04119.000400.36
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`REEXAMINATION
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Inter Partes Reexamination of:
`
`JOSEPH A. PATCHETT ET AL.
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`Patent No. 7,229,597
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`Issued: June 12, 2007
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`Control No. 95/001,745
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`Reexam Filed: September 7, 2011
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`Examiner: LOPEZ, CARLOS N.
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`Group Art Unit: 3991
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`Confirmation No.: 4882
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`For: CATALYZED SCR FILTER AND
`EMISSION TREATMENT SYSTEM
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`) November 15, 2012
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`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Third Party Comments After Patent Owner's Response Under 37 C.F.R. § 1.947
`
`Madam:
`
`The following is the Requester's response to "Patent Owner's Amendment and Response
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`Under 37 C.F.R. § 1.951(a)" as well as the attachments thereto filed on October 16, 2012, and to
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`the Action Closing Prosecution dated August 16, 2012.
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`BASF-2005.001
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`

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`Table of Contents
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`REMARKS ...................................................................................................................................... 1
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`I.
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`II.
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`III.
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`Introduction .......................................................................................................................... 1
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`The Proposed Claim Amendments Should Not Be Entered ............................................... .4
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`Ground 1 - Rejection of Claims as Being Obvious Over Schafer-
`Sindlinger in view of Ohno .................................................................................................. 6
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`Schafer-Sindlinger Does Not Preclude the Use of a Wall
`Flow Monolith ............................................................................................. 6
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`A "Washcoat" and a "Slurry Loaded Washcoat" Means a
`Coating ......................................................................................................... 9
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`Ohno Teaches a Coating and Therefore a "Slurry Loaded
`Washcoat" .................................................................................................. 12
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`One of Ordinary Skill in the Art Would have Provided a
`Wall Flow Filter in the System of Schafer-Sindlinger.. ............................. 15
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`Unclaimed Features Cannot Be Used to Establish
`Patentability ............................................................................................... 18
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`Claim 11 ..................................................................................................... 19
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`B.
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`Ground 2 -Rejection of Claim 9 as being obvious over Schafer-
`Sindlinger in View of Ohno and Chapman ............................................................ 20
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`IV.
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`Ground 9- Rejection of Claims 1-8, 10, and 12-15 as Being Obvious Over
`Ohno in View of Speronello and Tennison ........................................................................ 20
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`1.
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`2.
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`One of Ordinary Skill in the Art Would Have Combined
`the SCR Zeolite Catalyst of Speronello with the Filter of
`Ohno ........................................................................................................... 21
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`One of Ordinary Skill in the Art Would Have Combined
`System Components with the SCR Catalyst Coated Filter of
`Ohno ........................................................................................................... 22
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`Claims 3-6 .............................................................................................................. 24
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`Claim 11 ................................................................................................................. 25
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`B.
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`C.
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`V.
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`Ground 10- Rejection of Claim 9 as Being Obvious Over Ohno in View
`ofSperonello, Tennison, and Chapman ............................................................................. 26
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`- 1 -
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`BASF-2005.002
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`VI.
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`Unexpected Results ............................................................................................................ 26
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`VII. Grounds 21 and 22 Proposed Rejections of Claims 1-8 and 10-15 as Being
`Obvious Over Hashimoto in view ofOhno and Schafer-Sindlinger, and of
`Claim 9 as Being Obvious Over Hashimoto in view of Ohno, Schafer-
`Sindlinger, and Chapman ................................................................................................... 29
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`VIII. Grounds 23-25 Proposed Rejections of Claims 1, 2, 7, 8, and 10-15 as
`Being Obvious Over Hashimoto in view ofOhno and Tennison, of Claims
`3-6 as Being Obvious Over Hashimoto in view ofOhno, Tennison, and
`Speronello, and of Claim 9 as Being Obvious Over Hashimoto in view of
`Ohno, Tennison, and Chapman .......................................................................................... 30
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`CONCLUSION .............................................................................................................................. 33
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`- 11 -
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`BASF-2005.003
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`

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`I.
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`Introduction
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`REMARKS
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`The Patent Owner's Amendment ("Amendment") fails to overcome rejections set forth in
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`the Action Closing Prosecution dated August 16, 2012 ("ACP").
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`Initially, the claim amendments presented in the Amendment should not be entered
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`inasmuch as the claim amendments would complicate the issues on appeal by necessitating
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`further rejections. In particular, the newly introduced terms "slurry loaded washcoat" and
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`"zeolite and a base metal component" are not supported by the written description of the '597
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`patent. As such, entry of the amendments would necessitate new rejections under 35 U.S.C. §
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`112, first paragraph.
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`Nevertheless, even if the claim amendments are entered, neither the claim amendments,
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`nor the corresponding arguments of the Patent Owner, overcomes rejections set forth in the ACP.
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`The ACP properly finds that the claimed emission treatment system would have been
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`obvious in view of the cited art. The claims merely combine a known SCR catalyst coated filter,
`as is taught by Ohno, with other known components of an exhaust treatment system. 1 Schafer(cid:173)
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`Sindlinger and Tennison both exemplify the exhaust system components, namely oxidation
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`catalysts and ammonia injectors. The claimed invention is merely an obvious combination of
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`components for use in exhaust treatment systems.
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`Schafer-Sindlinger discloses an exhaust treatment system that includes an oxidation
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`catalyst and ammonia injector upstream of an SCR catalyst. As properly found in the ACP, it
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`would have been obvious for one of ordinary skill in the art to have used Ohno's SCR catalyst
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`coated filter as the SCR catalyst support structure in the system of Schafer-Sindlinger. Indeed,
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`one of ordinary skill in the art would have been motivated to combine the SCR catalysis and
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`filter functions on one structure in order to reduce the size of the exhaust treatment system.
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`1 An SCR catalyst coated filter is the subject ofReexamination Control No. 95/001,744, which is
`a reexamination of a patent that claims priority to the '597 patent. The catalyst coated filter
`claimed in Control No. 95/001,744 is of similar scope to the filter component claimed in the
`present reexamination, and the catalyst coated filter claimed in Control No. 95/001,744 is
`rejected as being obvious in view of much ofthe same art as the present reexamination. To be
`logically consistent, the claimed system herein should continue to be rejected in the present
`reexamination given that the filter is rejected in Control No. 95/001,744, and that the other
`claimed system components were known and obvious.
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`- 1 -
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`BASF-2005.004
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`

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`The Patent Owner attempts to overcome the rejection with the combination of Schafer(cid:173)
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`Sindlinger in view of Ohno by arguing that Schafer-Sindlinger does not teach a wall flow filter
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`for supporting the SCR catalyst, and by arguing that it would not have been obvious to use the
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`wall flow filter of Ohno in the system. One of ordinary skill in the art, however, would not have
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`viewed Schafer-Sindlinger as precluding the use of a wall flow filter for supp01iing the SCR
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`catalyst, as the disclosure of honeycomb structures in Schafer-Sindlinger would have been
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`understood to encompass wall flow filters. Further, there is nothing in the disclosure of Schafer(cid:173)
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`Sindlinger that teaches away from the use of a wall flow filter for supporting the SCR catalyst, or
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`otherwise indicates that a wall flow filter could not be used to support the SCR catalyst. The
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`Patent Owner mischaracterizes Schafer-Sindlinger by asserting that the reference requires an
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`amount of catalyst coating that is incompatible with the filter taught by Ohno. Schafer(cid:173)
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`Sindlinger, however, does not require any particular amount of coating, and it is clear that one of
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`ordinary skill in the art would not have had to use different coating techniques than the ones
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`taught by Ohno when using Ohno 's filter in the system of Schafer- Sindlinger.
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`In another rejection, the ACP properly finds that given the SCR catalyst coated filter of
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`Ohno, it would have been obvious to have provided an oxidation catalyst and ammonia injector
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`upstream of the SCR catalyst. The Tennison reference is cited as demonstrating that an
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`oxidation catalyst and an ammonia injector were obvious components for use in an exhaust
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`treatment system upstream of an SCR catalyst. In fact, providing the oxidation catalyst and
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`ammonia injector upstream ofthe SCR catalyst coated filter ofOhno would have amounted to
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`nothing more than utilizing Ohno's filter in its intended manner, i.e., providing the SCR catalyst
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`coated filter in a system such that the SCR catalysts would catalyze the reduction ofNOx with
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`the ammonia as a part of an exhaust treatment system.
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`The Patent Owner, however, fails to properly address the rejection made in the ACP by
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`arguing that Tennison teaches a system wherein the filter is positioned downstream of the SCR
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`catalyst filter. Ohno teaches a SCR catalyst coated filter, and thus, the order of the SCR catalyst
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`and filter in the system of Tennison is irrelevant to the question of whether it would have been
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`obvious to provide an oxidation catalyst and ammonia injector upstream of the SCR catalyst
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`coated filter ofOhno. The ACP properly rejects the Patent Owner's previously submitted
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`spurious arguments with respect to the order of components in the system of Tennison, and
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`should continue to do so.
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`- 2-
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`BASF-2005.005
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`

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`The Patent Owner makes other arguments that Ohno, or the combination of Ohno and
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`Speronello, does not teach or suggest the claimed catalyst coating on a wall flow monolith. The
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`Patent Owner's arguments, however, require an interpretation of the terms ''washcoat" and
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`"slurry loaded washcoat" that is not supp01ied by the disclosure of the '597 patent, and is
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`contradictory to clear definitions of these terms that are found in the art. See, e.g., Plummer, Jr.,
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`H.K. et al., "Measurement of Automotive Catalyst Washcoat Loading Parameters by Microscopy
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`Techniques," 5 Microsc. Microanal., 267, 267 (1999) ("A typical automotive exhaust catalyst
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`consists of a monolithic ceramic substrate (commonly cordierite) that is coated with an active
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`catalyst layer is referred to as washcoat."); Heck, R.M. et al. "Catalytic Air Pollution Control,"
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`18 (2d ed. 2002) (Heck) ("The catalyzed coating is composed of a high-surface-carrier such as
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`Ab03 impregnated with a catalytic components [sic]. This is referred to as the catalyzed
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`washcoat.") (Emphasis in original); see also Blakeman Decl. (A),~ 5. Nothing in the intrinsic
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`evidence of the disclosure and prosecution history of the '597 patent indicates that ''washcoat"
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`and "slurry loaded washcoat" should be construed as imparting a structural feature other than a
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`coating. For example, the '597 patent indicates that the wall flow substrate was: (1) dipped into
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`the slurry to a depth sufficient to coat the channels of the substrate along the entire axial length
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`of the substrate from one direction; (2) air-knifed the substrate from the side opposite the coating
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`direction (i.e., the dry side); (3) vacuumed from the coated side[.]" Col. 12, ll. 34-47 (Emphasis
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`added). Moreover, while the Patent Owner attempts to cite extrinsic evidence for support of
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`their definition, nothing in its argument negates that fact that extrinsic evidence clearly supports
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`a finding that the broadest reasonable interpretation of the terms "washcoat" and "slurry loaded
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`washcoat" is a coating.
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`With the proper interpretation of claim terms in mind, the Patent Owner's arguments fail
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`to distinguish the claim language from Ohno. The Patent Owner and its Declarants compare the
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`coating shown in the drawings of Ohno to SEM photographs of a coating that is purportedly
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`according to the disclosure of the '597 patent. Yet all that can be gleaned from the SEM
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`photographs provided by the Patent Owner is that the slurry loaded zeolite provides a coating in
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`some of the pores. And the prior art teaches such a coating. Despite Patent Owner's reliance on
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`the "look" of the catalyst in the SEM photograph, there are no patentably distinct structural
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`features of the photographed coating. The Patent Owner asserts that "a wall flow substrate that
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`has been loaded with a washcoat of a zeolite and a base metal has some pores that are almost
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`BASF-2005.006
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`

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`completely filled with catalyst washcoat, whereas other larger pores are only partially filled with
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`the washcoat." Patchett Decl., ~ 12. In fact, the coatings in Ohno also include filters wherein
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`some of the pores are almost completely filed with a catalyst washcoat, whereas other larger
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`pores are only partially filled with the washcoat. See, e.g., Ohno, Fig. 6(g).
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`The Patent Owner also attempts but fails to establish that by virtue of a metal loaded
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`zeolite catalyst, the emission treatment system claimed in the '597 patent performs in a manner
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`that would not have been expected by one of ordinary skill in the art in view of the cited prior
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`art. As shown in the Declaration ofDr. Rajaram being submitted herewith, when metal loaded
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`zeolites and other types of catalyst are tested under realistic conditions, no unexpected
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`differences between the catalysts are observed.
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`II.
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`The Proposed Claim Amendments Should Not Be Entered
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`Because the Patent Owner's Amendment was filed after the ACP, there is no right to
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`further prosecution. 37 C.F.R. § 1.116. Consequently, the Examiner can, and should, decline to
`
`enter proposed amendments where the entry of the amendments would raise new issues and
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`complicate any appeal. Requester submits that the amendments proposed in the current
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`Amendment would complicate the issues on appeal by necessitating further rejections.
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`Therefore, the amendments in the response should not be entered.
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`The proposed amendment in the response introduces for the first time the term "slurry
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`loaded washcoat" in claim 1. The specification of the '597 patent, however, never uses the term
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`"slurry loaded washcoat." In fact, there is but one reference to a "washcoat" at col. 6, 1. 46, and
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`this description does not define the washcoat as being formed from a slurry. On the other hand,
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`when referencing a "slurry," the '597 patent actually refers to a "coating," not a washcoat, being
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`formed by the slurry. See, e.g., col. 10, ll. 4-7 ("To coat the wall flow substrates with the SCR
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`catalyst composition, the substrates are immersed vertically in a portion of the catalyst slurry
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`such that the top of the substrate is located just above the surface of the slurry." (Emphasis
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`added); col. 12, 11. 36-42 ("The wall flow substrate was: (1) dipped into the slurry to a depth
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`sufficient to coat the channels of the substrate along the entire axial length of the substrate from
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`one direction; (2) air-knifed the substrate from the side opposite the coating direction (i.e., the
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`dry side); (3) vacuumed from the coated side[.]") (Emphasis added).
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`It is clear, however, that the Patent Owner's arguments attempt to assign a special
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`meaning to the term "slurry loaded wash coat" that is not found in the '597 patent. The Patent
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`-4-
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`BASF-2005.007
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`

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`Owner argues that the term "slurry loaded washcoat" is a structural limitation. Amendment, pp.
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`13-16. Moreover, the Patent Owner's Declarants appear to suggest that the term "slurry loaded
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`washcoat" means something different than a "coating" by asserting varying definitions of
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`"washcoat" and "slurry loaded washcoat." See, e.g., Farrauto Decl., ~ 22 ("a washcoat is a slurry
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`loaded layer of oxide particles held in a liquid suspension that is subsequently dried"), ~ 15 (the
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`slurry loaded washcoat "provides a washcoat permeating the filter walls that appears as [shown
`
`in photographs] when examined by cross-section by scanning electron microscope (SEM)").
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`The Patent Owner is attempting to prescribe a meaning to the term "slurry loaded washcoat"
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`allegedly based on the disclosure of the '597 patent, but which in fact contradicts the disclosure
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`of the '597 patent which merely describes "coatings." Accordingly, the amendment
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`incorporating the term "slun-y loaded washcoat" should necessarily be rejected under 35 U.S.C. §
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`112, first paragraph, as introducing new matter not provided in the original written description of
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`the patent. Thus, if the Patent Owner's amendments are entered, a new rejection would
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`necessarily have to be entered under 35 U.S.C. § 112, first paragraph, which would necessarily
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`complicate the appeal. Accordingly, the amendments should not be entered.
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`Requester notes, however, that if the Patent Owner's interpretation of the claim terms is
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`rejected, and the terms "slurry loaded washcoat" and "washcoat" are merely construed according
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`to the disclosure of the '597 patent, the only conclusion is that structural feature imparted by
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`these terms is a coating, as is discussed in detail below. In other words, there are only two
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`possible outcomes: (1) the Patent Owner's definition of "slurry loaded washcoat" is accepted, but
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`this definition is unsupported by the disclosure of the '597 patent and therefore must be rejected
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`under Section 112, or (2) the term "slurry loaded washcoat" is only interpreted in a manner
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`consistent with the disclosure of the '597 patent, which means that the only structural feature
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`imparted by the term is a coating.
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`The proposed amendment would also necessarily have to be rejected under 35 U.S.C. §
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`112, first paragraph, inasmuch as the recitation of"a zeolite and a base metal component" is not
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`supported by the written description of the '597 patent. While the disclosure of the '597 patent
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`describes an iron and copper promoted zeolite, the patent does not describe any other base metal
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`promoters. See '597 patent, col. 7, 1. 65- col. 8, 1. 9. As such, the scope of amended claim 1,
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`extending beyond a zeolite with iron and copper base metal components, is not supported by the
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`written description of the '597 patent.
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`- 5-
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`BASF-2005.008
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`

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`III. Ground 1 -Rejection of Claims as Being Obvious Over Schafer-Sindlinger in view
`ofOhno
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`As discussed above, Requester submits that the Patent Owner's Amendment should not
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`be entered. Nevertheless, even if the Amendment is entered, the Amendment fails to overcome
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`the Ground 1 rejection for at least the following reasons.
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`1.
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`Schafer-Sindlinger Does Not Preclude the Use of a Wall Flow
`Monolith
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`As properly recognized at pages 6-7 and 40-41 of the ACP, Schafer-Sindlinger teaches an
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`emission treatment system that includes an SCR catalyst. The reference does not completely
`
`describe the configuration of structure used to support the SCR catalyst, but it does teach that the
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`zeolite SCR catalyst "is preferably applied, in the form of a coating, to honeycomb structures
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`made of ceramic or metal." Schafer-Sindlinger, para. [0024]. In view of such clear teaching by
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`Schafer-Sindlinger of an SCR catalyst in the system, the ACP properly finds that it would have
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`been obvious to one of ordinary skill in the art to use the SCR catalyst coated wall flow monolith
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`suggested by Ohno with the emission treatment system of Schafer-Sindlinger. ACP, p. 42.
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`The Patent Owner, however, focuses a large portion of its arguments on the lack of an
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`express teaching of a wall flow filter in Schafer-Sindlinger, asserting that the honeycomb
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`structure described in the reference would have been limited to a flow through substrate.
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`Amendment, pp. 11-12. As found in the ACP, this argument fails to properly address the
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`rejection. More specifically, this argument does not address whether it would have been obvious
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`to use the SCR catalyst coated wall flow filter taught by Ohno in the system of Schafer(cid:173)
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`Sindlinger. See ACP, p. 41. Nevertheless, the Patent Owner fails to even prove that the
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`honeycomb structure in Schafer-Sindlinger itself is limited to flow through substrates and does
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`not include wall flow filters. One of ordinary skill in the art would not have viewed Schafer(cid:173)
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`Sindlinger as limited to flow through substrates, and further, one of ordinary skill in the art
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`would have found nothing in Schafer-Sindlinger to indicate that a wall flow substrate could not
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`be used as the SCR catalyst support in the system. Second Blakeman Decl. (E),~~ 19-20.
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`Initially, the term "honeycomb structure" in Schafer-Sindlinger would have at least been
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`suggestive of a wall flow filter to one of ordinary skill in the art, as a wall flow filter is known in
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`the art to be a honeycomb structure. The '597 patent itself refers to "honeycomb wall flow
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`filters." '597 patent, col. 1, 1. 66- col. 2, 1. 3, col. 3, 11. 58-63; see also Second Blakeman Decl.
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`- 6-
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`BASF-2005.009
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`(E),~ 16. As discussed by Dr. Blakeman, Schafer-Sindlinger further suggests a distinction
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`between "conventional" honeycomb structures, and honeycomb structures in general for
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`supporting the SCR catalyst. Second Blakeman Decl. (E), ~ 16. To the extent that flow through
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`substrates were more conventionally used in exhaust treatment systems, Schafer-Sindlinger's
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`reference to "honeycomb structures," and not "conventional honeycomb structures," for
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`supporting the SCR catalyst would have suggested to one of ordinary skill in the art that a wall
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`flow filter could have been used as the SCR catalyst support in Schafer-Sindlinger. Id.
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`The Patent Owner further asserts that the lack of discussion in Schafer-Sindlinger with
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`respect to soot removal or filtration evidences that the disclosed honeycomb structure could not
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`be a filter. Amendment, p. 11; Dettling Decl., ~ 24. Such a lack of disclosure, however, far from
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`shows that the honeycomb structure would not have been a filter, or that Schafer-Sindlinger
`
`intended the system to not include a filter. As noted by Dr. Blakeman, prior to the '597 patent
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`the use of filters in exhaust treatment was well known and expected to become commonplace.
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`Second Blakeman Decl. (E),~ 17. Dr. Blakeman cites Hiithwohl, G. et al. "The SCRT®
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`System-A Combination Particle Filter with SCR Catalyst-Enables Both Particle and NOx
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`Emission to be Reduced Simultaneously in Commercial Vehicle Diesel Engines" (Hiithwohl) as
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`demonstrating the use of filters in exhaust treatment systems, and also demonstrating that soot
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`filter coated with SCR catalysts were being incorporated into exhaust treatment systems in order
`to meet the applicable filtration and NOx control requirements. 2 Hiithwohl, p. 1, ll. 1-6; p. 2, ll.
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`7-12; p. 3, ll. 20-29. One of ordinary skill in the art would have been mindful of the use of a
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`filter in exhaust treatment systems when considering the system of Shafer-Sindlinger. Second
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`Blakeman Decl. (E), ~ 17. Thus, one of ordinary skill in the art would have considered how a
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`filter would be integrated in the system of Schafer-Sindlinger, with the use of a honeycomb wall
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`flow filter certainly having been viewed as a viable option. Id.
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`The Patent Owner further argues that Schafer-Sindlinger's reference to a "conventional
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`honeycomb structure" being used for an oxidation catalyst supp01i and an SCR catalyst support
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`indicates that the reference is limited to flow through monoliths. Amendment, p. 11; Dettling
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`2 As noted in the Declaration (G) by Bernd Maurer being submitted herewith, the Hiithwohl
`paper was presented at a public conference on May 21, 1999, and distributed without restriction
`to the attendees of the conference. Accordingly, Hiithwohl is a printed publication under 35
`U.S.C. § 102. See 1'-'fassachusetts Institute of Technology v. Ab Fortia, 774 F.2d 1104, 1108-09
`(Fed. Cir. 1985).
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`- 7-
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`BASF-2005.010
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`

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`Dec I., ~ 24. Yet, at no point does Schafer-Sindlinger indicate that the honeycomb structure used
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`for the oxidation catalyst support must be the same type of structure that is used to support the
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`SCR catalyst. In fact, it implies that different structures could be used to support the two
`
`different catalysts. When describing the options for the oxidation catalyst, Schafer-Sindlinger
`
`notes that the catalyst is "applied to a carrier which can be conventional honeycomb structure in
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`the form of a coating." Schafer-Sindlinger, para. [0016] (Emphasis added). On the other hand,
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`when describing the options for the SCR catalyst, the reference notes that the catalyst is "applied,
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`in the form of a coating, to honeycomb structures made of ceramic or metal." Id. at [0024]. This
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`suggests a difference between the options for the oxidation catalyst and the SCR catalyst.
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`Second Blakeman Decl. (E), ~ 16. In any event, if Schafer-Sindlinger had intended to limit the
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`oxidation and SCR catalysts to being supported on the same type of structure, such as a flow
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`through substrate, it could very easily made this express indication. It does not, and the Patent
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`Owner's argument is therefore without merit.
`
`The Patent Owner still further argues that the SCR catalyst loading level in Schafer(cid:173)
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`Sindlinger is far beyond the loading that would have been used on a wall flow filter.
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`Amendment, pp. 11-12; Dettling Decl., ~ 24; Patchett Decl., ~ 19. Nothing in Schafer(cid:173)
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`Sindlinger, however, requires a particular amount of SCR catalyst on the honeycomb structure.
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`Second Blakeman (E),~ 18. Dr. Dettling assetis that "Schafer-Sindlinger proceeds to load the
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`SCR catalyst at nearly 200 g/1 to provide for adequate conversion" (Dettling Decl., ~ 25), but
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`Schafer-Sindlinger in fact never refers to "adequate conversion" or otherwise indicates that a
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`particular amount ofNOx conversion must be achieved. One of ordinary skill in the art would
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`have understood the disclosure of Schafer- Sindlinger such as "a coating concentration of up to
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`200 grams of [SCR] catalyst powder per liter of honeycomb structure is preferably striven for"
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`(para. [0024]) to indicate that the coating concentration could be tailored to the particular system
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`configuration. Second Blakeman (E), ~ 18. While Schafer-Sindlinger provides an example at
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`paragraph [0038] of a support with 196 g/1 of SCR catalyst, one of ordinary skill in the art would
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`have indeed understood this to be merely an example, and not indicative of a required
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`configuration for the honeycomb structure. Id.
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`The Patent Owner also argues that the description of an example honeycomb substrate in
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`Schafer-Sindlinger as having a cell density of 400 cells per square inch ( cpsi) is not indicative of
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`a wall flow monolith. Amendment, p. 11; Dettling Decl., ~ 24; Patchett Decl., ~ 19. This
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`- 8-
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`BASF-2005.011
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`argument is completely undermined by the fact that the '597 patent itself acknowledges that wall
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`flow monoliths have cell densities of 100 to 400 cpsi. '597 patent, col. 9, 11. 2-4. Indeed, Dr.
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`Dettling does not assert that wall flow monoliths with a cell density of 400 cpsi were not known,
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`but rather only ''not common." Dettling Decl., ~ 24. It should also be noted that the 400 cpsi
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`substrate in Schafer-Sindlinger is merely an example. See Schafer-Sindlinger, para. [0038].
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`Schafer-Sindlinger does not indicate that the 400 cpsi density is a requirement for the substrate,
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`nor does the reference indicate that the substrate must have some minimum cell density.
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`In sum, one of ordinary skill in the art would not have understood Schafer-Sindlinger to
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`preclude the use of a wall flow filter as the honeycomb structure that supports the SCR catalyst.
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`And as such, Schafer-Sindlinger does not teach away from the use of the SCR catalyst coated
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`filter such as the filer taught by Ohno.
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`2.
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`A "Washcoat" and a "Slurrv Loaded Washcoat" Means a Coating
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`For the reasons discussed above, the present amendment with the term "slurry loaded
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`washcoat" should not be entered. If the amendment is entered, however, Requester notes that the
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`proper interpretation of the term "slurry loaded washcoat" is merely a "coating" with respect to
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`the structural feature of this term. The process by which the coating is applied does not
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`distinguish the prior art.
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`The ACP, upon examination of the intrinsic record ofthe '597 patent, properly finds that
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`the structural feature imparted by the product by process phrase "washcoat" is a coating. ACP,
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`pp. 4-5. This finding is consistent with how one of ordinary skill in the art would understand the
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`term. Second Blakeman Decl. (E), ~ 6.
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`In attempting to show that Ohno does not teach the claimed coating, the Patent Owner
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`argues that the intrinsic record ofthe '597 patent necessitates a more precise definition of
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`"washcoat," and further, and that the intrinsic record of the patent also necessitates a more
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`precise definition of the now claimed "slurry loaded washcoat." Amendment, pp. 12-16. To
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`support this argument, the Patent Owner asserts that washcoat is consistently used in the
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`specification of the patent, and that the specification references such a wash coat being formed by
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`a slurry more than twenty times. Amendment, p. 13; Farrauto Decl., ~~ 13, 24.
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`The Patent Owner has inaccurately described the specification of the '597 patent. To
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`begin with, the specification of the '597 patent never uses the term "slurry loaded washcoat." In
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`fact, contrary to the Patent Owner's assertion, there is not even a "consistent use" of the term
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`- 9-
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`BASF-2005.012
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`

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`washcoat in the '597 patent. Instead, there is but one reference to a "washcoat" at col. 6, 1. 46,
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`and in this paragraph of the '597 patent, there is no mention of a slurry, or slurry loading. On the
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`other hand, when discussing a "slurry," the '597 patent merely describes the slurry as forming a
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`coating on the substrate. See, e.g., col. 10, ll. 4-7 ("To coat the wall flow substrates with the
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`SCR catalyst composition, the substrates are immersed vertically in a portion of the catalyst
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`slurry such that the top of the substrate is located just above the surface of the slurry."); col. 12,
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`ll. 36-42 ("The wall flow substrate was: (1) dipped into the slurry to a depth sufficient to coat the
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`channels of the substrate along the entire axial length of the substrate from one direction; (2) air(cid:173)
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`knifed the substrate from the side opposite the coating direction (i.e., the dry side); (3) vacuumed
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`from the coated side[.]") (Emphasis added). What is clear from the specification of the '597
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`patent is that the only structural feature impmied by the terms ''washcoat" or "slurry loaded
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`washcoat" is a coating on the filter.
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`In view of the lack of any evidence in the specification and prosecution history for some
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`special meaning for the terms ''washcoat" or "slurry loaded washcoat," the Patent Owner's
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`arguments with respect to the terms are mainly based on extrinsic evidence. See Amendment,
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`pp. 13-16; Farrauto Decl., ~~ 22-23. Yet, even with references to extrinsic evidence the Patent
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`Owner's arguments fail to show that the terms necessarily impart a structural feature that is
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`something other than a "coating," or that an interpretation of the terms as being a "coating" is
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`unreasonable. Dr. Farrauto cites page 19 of Heck, R.M. et al. "Catalytic Air Pollution Control"
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`(2d ed. 2002) (Heck) as indicating that a washcoat has a definition of "a slurry loaded layer of
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`oxide particles held in a liquid suspension that is subsequently dried." Farrauto Decl., ~ 22. But
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`the discussion cited by Dr. Farrauto says nothing of the soti, and does not reference slurry loaded
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`layer of oxide particles at all. Instead, page 19 of Heck merely shows a particular example of
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`double washcoat on the walls of a monolith, and describes how the gases interact through the
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`catalytic coating. Heck, pp. 18-19. What is shown in Figure 2.2 o