UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________________________
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`
`Petitioners,
`
`v.
`
`BASF CORPORATION,
`
`Patent Owner
`
`______________________________________________________________
`
`Case IPR2015-01266
`
`Patent 9,039,982
`______________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,039,982
`
`
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ................................................................................... iii 
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`BACKGROUND ............................................................................................. 5 
`
`A. 
`
`B. 
`
`C. 
`
`The ’982 Patent ..................................................................................... 5 
`
`Prosecution History and Related Reexaminations .............................. 12 
`
`Overview of the References Cited in the Petition ............................... 15 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Hüthwohl ................................................................................... 15 
`
`Hashimoto ................................................................................. 16 
`
`Speronello ................................................................................. 18 
`
`Teraoka ...................................................................................... 19 
`
`III.  CLAIM CONSTRUCTION .......................................................................... 20 
`
`IV.  THE PETITION SHOULD BE DENIED PURSUANT TO 35 USC §
`325(d) BECAUSE IT RELIES ON ART ALREADY CONSIDERED
`EXTENSIVELY BY THE PATENT OFFICE ............................................. 20 
`
`V. 
`
`INTER PARTES REVIEW SHOULD NOT BE INSTITUTED ................... 25 
`
`A. 
`
`Petitioner Has Not Demonstrated A Prima Facie Case of
`Obviousness Based On The Combination Of Hüthwohl,
`Speronello, Hashimoto, and Teraoka .................................................. 25 
`
`1. 
`
`Hüthwohl Would Not Have Guided The Skilled Artisan
`To The Claimed Invention ........................................................ 26 
`
`a. 
`
`There Is No Basis To Rely On Hüthwohl As A
`Primary Reference Because It Omits All Key
`Details Of The Claims .................................................... 27 
`i
`
`
`
`

`
`
`
`b. 
`
`The Limited Teachings Of Hüthwohl Are Contrary
`To The Claimed Invention And Thus Demonstrate
`Nonobviousness .............................................................. 32 
`
`An Ordinarily Skilled Artisan Would Not Have
`Combined Hashimoto And Speronello In Hüthwohl’s
`System ....................................................................................... 34 
`
`The Reliance On Teraoka Confirms That Petitioner’s
`Case Is A Hindsight Reconstruction ......................................... 44 
`
`2. 
`
`3. 
`
`B. 
`
`Secondary Considerations Confirm That The ’982 Patent Is
`Nonobvious ......................................................................................... 47 
`
`1. 
`
`2. 
`
`3. 
`
`Long Felt Need For The Claimed Invention After
`Announcement Of The EU Emissions Standards
`Demonstrates Nonobviousness ................................................. 48 
`
`Skepticism For The Approach Followed In The ’982
`Patent Followed By Unexpected Results Demonstrates
`Nonobviousness ........................................................................ 51 
`
`Industry Praise For The Claimed Invention Demonstrates
`Nonobviousness ........................................................................ 55 
`
`C. 
`
`There Is No Evidence That Others Achieved The Invention
`Claimed In The ’982 Patent ................................................................ 56 
`
`VI.  CONCLUSION .............................................................................................. 60 
`
`
`
`
`
`ii
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases 
`Apple, Inc. et al. v. Memory Integrity, LLC,
`IPR2015-00172, Paper No. 16 (May 11, 2015) .................................................. 43
`
`Continental Auto. Sys., Inc. v. Wasica Finance GmbH,
`IPR/2014-01454, Paper No. 14 (Feb. 13, 2015) ................................................. 22
`
`Daifuku Co., Ltd. et al., v. Murata Machinery, Ltd.,
`IPR2015-00084, Paper No. 10 (May 4, 2015) .................................................... 43
`
`Grain Processing Corp. v. Am.-Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................ 30
`
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 31
`
`In re Gorman,
`933 F.2d 982 (Fed. Cir. 1991) ..................................................................... 30, 31
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 26
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .......................................................................... 30
`
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ............................................................................ 33
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 25
`
`InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .......................................................................... 43
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ........................................................................... 5, 26, 43, 47
`
`iii
`
`

`
`
`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) ....................................................... 29, 30, 42, 51
`
`Masterimage 3D, Inc., v. Reald, Inc.,
`IPR2015-00036, Paper No. 16 (April 22, 2015) ................................................. 44
`
`Nanoco Techs., Ltd. v. MIT,
`Case IPR2015-00532, Paper 8 (PTAB Jul. 27, 2015) ........................................ 41
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper 14 (July 8, 2014) ........................................................... 20
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013) .......................................................................... 47
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 48
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01080, Paper No. 17 (Oct. 31, 2014) .................................................. 23
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00454, Paper No. 12 (Sep. 25, 2013) .................................................. 23
`
`Statutes 
`
`35 U.S.C. § 103 ..................................................................................... 12, 13, 21, 43
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 325(d) ................................................................................ 14, 20, 23, 24
`
`37 C.F.R. § 1.132 ..................................................................................................... 13
`
`37 C.F.R. § 42.100(b) .............................................................................................. 20
`
`37 C.F.R. § 42.104(b)(3) .......................................................................................... 20
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.65(a) ................................................................................................. 31
`
`iv
`
`

`
`
`Other Authorities 
`
`157 Cong. Rec. S1042 (daily ed. Mar. 1, 2011) (Statement of Sen. Kyl) ............... 24
`
`v
`
`
`
`

`
`
`
`
`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
`
`Exhibit 2004
`
`Exhibit 2005
`
`Exhibit 2006
`
`Exhibit 2007
`
`Exhibit 2008
`
`Exhibit 2009
`
`Exhibit 2010
`
`Exhibit 2011
`
`PATENT OWNER’S TABLE OF EXHIBITS
`
`August 13, 2013, Right of Appeal Notice (RAN),
`Reexamination Control Number 95/001,745
`
`October 30, 2014, Right of Appeal Notice (RAN),
`Reexamination Control Number 95/001,744
`
`September 7, 2011, Request for Inter Partes Reexamination,
`(U.S.P.N. 7,229,597, Reexam Control No. 95/001,745)
`
`March 9, 2012 , Third Party Comments,
`(U.S.P.N. 7,229,597, Reexam Control No. 95/001,745)
`
`November 15, 2012, Third Party Comments,
`(U.S.P.N. 7,229,597, Reexam Control No. 95/001,745)
`
`May 3, 2012, Action Closing Prosecution,
`(U.S.P.N. 7,902,107, Reexam Control No. 95/001,744)
`
`May 14, 2014, Action Closing Prosecution,
`(U.S.P.N. 7,902,107, Reexam Control No. 95/001,744)
`
`EPA’s Climate Change, Understanding Global Warming
`Potentials
`
`Todd Ballinger et al., Evaluation of SCR Catalyst Technology
`on Diesel Particulate Filters, SAE International Journal of Fuels
`and Lubricants, Vol. 2, Issue 1, 2009.
`
`Mojghan Naseri et al., Development of SCR on Diesel
`Particulate Filter System for Heavy Duty Applications, SAE
`International Journal of Engines, Vol. 4, Issue 1, April 12, 2011.
`
`Soo-Youl Park et al., A Model Development for Evaluating
`Soot-NOx Interactions in a Blended 2-Way Diesel Particulate
`Filter/Selective Catalytic Reduction, I&EC Research 2012.
`
`Exhibit 2012
`
`Prosecution History for U.S.P.N. 8,899,023
`
`vi
`
`

`
`
`
`Patent Owner BASF Corporation (“Patent Owner” or “BASF”) hereby
`
`respectfully submits its Preliminary Response to Petition for Inter Partes Review
`
`of U.S. Patent No. 9,039,982 (the “Preliminary Response”). This Preliminary
`
`Response is being filed within three months of June 8, 2015, the mailing date of
`
`the Notice of Filing Date accorded to the Petition and thus is timely under
`
`35 U.S.C. § 313 and 37 C.F.R. § 42.107.
`
`I.
`
`INTRODUCTION
`
`Petitioner’s obviousness case for the claims of U.S. Patent No. 9,039,982
`
`(“the ’982 Patent”) requires four different references and relies on arguments and
`
`art that the Patent Office has already considered—and rejected—in multiple
`
`reexamination proceedings of patents related to the ’982 Patent. These facts are
`
`major red flags that the Petition lacks merit. Moreover, Petitioner’s core narrative
`
`that the ’982 Patent was a straightforward response to new environmental
`
`regulations is not supported by the facts. If anything, the circumstances
`
`surrounding the enactment of these new regulations demonstrate long felt need for
`
`the claimed invention, not that it was obvious.
`
`As the Petition explains, in 1998, the EU Environmental Council passed
`
`strict new emission standards for diesel engines. The new standards were set to
`
`take effect starting in 2005, and the automotive industry immediately recognized
`
`that new technical developments would be required. Petitioner acknowledges that
`
`1
`
`

`
`
`there were no “pre-existing answers for complying” with the new standards and
`
`that this presented a “huge challenge” for the industry. Petition at 22-23. Existing
`
`techniques for decreasing emissions necessitated modifications to the engine
`
`design and fuel combustion, such as the use of exhaust gas recirculation and the
`
`use of high pressure fuel injectors. These modifications required compromises in
`
`fuel efficiency, cost, and system durability. While the Petition now contends that
`
`the solution to this problem was obvious and at the fingertips of the industry, the
`
`timeline of events following the EU’s enactment of the new emissions standards
`
`demonstrates otherwise.
`
`Despite the pressure of the impending government standards and the
`
`combined efforts of a mobilized industry, a solution did not promptly emerge.
`
`Rather, it was not until five years later that researchers at BASF provided the
`
`solution, which they described and claimed in the ’982 Patent.1 Proceeding along
`
`several lines of reasoning contrary to conventional wisdom, the BASF research
`
`team combined the following specific characteristics:
`
`1.
`
`A highly porous wall flow monolith filter having a porosity
`from 50% to 60% and an average pore size of from 10 to 25
`microns.
`
`
`1 The ’982 Patent claims priority to U.S. 7,229,597, which was filed on August 5,
`2003. See ’982 Patent [Ex. JM 1001] at 1.
`
`2
`
`

`
`
`
`2.
`
`3.
`
`4.
`
`5.
`
`including a slurry-loaded
`An SCR catalyst composition
`washcoat permeating the walls of the wall flow monolith.
`An amount of catalyst loading on the filter that does not exceed
`2.4 g/in3.
`The use of an SCR catalyst comprised of a zeolite and a base
`metal that is selected from a copper component.
`The simultaneous efficient chemical reduction of NOx and
`oxidation of soot.
`
`Conceding that nobody had identified this solution prior to the BASF team, the
`
`Petition alleges only obviousness. And to formulate an obviousness case for the
`
`independent claims, the Petition requires various teachings from an unlikely
`
`combination of four different references.
`
`Careful analysis of Petitioner’s art and arguments confirms that the Petition
`
`is deficient. The Petition starts by misinterpreting the invention of the ’982 Patent.
`
`According to Petitioner, the “claims of the ’982 patent do nothing more than take
`
`one well-known element from the prior art (a wall flow filter that traps particulate
`
`matter) and combine it with another, similarly well-known element (copper
`
`zeolites that catalyze the reduction of harmful NOx to innocuous nitrogen gas) to
`
`yield predictable results.” Petition at 1. In making this assertion, however,
`
`Petitioner ignores the numerous details set forth in the claims—including the filter
`
`porosity, the coating method, and the amount of coating—that allow one to meet
`
`emission standards without negatively impacting performance. Such details cannot
`3
`
`

`
`
`be ignored because they are the essence of the invention. See, e.g., Graham v.
`
`Jeoffroy Mfg., Inc., 206 F.2d 769, 772 (5th Cir. 1953) (“[I]n determining whether
`
`invention exists in a given device, courts should guard against oversimplification
`
`through a hindsight view of the problem as originally encountered.”).
`
`None of the references relied upon in the Petition come close to disclosing
`
`the claimed combination of key details. Petitioner’s primary reference, Hüthwohl,
`
`does nothing more than suggest the possibility of treating a filter with a catalyst—
`
`using a different technique (impregnation) from what is recited in the claimed
`
`invention (slurry-loaded washcoat). Hüthwohl says nothing about the type of
`
`filter, the parameters of the filter (e.g., pore size and porosity of the filter), or the
`
`type of catalyst used. While the Petition repeatedly asserts that Hüthwohl discloses
`
`a wall flow filter, nowhere is this disclosed in Hüthwohl. Petition at 5, 19, 20, 23-
`
`24. Ultimately, the Petition concedes that Hüthwohl “is silent as to the details of
`
`its SCR catalyst or filter.” Petition at 37.
`
`To find the details claimed in the ’982 Patent, the Petition draws from three
`
`unrelated references—Hashimoto, Speronello, and Teraoka—each of which suffers
`
`from its own deficiencies. The Patent Office has already considered Petitioner’s
`
`arguments regarding the combination of Hashimoto and Speronello in detail, and
`
`has rejected them repeatedly. Far from unlocking the unique combination of
`
`elements recited in the claims of the ’982 Patent, Hashimoto focuses solely on the
`
`4
`
`

`
`
`phenomenon of pressure imbalance in diesel filters. To the extent Hashimoto says
`
`anything about catalysts, it teaches away from the claimed SCR catalyst by
`
`suggesting NOx adsorption catalysts. Similarly, although Speronello discloses the
`
`claimed catalyst, the application of catalysts is on flow through honeycomb
`
`substrates, not wall flow filters.
`
`Petitioner’s contention that the skilled artisan would have proceeded
`
`contrary to the teachings of these references and re-combined their components
`
`violates the basic principle that “a patent composed of several elements is not
`
`proved obvious merely by demonstrating that each of its elements was,
`
`independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 418 (2007). Petitioner’s approach can only be characterized as a hindsight
`
`reconstruction, and Petitioner has failed to demonstrate a reasonable likelihood that
`
`it will show that at least one claim of the ’982 Patent is obvious. This IPR should
`
`not be permitted to proceed any further.
`
`II. BACKGROUND
`A. The ’982 Patent
`The ’982 Patent describes and claims a novel catalytic article for use in
`
`automobile emissions systems. The inventors conceived of and developed the
`
`invention after the EU Environmental Counsel announced stringent new emissions
`
`standards for diesel engines. As the Petition acknowledges, at the time, there were
`
`5
`
`

`
`
`no “pre-existing answers for complying” with the new standards. Petition at 22.
`
`The invention of the ’982 Patent provided this answer, offering a system for
`
`efficiently removing both soot and nitrogen oxides (“NOx”) from vehicle exhaust
`
`across a range of engine operating temperatures in the same device. At the same
`
`time, the system offered durability and the ability to maintain catalytic activity for
`
`long periods of use, without causing a harmful increase in engine backpressure.
`
`Understanding the claimed invention of the ’982 Patent requires an
`
`understanding of the purpose, components, and general design of automobile
`
`exhaust systems. As documented below, the invention lies not in the general
`
`layout of components, but in the specific combination of details that are used in
`
`those components.
`
`“Diesel engine exhaust is a heterogeneous mixture which contains not only
`
`gaseous emissions such as carbon monoxide (‘CO’), unburned hydrocarbons
`
`(‘HC’) and nitrogen oxides (‘NOx’), but also condensed phase materials (liquids
`
`and solids) which constitute the so-called particulates or particulate matter.” Ex.
`
`JM 1001 at 1:25-30. Complying with the new emissions standards required the
`
`simultaneous efficient removal of all of these components from vehicle exhaust.
`
`Various catalysts and filters were known in the art for either converting
`
`these constituents into innocuous compounds or collecting them. For instance,
`
`oxidation catalysts that utilized Pt group metals were used to convert unburned
`
`6
`
`

`
`
`hydrocarbons to CO2 and H2O. Id. at 1:38-40. Such catalysts were commonly
`
`placed “in the exhaust of diesel engines to treat the exhaust before it vents to the
`
`atmosphere.” Id. at 1:45-46. Additionally, for the treatment of NOx, one known
`
`technique relied on the SCR reaction. In this process, a stream of ammonia (NH3)
`
`gas is introduced into the exhaust, which reacts with the NOx to produce N2 and
`
`H2O. Id. at 2:41-46. The SCR reaction is termed a reduction reaction, because the
`
`nitrogen atom in the NOx molecule is chemically reduced to nitrogen (N2). Id.
`
`This reaction is in contrast to the oxidation reactions that are used to oxidized the
`
`carbon atoms in CO and hydrocarbons to CO2. Id. at 1:38-43.
`
`Particulate matter is removed from engine exhaust by filters that include
`
`“honeycomb wall flow filters, wound or packed fiber filters, open cell foams,
`
`sintered metal filters, etc.” Id. at 2:16-18. One type of filter structure that had
`
`been known since the early 1980s was the wall flow monolith. As explained in the
`
`’982 Patent, this filter is based on the use of parallel passageways in which “each
`
`passage is blocked at one end of the substrate body, with alternate passages
`
`blocked at opposite end-faces:”
`
`Id. at 8:65-67; id. at Fig. 2.
`
`The exhaust gas passes through tiny pores in the walls that separate the
`7
`
`
`
`

`
`
`passageways through the filter. Below, is a figure depicting the cross section of
`
`the wall flow monolith, with a representative passage way for the exhaust gas
`
`shown by a dotted red line:
`
`
`Id. at Fig. 3 (annotated). Although the exhaust gas can diffuse through the porous
`
`walls and ultimately pass through the filter, particulate matter is collected in the
`
`filter. Over time, this trapped soot begins to clog the filter, leading to a buildup of
`
`backpressure, which negatively impacts engine power and fuel efficiency. Thus,
`
`from time to time, in a process called thermal “filter regeneration,” the particulate
`
`matter must be combusted by heating the filter to a high temperature, often around
`
`700 ºC in the presence of oxygen. See id. at 8:13-19.
`
`
`
`Soot combustion temperatures can be lowered by providing a catalyst
`
`effective in promoting the oxidation of the soot directly or the oxidation of NO to
`
`NO2, the NO2 being a more reactive oxidant than oxygen. See id. at 2:30-35; 4:10-
`
`18. System designs incorporating these catalysts in some cases used separate
`
`substrates for the catalysts.
`
`Those in the art wishing to reduce the overall size of exhaust systems sought
`
`8
`
`

`
`
`to avoid having separate substrates for the various components described above.
`
`To this end, those in the art commonly integrated the filter for particulate matter
`
`with oxidation catalysts by coating the filter with the catalyst. Id. at 2:32-35.
`
`Various techniques, including washcoating and impregnation techniques, were
`
`known in the art for coating filters with the catalysts. However, the problem faced
`
`by the inventors—and the industry as a whole—was combining oxidation and
`
`reduction reactions on the same device while achieving useful reaction rates.
`
`The difficulties were many-fold. For instance, in order to achieve NOx
`
`reduction goals, a sufficient amount of catalyst needed to be loaded on to the filter.
`
`See Ex. JM 1001 at 6:44-46 (“Achieving practical levels of SCR catalyst
`
`composition on the wall flow substrate is important for providing sufficient
`
`catalytic activity to achieve mandated NOx reduction levels….”). Likewise, to
`
`achieve thermal stability and longevity, higher catalyst loadings are required. Id. at
`
`2:67-3:4 (“The gradual loss of the catalytic effectiveness of the compositions that
`
`occurs over time through exposure to certain deleterious components of the
`
`exhaust stream augments the need for higher catalyst loadings of the SCR catalyst
`
`composition.”).
`
`However, at the time of filing, the then-current low porosity filters could not
`
`accommodate larger amounts of catalyst since, as the ’982 Patent explains,
`
`“preparation of coated wall flow soot filters with higher catalyst loadings can lead
`
`9
`
`

`
`
`to unacceptably high back pressure within the exhaust system.” Id. at 3:4-6; see
`
`Ex. BASF-2012.226-228 [’023 FH, ¶¶ 11-13 (Dettling Decl.)].
`
`Additionally, the filter-regeneration process, which combusts the soot and
`
`re-exposes the catalyst, was known to lead to thermal deactivation of the catalyst.
`
`See, e.g., id. at 3:17-21 (“For example, combustion of the soot fraction of the
`
`particulate matter often leads to temperatures above 700° C. Such temperatures
`
`render many commonly used SCR catalyst compositions such as mixed oxides of
`
`vanadium and titanium less catalytically effective.”).
`
`Further, precious metals, such as Pt containing catalysts, which are used for
`
`the oxidation of hydrocarbons and soot, consume ammonia. This is problematic
`
`because, as explained above, ammonia is a reductant that is essential for selectively
`
`reducing NOx using an SCR catalyst. In other words, the typical catalysts used for
`
`hydrocarbon oxidation are incompatible with the reduction reactions occurring on
`
`SCR catalysts. See, e.g., Ex. BASF-2012.209 [’023 FH, ¶ 17 (Patchett Decl.)]
`
`(“As widely recognized in the art and confirmed by the experimental data above,
`
`platinum group metals oxidize ammonia to NOx [which reaction] would consume
`
`the ammonia reductant and generate additional NOx.”); see also Ex. JM 1001 at
`
`4:10-18 (describing a prior art Pt group metal oxidation catalyst for the combustion
`
`of soot that, unlike an SCR catalyst, converts NO to NO2).
`
`The claimed invention of the ’982 Patent resolved these and other issues.
`
`10
`
`

`
`
`Proceeding contrary to conventional wisdom and in the face of stability and
`
`efficiency concerns, the inventors started with a high porosity wall flow monolith
`
`filter. The claims specifically recite a “porosity of from 50% to 60% and an
`
`average pore size of from 10 to 25 microns.” Id. at 15:54-55. Using a washcoating
`
`technique, the filter was then coated with no more than 2.4 g/in3 of a catalyst
`
`consisting specifically of a zeolite loaded with either iron or copper. See id. at
`
`9:66-10:17, 15:57-60. Unexpectedly, despite the high porosity of the filter and
`
`despite the limited amount of coating, the resulting catalytic article provided highly
`
`efficient NOx removal. See, e.g., id. at Table 1. Even more unexpected, the system
`
`also catalyzed the combustion of soot at normal engine operating temperatures
`
`around 350 ºC. See id. at 7:36-38 (“The temperature at which the soot fraction of
`
`the particulate matter combusts is lowered by the presence of the catalyst
`
`composition disposed on the soot filter.”); id. at 14:10-15:35 (describing a real-
`
`world example where the invention offered simultaneous soot combustion and NOx
`
`removal). This allowed for some “passive regeneration” of the filter at
`
`temperatures accessible under normal engine duty cycles, reducing the need for
`
`high-temperature regeneration processes that could melt or damage the filter.
`
`Although the coating was applied to the filter in such a way that it permeated the
`
`pores of the filter, all of these advantages were surprisingly achieved without
`
`exacerbating backpressure issues. See, e.g., id. at 10:10-13; see also Ex. JM 1018
`
`11
`
`

`
`
`at 4-7 [Dettling Decl., ’1744 Reexam] ¶¶ 13-17; Ex. BASF-2012.211, ¶ 21 [’023
`
`Patent FH (Patchett Decl.)] (describing “a single catalyzed filter [with] excellent
`
`soot burning, NOx conversion, filtration efficiency without an unacceptable amount
`
`of backpressure” as “surprising”).
`
`Prosecution History and Related Reexaminations
`
`B.
`Patent Owner filed the application that eventually issued as the ’982 Patent
`
`on September 26, 2014. The application is a continuation of Application No.
`
`13/274,635 (now, U.S. Patent No. 8,899,023 (“the ’023 Patent”)), which is a
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`continuation of Application No. 11/676,798 (“the ’798 Application”), which is a
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`division of U.S. Application No. 10/634,659 that later issued as U.S. Patent No.
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`7,229,597 (“the ’597 Patent”). See Ex. JM 1001 at 1.
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`As a continuation of the ’023 Patent, the Patent Office granted Patent
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`Owner’s request for Track 1 prioritized examination, streamlining prosecution of
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`the ’982 Patent. Ex. JM 1002 at 61. After filing terminal disclaimers to overcome
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`double patenting rejections, (see id. at 139), Patent Owner received a Notice of
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`Allowance on April 17, 2015 (id. at 143), and the ’982 Patent issued on May 26,
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`2015. See Ex. JM 1001 at 1. Because consideration of the prosecution history of
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`the ’023 Patent is highly relevant to any discussion of the ’982 Patent, a short
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`overview of the pertinent parts of the ’023 Patent prosecution history follows:
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`In response to § 103 rejections during prosecution of the ’023 Patent, Patent
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`Owner amended the independent claims of the ’023 Patent to require (1) the wall
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`flow filter to have a porosity between 50%-60% and a pore size from 10 to 25
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`microns, (2) that the slurry-loaded SCR catalytic material be comprised of a
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`washcoat of copper or iron zeolite, and (3) that the catalyst reduce both NOx and
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`oxidize soot, creating a filter with integrated NOx and particulate removal
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`efficiency. See Ex. BASF-2012.137-169 [’023 Patent FH]. Patent Owner
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`submitted no less than seven affidavits from five different declarants under 37
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`C.F.R. § 1.132 containing evidence in support of its arguments and amendments to
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`traverse the Examiner’s rejections. Id. at 175-246. Ultimately, the Examiner
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`found the affidavits and amendments “sufficient to overcome” the § 103 rejections.
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`Id. at 258. A Notice of Allowance issued on August 18, 2014 (id. at 295), and the
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`’023 Patent issued on December 2, 2014. Id. at 328.
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`Before Patent Owner filed the application that led to the ’982 Patent,
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`Petitioner requested inter partes reexaminations of the ’597 Patent (the great-
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`grandparent to the ’982 Patent) as well as related U.S. Patent No. 7,902,107 (“the
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`’107 Patent”), which is also a continuation of the ’798 Application. The Patent
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`Office instituted the reexaminations as Control Nos. 95/001,745 and 95/001,744
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`(“the ’1745 Reexam” and “the ’1744 Reexam”), respectively. See Ex. BASF-
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`2001.002 [’1745 RAN, Aug. 13, 2013]; Ex. BASF-2002.002 [’1744 RAN, Oct. 30,
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`2014]. These proceedings—now spanning the course of nearly 5 years—involve
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`the same or substantially similar references and arguments to those proposed in the
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`instant Petition. In fact, the instant Petition echoes Petitioner’s allegations in both
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`reexamination proceedings that the claimed inventions are nothing more than the
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`use of known techniques and elements in a known system to yield predictable
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`results. Compare, e.g., Ex. BASF-2003.010 [’1745 Request, Sep. 7, 2011], with
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`Petition at 1.
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`One of the grounds proposed by Petitioner in the ’1744 Reexam was the
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`combination of Hashimoto in view of Ohno and Speronello. Ex. BASF-2002.021-
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`022 [’1744 RAN, Oct. 30, 2014]. The Examiner rejected not only this ground, but
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`all of Petitioner’s proposed twenty-one grounds for rejection in the ’1744 Reexam.
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`Currently, the ’1744 Reexam is on appeal to the Board.
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`
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`Similarly, several grounds proposed by Petitioner in the ’1745 Reexam,
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`involved an obviousness combination based on Hashimoto, including a subset that
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`also involved both Hashimoto and Speronello. Ex. BASF-2001.031-035 [’1745
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`RAN, Aug. 13, 2013]. The Examiner did not adopt any of these grounds. Id.
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`Currently, the ’1745 Reexam is on appeal to the Board.
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`As discussed further below, in light of the detailed and ongoing
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`reexamination proceedings—which involve substantially similar claims, prior art
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`references, and arguments—Patent Owner respectfully submits that the instant
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`Petition should be denied pursuant to 35 U.S.C. § 325(d).
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`C. Overview of the References Cited in the Petition
`The Petition relies on various combinations of the following four references:
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`Ex. JM 1005, Georg Hüthwohl et al., The SCRT® system – a
`combination particle filter with SCR catalyst – enables both
`particle and NOx emission to be reduced simultaneously in
`commercial vehicle diesel engines (hereinafter “Hüthwohl”).
`Ex. JM 1007, S. Hashimoto et al., SiC and Cordierite Diesel
`Particulate Filters Designed for Low Pressure Drop and Catalyzed,
`Uncatalyzed, Systems, SAE Technical Paper Series (2002)
`(hereinafter “Hashimoto”).
`Ex. JM 1008, U.S. Patent No. 5,516,497 (filed April 1, 1991)
`(hereinafter “Speronello”).
`Ex. JM 1009, Yasutake Teraoka et al., Simultaneous Catalytic
`Removal of Nitrogen Oxides and Soot by Copper-Loaded MFI
`Zeolites, Chemistry Letters, 604 (2001) (hereinafter “Teraoka”).
`
`A brief summary of the references relied upon in the Petition is provided below as
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`relevant background for understanding why the obviousness rejections presented in
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`the Petition are unsustainable.
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`1. Hüthwohl
`The first reference discussed in the Petition is Hüthwohl. Purportedly
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`distributed at a 1999 conference in Dresden, Germany regarding diesel engines, the
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`Hüthwohl article summarizes strict emission standards passed by the EU
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`Environmental Council in 1998. Hüthwohl goes on to describe the general outlines
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`of a system—the SCRT® system—that might be used to meet these new standards,
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`which were set to go into effect in 2005 and 2008. See Ex. JM 1005 at 2.
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`Although Hüthwohl proposes the general outlines of a system, it does not
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`propose the key details that would be required in order to meet the emission
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`standards. Hüthwohl says absolutely nothing about the type of particle filter that
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`should be used, let alone the structural details that should be applied if a wall f