.
`[0003], which describes a method of washcoating a catalytic material using a silica so] and
`
`alumina sol binder system. While Ohno does not describe the application of a slurry, the result
`
`' using the disclosed technique is still the same, :'.e., a coating. Moreover, the application of a
`slurry does not per se affect the performance of the catalytic material. See comparative example,
`
`Catalyst Bl , of the ‘S97 Patent. In addition, the ‘59? Patent does not claim a method of
`
`application. It claims an emission treatment system that includes a wall flow monolith with a
`
`washcoat of an SCR catalyst, :‘.e., a coating of an SCR catalyst composition" that permeates the
`
`walls of the wall flow monolith. In re Pilkington, 411 F.2d 1345', 1348 (C.C.P.A. 1969) (“The
`patentability of a_product does not depend on its method ofproduction.”).
`In sum, Ohno
`
`BASF-2004.010
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`BASF-2004.010
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`describes coating a wall flow monolith with a thin film of alumina carrying a catalyst. Ohno, p.
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`22, 11. 3-6. While Ohno describes applying a catalyst using an aqueous solution, once the
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`monolith is dried, the result is still a catalytic coating, i.e., a washcoat comprising a catalyst.
`The Patent Owner has also misinterpreted the disclosure of Ohno. To support its
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`assertion that Ohno teaches away from the application of a "washcoat to a wall flow monolith, the
`Patent Owner points to an excerpt from page 2, lines 6-9 of Ohno that recites “even ifthe pore
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`size and porosity are made large, if coated with a catalyst, pressure loss conversely ends up
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`becoming larger". However, as pointed out by Dr- Walker in the concurrently Submitted
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`Declaration (hereinafter, the “Walker Declaration (C)”), this assertion ignores the very next
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`paragraph -of Ohno, at page 2 lines 10-13, that makes clear the importance of using a filter having
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`“an average pore size of 10 to 250 microns and a porosity of 40 to 80% or 40 to 70%?’ Walker
`Decl. (C), 1110. Moreover, a careful reading of thecomplete disclosure of Ohno makes clear that
`simply covering the wall surface of the exhaust gas cell walls with a thick uniform catalyst
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`coating layer using a washcoating technique, without any permeation through the pores, will
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`result in the pores being clogged, and thus an undesirable increase in back pressure. See Ohno,
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`p. 12, l. 27 to p. 13, 1. 6 (emphasis added). As Dr. Walker explains, Ohno, in fact, teaches that
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`,
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`washcoats should be applied to wall flow monoliths in a manner that distributes the washcoat
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`composition through the wall surface and into network of pores, thereby preventing pressure loss
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`.due to the catalyst clogging pores and improving the durability, i.e. reducing or eliminating
`peeling of the coating on the wall surfaces. Walker Decl. (C), 1[12, citing Ohno, p. 13, 11. 2-17.
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`Just as the ‘S9’? Patent, the goal of Ohno is to avoid a thick washcoat deposited using a
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`washcoating technique on the wall surface of the wall flow filter so as to avoid clogging the
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`pores. Id. As stated at page 13, lines 10-13 of Ohno, “[t]her_e'fore, in the ernbodimentof the
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`invention, the pores of the cell walls 12 themselves are maintained as pores; in other words, the
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`gaps between each of the SiC particles 4 are never completely clogged. Due to this, compared to
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`the conventional catalyst coating layer 2, the pressure loss can be notably less." The
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`-comparative example of Ohno actually is very" similar to the ‘S97 Patent’s comparative example.
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`The ‘S9’? Patent shows, just as Ohno showed, by comparative example, Catalyst Bl, which was
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`loaded with 2.0 g/in3 (which falls within the scope of claim 1)4 that when you load the filter in a
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`4 The Patent Owner remains silent as to how a wall flow filter having a coating applied to only one side of
`the wall of the filter would be operative in view of its comparative example.
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`_ 7 _
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`BASF-2004.011
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`BASF-2004.011
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`manner that clogs the pores, r'.e., by placing a thick body of a washcoat on the walls of the filter,
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`not unexpectedly, the resulting filter suffers from an unacceptable back pressure.
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`‘597 Patent,
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`col- 12, l. 22 to col. 13, l. 32. Thus, Ohno does not teach away from the claims of the ‘S97
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`Patent, but in fact teaches the very same concept as the ‘S97 Patent, z'._e., washcoating
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`compositions that result in a thick pore clogging coating should be avoided by applying a
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`washcoating composition that permeates throughout the pores of a relatively high porosity filter.
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`2.
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`Schafer—Sindlinger and Ohno are Comhinable
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`At pages 13-14 of the Amendment, the Patent Owner argues that Schafer-Sindlinger
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`teaches a catalyst loading that would destroy the purpose of Ohno, as the Patent Owner argues I
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`that Schafer-Sindlinger teaches catalyst loadings that are much higher than those that would be
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`permitted by Ohno. The Patent Owner’s argument, however, fails to consider the collective
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`teachings of the references, and does not address the actual reasoning ofthe rejection set forth in
`' the Office Action.
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`As discussed above, Ohno teaches that washcoats should be applied to wall flow
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`monoliths in a manner that distributes the washcoat composition through the wall surface and
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`into network of pores, thereby preventing pressure loss‘ due to the catalyst clogging pores.
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`Walker Decl. (C), fi|12, citing Ohno, p. 13, 11. 2-17. Thus, as correctly found in the Office Action,
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`Ohno teaches providing catalyst in a manner that provides for minimal loss of exhaust pressure.
`Office Action, pp. 5-6. It follows that when combining the wall flow filter of Ohno with the
`system of Schafer-Sindlinger, one of ordinary skill in the art would have utilized the guidance
`provided by Ohno in applying SCR catalyst to the wall flow filter. Blakernan Decl. (A), 1[9.
`Notwithstanding that Ohno would have been understood by one ofordinary skill in the
`art to teach the technique for applying SCR catalyst to a wall flow filter, the Patent Owner is
`incorrect in asserting that the catalyst loadings taught by Schafer-Sindlinger run contrary to the
`teaching of Ohno. Schafer-Sindlinger teaches that “[a] coating concentration of up to 200 grams
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`of catalyst powder per liter [3-3 g/in3] of honeycomb structure is preferably striven for.”
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`-Schafer-Sindlinger, paragraph [0024] (emphasis added).5 Schafer-Sindlinger does not indicate
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`5 The Patent Owner and Dr. Haller have apparently misread the teaching of Schafer-Slindlinger with
`respect to the coating concentration. Both assert that Schafer-Sindlinger “requires loadings equal to or
`greater than 200 glI (3 .23 g.in3).” Amendment, p. 14, Haller Decl., ‘Q21-(emphasis added). This is not
`true. At no point does Schafer-Sindlinger require a coating concentration of greater than 200 g/L.
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`_ 3 _
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`BASF-2004.012
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`BASF-2004.012
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`any particular required catalyst loading, and indeed, the cited passage merely suggests a
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`maximum catalyst concentration that would be needed in the system.6 Further, as explained by
`Dr. Blakeman, one of ordinary skill would have understood the referenced coating concentration
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`to indicate that the coating concentration could be tailored to the particular configuration of the
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`substrate, :'.e., providing a coating concentration at a level suitable for a wall flow monolith as
`opposed to a coating concentration at a level suitable for a flow t