UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`09/07/2011
`
`951001,744.....r I
`Cf.. "7 I (JOI; ;> '1 '1-
`'1~ 8 n
`05/14/2014
`7590
`Servilla Whitney LLC (Administrative Proceedings)
`33 Wood Avenue South
`Second Floor, Suite 210
`lselin, NJ 08830
`
`7,902,107
`
`04119.000300.36
`
`4832
`
`EXAMINER
`
`LOPEZ, CARLOS N
`
`ART UNIT
`
`3991
`
`MAIL DATE
`
`05/14/2014
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`BASF-2007.001
`
`

`
`Transmittal of Communication to
`Third Party Requester
`Inter Part.es Reexamination
`
`Control No.
`
`Patent Under Reexamination
`
`951001,144 r'lfjlJ"~gff 1,902101
`Examiner
`Art Unit
`
`CARLOS LOPEZ
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. -·
`
`3991
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) ----.,
`
`Raymond R. Mandra
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104-3800
`
`MAILED
`
`MAY f 4 2014
`
`CENTRAL REEXAMINATION UNIT
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`PaperNo.20140218
`
`BASF-2007.002
`
`

`
`UNITED ST A TES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`02/15/2012
`
`951001,894 -t-: h J
`'?:J/t>ot, ?.,.,.
`05/I4/20I4
`7590
`I3872
`Servilla Whitney LLC (Administrative Proceedings)
`33 Wood Avenue South
`Second Floor, Suite 210
`Iselin, NJ 08830
`
`7,902,107 82
`
`H06 I 0.0506/P506-RE
`
`7108
`
`EXAMINER
`
`LOPEZ, CARLOS N
`
`ART UNIT
`
`399I
`
`MAIL DATE
`
`05/14/2014
`
`PAPER NUMBER
`
`DELIVERY' MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`BASF-2007.003
`
`

`
`Transmittal of Communication to
`Third Party Requester
`Inter Partes Reexamination
`
`Control No.
`95/001,744 ..f'lffl/101. ~1'/
`Examiner
`
`Patent Under Reexamination
`
`7,902,107
`Art Unit
`
`CARLOS LOPEZ
`•• The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. ••
`
`3991
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Stephen A. Soften
`Dickstein Shapiro LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
`
`MAILED
`MAY 14 2014
`
`CENTRAL REEXAMINATION UNIT
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20140218
`
`BASF-2007.004
`
`

`
`ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`95/001,744 + 95/001,894
`Examiner
`
`7,902, 107
`Art Unit
`
`CARLOS LOPEZ
`
`3991
`
`Control No.
`
`Patent Under Reexamination
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 7/3/2012. 7/13/12.10/19/12.6/27/13
`Third Party(ies) on 8/2/12.8/10/12. 5/10/13
`
`Patent owner may once file a submission under 37 CFR 1.951 (a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951 (b) within 30-days (not extendable- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Offi_ce action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. D Notice of References Cited by Examiner, PT0-892
`2. [8] Information Disclosure Citation, PTO/SB/08
`3.0 __
`
`PART II. SUMMARY OF ACTION:
`1 a. [8] Claims 1.3-21.23-34.36 and 37 are subject to reexamination.
`1 b. D Claims __ are not subject to reexamination.
`[8] Claims 2. 22.35 have been canceled.
`2.
`3. D Claims __ are confirmed. [Unamended patent claims]
`4. [8] Claims 1.3-21.23-34.36 and 37 are patentable. [Amended or new claims]
`5. D Claims __ are rejected.
`6. D Claims __ are objected to.
`D are acceptable D are not acceptable.
`7. D The drawings filed on __
`8 D The drawing correction request filed on __ is:
`approved. D disapproved.
`9 D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`D been received. D not been received.
`D been filed in Application/Control No __
`10. D Other __
`
`U.S. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`Paper No. 20140218
`
`BASF-2007.005
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 2
`
`Inter Partes Reexamination
`Action Closing Prosecution (ACP)
`
`Procedural History
`
`. 95/001 ,744
`
`On 10/7/2011:
`
`A request for inter partes reexamination of claims 1-36 of United
`States Patent Number 7,902, 107 to Patchett et al (hereinafter "the
`'107 Patent"), was filed by a third party having control number 95/
`001,744.
`
`On 12/1 /201-1:
`
`An order granting the reexamination request and a first office action
`on the merits was mailed.
`
`On2/1/2012:.
`
`Patent Owner timely filed a response to the first office action.
`
`On 3/2/2012:
`
`Third Party Requester filed its response on 3/2/12 and petitioned to
`waive the page limit of C.F.R 1.943(b).
`
`On 5/3/2012:
`
`An action closing prosecution (ACP) was mailed.
`
`On 5fi/ 2012:
`
`The Patent owner filed a petition under 37 C.F.R §1.181(a) and
`request for extension of time. ·
`
`On 5/9/2012:
`
`Extension of time requested by the patent owner on 5n/2012 was
`granted.
`·
`
`On 5/24/2012:
`
`The third party requester petition filed on 3/2/2012 was dismissed.
`
`On 7/3/2012:
`
`Patent Owner filed comments to the ACP mailed on 5/3/2012 and a
`petition to waive the page limit of C.F.R 1.943(b)
`
`On 8/2/2012:
`
`Third Party filed comments after ACP.
`
`On 8/21/2012:
`
`The Patent owner petition under 37 C.F.R §1.181 (a) filed on
`5/7/2012 was denied.
`
`On 8/31 /2012:
`
`Patent Owner petitions under 37 C.F.R §1.182 to expunge
`evidence submitted by the third party.
`
`BASF-2007.006
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 3
`
`On 9/26/2012:
`
`Third Party files an opposition to the petition to expunge filed by the
`Patent Owner on 8/31/2012.
`
`On 10/12/2012:
`
`The Patent Owner petition to waive the page limit of C.F.R 1.943(b)
`was granted.
`
`On 10/19/2012:
`
`Patent Owner files a petition to submit supplemental amendment
`under 37 C.F.R §1.183 and files a second Patent Owner
`comments.
`
`On 4/11/2013:
`
`Patent Owner petition to submit supplemental amendment under 37
`C.F.R §1.183 was granted.
`~
`
`On 4/22/2013:
`
`Patent Owner petition filed on 8/31/2012 under 37 C.F.R §1.182 to
`expunge evidence submitted by the third party and third party's
`opposition to expunge filed on 9/26/2012 were dismissed.
`
`On 5/10/2013:
`
`Third Party filed comments to the supplemental amendment filed by
`the-Patent Owner on 4/11/2013.
`
`On 5/28/2013:
`
`A non-final office.action and a sua spon_te decision to merge
`95/001,744 with 95/001,894 were mailed.
`
`On 6/27/2013:
`
`95/001,894
`
`On 2/15/2012:
`
`The Patent Owner filed a response to the 5/28/2013 non-final office
`action providing an amendment to the claims (housekeeping
`amendment).
`
`A request, having control number 95/001,894, for inter partes
`reexamination of claims 1-36 of United States Patent Number
`7,902, 107 to Patchett et al (hereinafter "the '107 Patent"), was filed
`by a third party requester Haldor- Topsoe A/S Denmark ("Topsoe").
`
`On 5/9/2012:
`
`An order granting the reexamination request and a first office action
`on the merits was mailed.
`·
`
`On 5/17/2012:
`
`The Patent Owner files a petition under 37 C. F. R § 1.182 to merge
`the 95/001,744 and 95/001,894 proceedings.
`
`On 61201 2012:
`
`The Patent owner filed a request for extension of time.
`
`BASF-2007.007
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`o·n 6/21/2012:
`
`Extension of time requested by the patent owner on 6/20/2012 was
`granted.
`
`Page 4
`
`On 7/3/2012:
`
`The Patent Owner's petition under 37 C.F.R §1.182 to merge the
`95/001,744 and 95/001,894 proceedings is dismissed pending
`subject to further consideration when no response is outstanding in
`the 95/001,894 proceeding.
`
`On 7/13/2012:
`
`Patent Owner timely filed a response to the first office action mailed
`on 5/9/2012 and filed a petition under C.F.R §1.943(b).
`
`On 8/10/2012:
`
`Third Party Requester filed its response to Patent Owner's
`7/13/2012 response.
`
`On 10/16/2012:
`
`Patent Owner petition under C.F.R §1.943(b) filed on 7/13/2012
`was granted.
`
`On 5/28/2013:
`
`A non-final office action and a sua sponte decision to merge
`95/001,744 with 95/001,894 were mailed.
`
`On 6/27/2013:
`
`The Patent Owner filed a response to the 5/28/2013 non-final office
`action providing an amendment to the claims (housekeeping
`amendment).
`
`Evidence Relied Upon
`
`1. U.S. Patent No. 5,516,497
`2. U.S. Patent Application Pub. No. 2003/0101718 (Pfeifer)
`3. WO 02/26351
`4. Japanese Patent Publication No. JP 09-173866
`5. Japanese Patent Publication No. JP 1997-220423
`6. European Patent Application Publication No. EP 0766993A2
`7. Heck, R.M. et al., ""Catalytic Air Pollution Control," (2d ed. 2002) (Heck), pp. 204-208
`8. JP 2002-361047 (12/17/2002) to Akama et al.
`9. WO 02/026351 (04/04/2002) to Ohno
`10. K. Nakatani et al.,"Simultaneous PM and NOx Reduction System for Diesel
`Engines,"Society of Automotive Engineers, 2002 (hereinafter "Nakatani").
`11. U.S. Pat. No. 5,516,497 to Speronello et al. (hereinafter "Speronello")
`
`BASF-2007.008
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 5
`
`12. Hashimoto, S. et al., "SiC and Cordierite Diesel Particulate Filters Designed for Low
`Pressure Drop and Catalyzed, Uncatalyzed Systems," SAE Technical Paper Series,
`2002-01-0322 (Mar. 2002) ("Hashimoto")
`
`Scope of Claims
`
`In reexamination, patent claims are construed broadly. In re Yamamoto, 740 F.2d
`
`1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984) (claims given "their broadest
`
`reasonable interpretation consistent with the specification").
`
`The '107 Patent is drawn to a catalyst article for the treatment of emission.
`
`Representative of the claimed invention are independent Claims 1, 18 and 21 claiming
`
`the following:
`
`1. (Currently Amended) A catalyst article consisting essentially of a wall flow
`
`monolith and catalytic material, wherein the wall flow monolith has a plurality of
`
`longitudinally extending passages formed by longitudinally extending walls bounding
`
`and defining said passages, wherein the passages comprise inlet passages having an
`
`open inlet end and a closed outlet end, and outlet passages having a closed inlet end
`
`and an open outlet end, and the wall flow monolith contains catalytic material
`
`comprising a slurry loaded washcoat of an SCR catalyst composition including a
`
`zeolite and a base metal component that permeates the walls at a loading up to 2.4
`
`g/in. 3 effective to convert a NOx component to nitrogen through selective catalytic
`
`reduction with ammonia.
`
`18. A catalyst article consisting essentially of a wall flow monolith and catalytic
`
`material, wherein the wall flow monolith has a plurality of longitudinally extending
`
`passages formed by longitudinally extending walls bounding and defining said
`
`BASF-2007.009
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 6
`
`passages, wherein the passages comprise inlet passages having an open inlet end and
`
`a closed outlet end, and outlet passages having a closed inlet end and an open outlet
`
`end, wherein the wall flow monolith contains the catalyst material comprising a slurry
`
`loaded washcoat of an SCR catalyst composition including a zeolite and a base
`
`·metal component that permeates the walls at a concentration of at least 1.3 g/in. 3
`
`effective to convert a NOx component to nitrogen through selective catalytic
`
`recfuction with ammonia; wherein the wall flow monolith has a wall porosity of at least
`
`50% with an average pore size of at least 5 microns.
`
`21. A catalyst article consisting essentially of a wall flow monolith and catalytic
`
`material, wherein the wall flow monolith has a plurality of longitudinally extending
`
`passages formed by longitudinally extending walls bounding and defining said
`
`passages, wherein the passages comprise inlet passages having an open inlet end and
`
`a closed outlet end, and outlet passages having a closed inlet end and an open outlet
`
`end, and the wall flow monolith contains the catalytic material comprising a washcoat
`
`of an SCR catalyst composition that permeates the walls.
`
`The phrase "permeates" means that the "catalyst composition is dispersed
`
`throughout the wall of the substrate. See '107 Patent at col. 10, II. 5-10. Accordingly,
`
`catalyst that penetrates the claimed wall flow monolith is deemed as permeating the
`
`wall flow monolith. See also col. 9, II. 54-55 of the '107 Patent describing the claimed
`
`wall as "the wall itself may consist all, or in part of the catalytic material."
`
`BASF-2007.010
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 7
`
`In regards to the phrase "slurry loaded washcoat," col. 9, I. 59-col. 10, 1.9 of the
`
`'107 patent to shows that "To coat a wall flow substrate with the SCR catalyst. .. " a
`
`slurry contacts the wall flow substrate. The '107 patent at col. 10, 1.11, describes the
`
`slurry contacted flow substrates as "The coated substrates ... " Accordingly, the
`
`structural feature imparted by the product-by-process phrase "slurry loaded washcoat"
`
`is deemed as a coating.
`
`Claim Rejections - 35 USC§ 102and103
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless -
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351 (a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21 (2)
`of such treaty in the English language.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a ·
`person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived
`by the manner in which the invention was made.
`
`BASF-2007.011
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 8
`
`Ground 1-Not Adopted
`
`The '1744 requester proposed rejecting claims 21 and 36 under 35 U.S.C. 102(b)
`as being anticipated by WO 02/26351(0hno), wherein reference will be made to
`the certified translation of Ohno.
`
`This rejection is not adopted for following reasons:
`
`The Patent Owner amendment filed on 7/6/2012, overcomes the proposed
`
`rejection of claims 21 and 36. because Ohno alone does not disclose an SCR catalyst
`
`composition that includes a zeolite and a base metal.
`
`\.
`
`Ground 2-Not Adopted
`
`The '1744 requester proposed rejecting claims 1-20 and 23-34 under 35 U.S.C.
`103(a) as being unpatentable over Ohno in view of U.S. Patent No. 5,516,497
`(Speronello ).
`
`This rejection is not adopted for following reasons:
`
`Newly amended claims 1 and 18 now require that the SCR catalyst be comprised
`
`of a two component system having a zeolite and a base metal component and that SCR
`
`catalyst is effective to "convert a NOx component to nitrogen through selective catalytic
`
`reduction with ammonia."
`
`Ohno at page 28 notes the following:
`
`[E]ven in an oxidized atmosphere such as the diesel exhaust gas, if it carried a
`NOx selective reduction catalyst component that can deoxidize NOx or an
`· occlusion catalyst component, it would be possible to deoxidize NOx.
`(Emphasis added)
`
`This shows that Ohno seeks to have a component of an SCR catalyst not
`
`necessarily a complete SCR catalyst composition. Accordingly, Ohno is teaching away
`
`from using an. SCR composition rather only using a component of an SCR catalyst
`
`BASF-2007.012
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 9
`
`composition. Furthermore, the prior art provides no reasonable expectation of success
`
`to use a complete SCR catalyst composition that comprises a zeolite and a base metal
`
`as instantly claimed because Ohno is only suggesting the use of an SCR component
`
`not a complete SCR catalyst composition.
`
`Accordingly, taking the teachings of Ohno as whole, Ohno is merely teaching the
`
`use of an SCR component to permeate the walls of wall flow monolith (no evidence to
`
`use a complete SCR catalyst that permeates the walls of the wall flow monolith) and
`
`does not provide reasonable expectation of success to use an SCR catalyst
`
`composition that comprises··a zeolite.and a base metal composition that permeates the
`
`walls of a wall flow monolith as instantly claimed.
`
`Ground 3-Not Adopted
`
`The '1744 requester proposes rejecting claims 1, 21-23. 35 and 36 under 35 U.S.C.
`102(b) as being anticipated by JP 1997-220423A (Nakayama).
`
`This rejection is not adopted for following reasons:
`
`Soot filters trap particulate soot from the exhaust and burn the soot using a
`
`catalyst that lowers the soot combustion temperature. See '107 Patent at col. 2, II. 5-32.
`
`A SCR catalyst functions by reducing NOx with ammonia to N2. See '107 Patent at col.
`
`2, II. 33~46.
`
`Nakayama's teachings are drawn to a catalyst for soot not a SCR catalyst for the
`
`reduction of NOx to N2. See Nakayama at paragraph 1. The request cites U.S Patent
`
`No. 2,975,025 to show that Pt catalyst has been found to provide SCR for the reduction
`
`of oxides of nitrogen. See request page 36. However, the Pt catalyst found in the soot
`
`BASF-2007.013
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 10
`
`filter of Nakayama is used to lower the combustion temperature of the soot particulates.
`
`See Nakayama at paragraph 15. See also U.S. Patent 6,928,806 (Tennison) providing
`
`a soot filter 15 using a Pt catalyst. Tennison col. 4, II. 30-38. Thus, both Nakayama and
`
`Tennison show that Pt is normally associated with soot filtration not NOx reduction.
`
`Furthermore, there is no teaching, suggestion or motivation that presence of a Pt
`
`catalyst constitutes an SCR composition. Thus, Nakayama does not anticipate claims
`
`1, 21-23, and 35-36.
`
`Grounds 4 and 5- Not Adopted
`
`The '1744 requester proposes rejecting claims 21, 22, 35 and 36under 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).
`
`The '1744 requesters also proposes rejecting claims 1-19 and 23-34 under 35
`U.S.C. § 103(a) as being obvious Araki in view of Heck and Speronello.
`
`This rejection is not adopted for following reasons:
`
`The proposed modification of Araki with the teachings of Heck would change the
`
`principle of operation of Araki. As noted above, soot filters, as described by the '107
`
`Patent, function by trapping particulate soot from the exhaust and burning the soot
`_,
`
`.
`
`using a catalyst that lowers the soot combustion temperature. Araki discloses a soot
`
`filter having NOx adsorbers. See Araki col. 1, II. 1-15 and Araki's fourth embodiment at
`
`col.3, II. 20-41. The NOx adsorber functions by adsorbing NOx at low temperatures and
`
`then releasing the NOx at high temperatures i~ order to accelerate the burning of
`
`particulate soot. Id. Heck would m·odify Araki by replacing the NOx adsorbers with
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`BASF-2007.014
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`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 11
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`SCR catalyst that would convert NOx to nitrogen and water; two elements that would
`
`not reasonably be expected to accelerate the burning of particulates as sought by Araki.
`
`Accordingly, teachings of Araki in view of Heck are not sufficient to render the
`
`claims prima facie obvious. See MPEP 2143.01 (If the proposed modification or
`
`combination of the prior art would change the principle of operation of the prior art
`
`invention being modified, then the teachings of the references are not sufficient to
`
`render the claims prima facie obvious).
`
`Additionally, as discussed in ground 1 above, Speronello is drawn to SCR
`
`catalyst. A person of ordinary skill in the art would not look to the concentrations of
`
`SCR catalyst as guidance to the concentration of soot catalyst disclosed by Araki.
`
`Ground 6- Not Adopted
`
`The '1744 requester proposes rejecting claims 1-36 under 35 U.S.C. § 103(a) as
`being obvious over Ohno in view of Japanese Patent Publication No. JP 09-
`173866 (Nakanishi) and Speronello.
`
`This rejection is not adopted for following reasons:
`
`The teachings of Ohno are discussed supra. Ohno is silent to disclosing the
`
`concentration of the SCR catalyst and the type of SCR catalyst used. The request
`
`relies on Speronello to teach that it would be "obvious to include the SCR catalyst of
`
`Speronello in the wall flow filter of Ohno." See request at page 61. Nakanishi is relied
`
`upon to teach the following as noted in page 59 of the request:
`
`Nakanishi clearly teaches that a person of ordinary skill could successfully apply
`a catalytic material in the amount of up to 2.95 g/in3 to a wall flow filter without an
`undesirable loss in pressure.
`
`BASF-2007.015
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`

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`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
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`Page 12
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`However, Nakanishi's teachings are drawn to a catalyst that filters out soot not a
`
`SCR catalyst that converts NOx to N2. See Nakanishi paragraphs 1 and 15. Soot filters
`
`function by trapping particulate soot from the exhaust and. burning the soot using a
`
`catalyst that lowers the soot combustion temperature. See '107 Patent at col. 2, II. 5-32.
`
`Accordingly, Ohno in view of Nakanishi and Speronello fails to provide a P.rima
`
`facie case of obviousness because a person of ordinary skill in the art in modifying a
`
`filter having a SCR catalyst would not on its face, use the teachings pertaining to a
`
`catalyst for soot removal.
`
`Ground 7- Not Adopted
`
`The '1744 requester proposes rejecting claims 1-2. 18, 20-23, and 35 under 35
`U.S.C. 102(b) as being anticipated by Nakanishi.
`
`This rejection is not adopted for following reasons:
`
`Soot filters trap particulate soot from the exhaust and burn the soot using a
`
`catalyst that lowers the soot combustion temperature. See '107 Patent at col. 2, II. 5-32.
`
`A SCR catalyst functions by reducing NOx with ammonia to N2. See '597 Patent at col.
`
`2, II. 27-40.
`
`Nak,anishi's teachings are drawn to a catalyst that filters out soot not a SCR
`
`catalyst that converts NOx to N2 . See Nakanishi paragraphs 1 and 15. The request
`
`cites U.S Patent No. 2,975,025 to show that Pt catalyst has been found to provide SCR
`
`for the reduction of oxides of nitrogen. See request page 7 4. However, the Pt catalyst
`
`found in the soot filter of Nakanishi is being used to lower the burning temperature of
`
`the soot particulates. See Nakanishi paragraph 15. Additionally, the art conventionally
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`BASF-2007.016
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`

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`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
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`Page 13
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`uses Pt catalyst for soot removal not NOx conversion. For example U.S. Patent
`
`6,928,806 (Tennison) provides a soot filter 15 using a Pt catalyst. Tennison col. 4, II.
`
`3Q-38. Thus, both Nakanishi and Tennison show that Pt is normally associated with
`
`soot filtration not NOx reduction. Furthermore, there is no.teaching, suggestion or
`
`motivation that presence of a Pt catalyst constitutes an SCR composition. Thus,
`
`Nakanishi does not anticipate claims 1-2, 18, 20-23, and 35.
`
`Ground 8- Not Adopted
`
`The '1744 requester proposes rejecting claims 3-17, 19, and 24-34 under 35 U.S.C.
`102(b) as being unpatentable over Nakanishi in view of Speronello.
`
`This rejection is not adopted for following reasons:
`
`As noted in Ground 7 above, the teachings of Nakanishi do not meet the
`
`limitations of claims 1, 18 and 21 from which claims 3-17, 19, and 24-34 depend.
`
`Additionally, as discussed in ground 1 above, Speronello is drawn to SCR
`
`catalyst. In modifying Nakanishi's soot catalyst, a person of ordinary skill in the art
`
`would not look to teachings relating to SCR catalysts as taught by Speronello, for the
`
`reasons previously mentioned.
`
`Ground 9- Not Adopted
`
`The '1744 requester proposes rejecting claim 21 under 35 U.S.C. 102(e) as being
`anticipated by U.S Patent Application Pub. No. 2003/0101718 (Pfeifer).
`
`This proposed rejection is not adopted because the Patent Owner amendment
`
`filed on February 1, 2012, overcomes this proposed rejection for the reasons stated in
`
`the ACP mailed on 5/3/2012.
`
`BASF-2007.017
`
`

`
`~pplication/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 14
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`. Ground 10- Not Adopted.
`
`The '1744 requester proposes rejecting claims 1-4, 16-20. 22-23, and 35 under 35
`U.S.C. 102(e) as being unpatentable over Pfeifer in view of Nakanishi.
`
`This rejection is not adopted for following reasons:
`
`The teachings of Pfeifer's SCR catalyst are discussed supra. Nakanishi is relied
`
`to teach that the wall flow monolith has a wall porosity of at least 50% with an average
`
`pore size of at least 5 microns and that a person of ordinary skill in the art can apply
`
`catalytic material in the amount of 1.02g/in3
`
`. See request at pages 91-94.
`
`As noted above, Nakanishi's teachings are drawn to a catalyst that filters out soot
`
`not a SCR catalyst that converts NOx to N2. See Nakanishi paragraphs 1 and 15. Soot
`
`filters function by trapping particulate soot from the exhaust and burning the soot using
`
`a catalyst that lowers the soot combustion temperature. See '107 Patent at col. 2, II. 5-
`
`32.
`
`Accordingly, Pfeifer in view of Nakanishi fails to provide a prima facie case of
`
`obviousness because a person of ordinary skill in the art in modifying an SCR catalyst
`
`would not on its face, use the teachings pertaining to a catalyst for soot removal.
`
`Ground 11- Not Adopted
`
`The '1744 requester proposes rejecting claims 5-15 and 24-34 under 35 U.S.C.
`103(a) as being unpatentable over Pfeifer in view of Nakanishi and Speronello.
`
`This rejection is not adopted for following reasons:
`
`BASF-2007.018
`
`

`
`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 15
`
`Regarding the proposed rejection of claims 5~15 and 27-29, as noted in Ground
`
`10 above, the teachings of Pfeifer in view of Nakanishi do not meet the limitations of
`
`claims 1, and 18 from which claims 5-15 and 27-29 depend.
`
`Regarding the proposed rejection of claims 24-26 and 30-34, both Pfeifer and
`
`I
`
`.
`
`Speronello are drawn to SCR catalyst. In contrast, Nakanishi's teachings are drawn to
`
`a catalyst that filters out soot not a SCR catalyst that converts NOx to N2. See
`
`Nakanishi paragraphs 1 and 15.
`
`Accordingly, Pfeifer in view of Nakanishi and Speronello fails to provide a prima
`
`facie case of obviousness because a person of ordinary skill in the art in modifying a
`
`filter having a SCR catalyst would not on its face, use the teachings pertaining to a
`
`catalyst for soot removal.
`
`It also noted that claims 24-25 and 30-34 do not require a specific SCR content.
`
`Ground 12-Not Adopted
`
`The '1744 and '1894 requesters proposed rejecting claims 1, 3-4, 15.;21, 23 and 36
`
`under 35 U.S.C. 103(a) as being unpatentable over Hashimoto, S. et al., "SiC and
`
`Cordierite Diesel Particulate Filters Designed for Low Pressure Drop and
`
`Catalyzed, Uncatalyzed Systems," SAE Technical Paper Series, 2002-01-0322
`
`(Mar. 2002) ("Hashimoto") in view of Ohno.
`
`This rejection is not adopted for following reasons:
`
`The Patent Owner amendment filed on 7/6/2012, overcomes this proposed
`
`rejection because Hashimoto and Ohno do not disclose an SCR catalyst composition
`
`that includes a zeolite and a base metal.
`
`BASF-2007.019
`
`

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`Application/Control Number: 95/001,744 & 95/001,894
`Art Unit: 3991
`
`Page 16
`
`Ground 13-Not Adopted
`
`The '1744 requester proposes rejecting claims 5-15, 24-34 and 37 under 35 U.S.C.
`103(a) as being unpaten'table over Hashimoto in view of Ohno and Speronello.
`
`This rejection is not adopted for following reasons:
`
`Newly amended claims 1, 18 and 21 now require that the SCR catalyst be
`
`comprised of a two component system having a zeolite and a base metal component
`
`and that SCR catalyst is effective to "convert a NOx component to nitrogen through
`
`selective catalytic reduction with ammonia."
`
`Hashimoto teaches the use of a NOx adsorption catalyst but is silent disclosing
`
`the use of an SCR catalyst. Consequently, Ono was cited for its teaching of using an
`
`SCR catalyst within the pores of the filter wall. However, after further consideration,
`
`Ohno is teaching the use of only a component of an SCR catalyst.
`
`Ohno at page 28 notes the following:
`
`[E]ven in an oxidized atmosphere such as the diesel exhaust gas, if it carried a
`NOx selective reduction catalyst component that can deoxidize NOx or an
`occlusion catalyst component, it would be possible to deoxidize NOx.
`(Emphasis added)
`
`This shows