`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`UMICORE AG & CO. KG,
`
`Petitioner
`
`Patent No. 9,039,982
`Original Issue Date: May 26, 2015
`Title: CATALYZED SCR FILTER AND EMISSION TREATMENT SYSTEM
`_________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,039,982
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2016-00613
`
`__________________________________________________________________
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`IV.
`
`Mandatory Notices (37 C.F.R. § 42.8) ...........................................................1
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))....................................1
`Related Matters (37 C.F.R. § 42.8(b)(2)).............................................1
`Counsel (37 C.F.R. § 42.8(b)(3)) .........................................................2
`Payment of Fees (37 C.F.R. § 42.103) ...........................................................2
`II.
`III. Requirements for IPR (37 C.F.R. § 42.104)...................................................2
`Grounds for Standing (37 C.F.R. § 42.104(a)) ....................................2
`Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and
`Relief Requested (37 C.F.R. § 42.22(a)(1)).........................................3
`Claim Construction (37 C.F.R. § 42.104 (b)(3))..................................4
`The ’982 Patent...............................................................................................6
`Overview ..............................................................................................6
`Prosecution History..............................................................................7
`Prior Inter Partes Review ....................................................................8
`How Challenged Claims are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)) ..................................................................................................................8
`Overview of the Prior Art Relied upon in this Petition........................8
`1.
`Muraki........................................................................................8
`2.
`Taoka........................................................................................10
`3.
`Joy ............................................................................................12
`4.
`Speronello ................................................................................13
`Ground 1: Claims 22, 23 and 27 are obvious under 35 U.S.C.
`§103(a) over Muraki in view of Taoka ..............................................14
`Ground 2: Claims 24, 25, and 26 are obvious under 35 U.S. C.
`§103(a) over Muraki in view of Taoka and further in view of
`Speronello...........................................................................................26
`Ground 3: Claims 1-5 and 14-17, and 19 are obvious under 35
`U.S.C. §103(a) over Muraki in view of Taoka and in further
`view of Joy. ........................................................................................33
`
`V.
`
`-i-
`
`
`
`Ground 4: Claims 6-13, 18, and 20-21 are obvious under 35
`U.S.C. §103(a) over Muraki in view of Taoka and in further
`view of Joy and Speronello. ...............................................................49
`PURPORTED SECONDARY CONSIDERATIONS..................................58
`VI.
`VII. CONCLUSION.............................................................................................60
`
`-ii-
`
`
`
`LISTING OF EXHIBITS
`
`Exhibit 1001
`
`U.S. Patent 9,039,982 to Patchett et al.
`
`Exhibit 1002
`
`Exhibit 1003
`
`Exhibit 1004
`
`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
`
`Japanese Patent Application Publication H1-151706 to Muraki
`et al.
`
`Certified English Translation of JPAP H1-151706 to Muraki, et
`al. and associated translation Declaration
`
`Koebel et al., “Recent Advances in the Development of Urea-
`SCR for Automotive Applications,” SAE Paper No. 2001-01-
`3625
`
`Japanese Patent Application Publication 2002-159859 to Taoka
`et al.
`
`Certified English Translation of JPAP 2002-159859 to Taoka et
`al. and associated translation Declaration
`
`U.S. Patent Application Publication 2002/0039550A1 to
`Schafer-Sindlinger et al.
`
`Exhibit 1008
`
`U.S. Patent 4,849,399 to Joy et al.
`
`Exhibit 1009
`
`Expert Declaration of Magdi Khair, Ph.D
`
`Exhibit 1010
`
`Excerpts from File History of U.S. Patent 9,039,982
`
`Exhibit 1011
`
`U.S. Patent 5,516,497 to Speronello et al.
`
`Exhibit 1012
`
`U.S. Patent 4,961,917 to Byrne
`
`Exhibit 1013
`
`Excerpt from Heck et al., “Catalytic Air Pollution Control:
`Commercial Technology” (2nd Ed., 2002)
`
`-iii-
`
`
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner Umicore
`
`AG & Co. KG (“Umicore” or “Petitioner”) respectfully requests inter partes
`
`review (“IPR”) of claims 1-27 of U.S. 9,039,982 (“the ’982 patent”), to Joseph A.
`
`Patchett et al., which was filed September 26, 2014 and issued May 26, 2015.
`
`According to U.S. Patent and Trademark Office (“USPTO”) assignment records,
`
`the ’982 patent is currently assigned to BASF Corporation (“Patent Owner”).
`
`There is a reasonable likelihood that Petitioner will prevail with respect to at least
`
`one claim challenged in this Petition.
`
`I.
`
`Mandatory Notices (37 C.F.R. § 42.8)
`
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner, Umicore, along with parent Umicore S.A. (also referred to as
`
`“Umicore NV”) and its wholly owned subsidiaries Umicore USA Inc., Umicore
`
`Autocat Canada Corp., and Umicore Autocat USA Inc. are real parties-in-interest.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The ’982 patent issued from U.S Application 14/497,454, which is a
`
`continuation of U.S. Application 13/274,635 (now U.S. Patent 8,899,023), which is
`
`a continuation of U.S. Application 11/676,798 (now U. S. Patent 9,032,709), which
`
`is a divisional of U.S. Application 10/634,659 (now U.S. Patent 7,229,597).
`
`The ’597 patent, and U.S. Patent 7,902,107 from the same family, are each
`
`the subject of inter partes reexamination proceedings in the United States in Case
`
`Nos. 95/001,745 and 95/001,744, respectively.
`
`-1-
`
`
`
`The ’982, ’709, and ’023 patents are currently the subject of IPR petitions
`
`filed by Johnson Matthey Inc. in Cases IPR2015-01266, 01267, and 01265,
`
`respectively. The Johnson Matthey IPR on the ’982 Patent was instituted on
`
`December 4, 2015. The primary prior art reference at issue in this petition –
`
`Japanese Patent Application Publication H1-151706 to Muraki et al. – was not
`
`identified ore relied upon in the Johnson Matthey IPR.
`
`Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel: Elizabeth Gardner (Reg. No. 36,519)
`
`Back-up Counsel: Richard L. DeLucia (Reg. No. 28,839)
`
`Electronic Service information: egardner@orrick.com; rdelucia@orrick.com
`
`Post and Delivery: Orrick, Herrington, & Sutcliffe LLP, 51 West 52nd Street,
`
`New York, NY 10019; Telephone: 212-506-5000 Facsimile: 212-506-5151
`
`II.
`
`Payment of Fees (37 C.F.R. § 42.103)
`
`The US PTO is authorized to charge the filing fee and any other fees
`
`incurred by Petitioner to the deposit account of Orrick, Herrington, & Sutcliffe
`
`LLP: 15-0665.
`
`III. Requirements for IPR (37 C.F.R. § 42.104)
`
`Grounds for Standing (37 C.F.R. § 42.104(a))
`
`Petitioner certifies that the ’982 patent (Exhibit 1001) is available for IPR
`
`and that Petitioner is not barred or estopped from requesting this IPR.
`
`-2-
`
`
`
`Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and
`Relief Requested (37 C.F.R. § 42.22(a)(1))
`Petitioner requests inter partes review of and challenges claims 1-27 of the
`
`’982 patent. Each claim should be found unpatentable and cancelled because the
`
`patent claims a combination of known elements from the prior art. The claims are
`
`directed to the combination of a wall flow filter for removing particulate matter
`
`from a diesel exhaust stream in combination with an SCR catalyst to reduce NOx
`
`in the diesel exhaust stream. This petition explains the reasons why the claims are
`
`unpatentable and includes detailed claim charts as well as additional explanation
`
`and support set forth in the attached Declaration of Magdi Khair, Ph.D (Ex 1009).
`
`The ’982 patent was filed as U.S. App. 14/497,454 and claims priority to
`
`U.S. App. 10/634,659, filed August 5, 2003, now U.S. Patent 7,229,597. For this
`
`petition, it is assumed that the ’982 patent’s effective filing date is August 5, 2003.
`
`Petitioner relies on the following references:
`
`(1) Japanese Patent
`
`Application Publication H1-151706 to Muraki et al., published June 14, 1989
`
`(“Muraki,” Exhibit 1002) and its certified English translation and declaration
`
`attesting to the accuracy of the translation (Exhibit 1003); (2) Japanese Patent
`
`Application Publication 2002-159859 to Taoka et al., published June 4, 2002
`
`(“Taoka,” Exhibit 1005) and its certified English translation and declaration
`
`attesting to the accuracy of the translation (Exhibit 1006); (3) U.S. Patent
`
`4,849,399 to Joy et al., issued July 18, 1989 (Exhibit 1008); (4) U.S. Patent
`
`-3-
`
`
`
`5,516,497 to Speronello et al., issued May 14, 1996 (Exhibit 1011). Muraki,
`
`Taoka, Joy, and Speronello are prior art under 35 U.S.C. §102(b).
`
`Petitioner requests that claims 1 - 27 be cancelled on the following grounds:
`
`Ground 1: Claims 22, 23 and 27 are obvious under 35 U.S.C. §103(a) over
`
`Muraki in view of Taoka
`
`Ground 2: Claims 24, 25, and 26 are obvious under 35 U.S. C. §103(a)
`
`over Muraki in view of Taoka and further in view of Speronello.
`
`Ground 3: Claims 1 - 5, 14 - 17, and 19 are obvious under 35 U.S.C.
`
`§103(a) over Muraki in view of Taoka and in further view of Joy.
`
`Ground 4: Claims 6 - 13, 18 and 20-21 are obvious under 35 U.S.C.
`
`§103(a) over Muraki in view of Taoka and in further view of Joy and Speronello.
`
`Claim Construction (37 C.F.R. § 42.104 (b)(3))
`
`A claim term subject to IPR is given its “broadest reasonable construction in
`
`light of the specification.” 37 C.F.R. § 42.100(b). Terms are to be given their
`
`plain meaning unless it is inconsistent with the specification. In re Zletz, 893 F.2d
`
`319, 321 (Fed. Cir. 1989).
`
`The claims of the ’982 patent require a “washcoat of SCR catalyst
`
`composition” that “permeates” or is “permeating” the walls of the claimed
`
`monolith. According to the ’982 patent, “the term ‘permeate’ means that the
`
`catalyst composition is dispersed throughout the wall of the substrate.” (Ex 1001,
`
`-4-
`
`
`
`’982 patent at 10:5-8.) While Petitioner does not concede this term satisfies the
`
`requirements of 35 U.S.C §112, this definition is at least consistent with the
`
`broadest reasonable interpretation and has thus been applied in this petition.
`
`The claims are directed to a catalyst article consisting essentially of a wall
`
`flow monolith and a catalytic material. The claims each variously require a “wall
`
`flow monolith having a porosity of” from either “50% to 60%” or “55% to 60%”
`
`and “an average pore size of from 10 to 25 microns” that contains the catalytic
`
`material in the form of a slurry-loaded washcoat that permeates the walls of the
`
`monolith. Petitioner contends that these “porosity” and “average pore size” limits
`
`are indefinite because it is not clear whether they refer to a coated or uncoated
`
`“wall flow monolith.” The ’982 patent adds to this confusion by alternatively
`
`referring to both coated and uncoated monoliths as having thee porosities and pore
`
`sizes. (Ex 1001, ’982 Patent, compare 4:44-51 with 5:56-58.) Because
`
`indefiniteness cannot be raised as part of this proceeding, and because the two
`
`possible interpretations overlap in scope, with neither being necessarily broader, it
`
`is proposed that the broadest reasonable interpretation of the “wall flow monolith
`
`[have] a porosity of from 50% to 60% and an average pore size of from 10 to 25
`
`microns” limitation embraces both coated and uncoated monoliths that possess
`
`these characteristics. (See Ex. 1009, Khair Dec. at ¶ 42-44.)
`
`Beyond those discussed above, the terms of the ’982 patent should be
`
`-5-
`
`
`
`afforded their plain and ordinary meaning.
`
`IV. The ’982 Patent
`
`Overview
`
`The ’982 patent generally relates to a catalyst article for simultaneously
`
`remediating the nitrogen oxides (NOx), particulate matter, and gaseous
`
`hydrocarbons present in diesel engine exhaust streams. (Ex. 1001, ’982 patent,
`
`Abstract.) The patent discloses an emission treatment system having an oxidation
`
`catalyst upstream of a soot filter coated with a material effective in the selective
`
`catalytic reduction (SCR) of NOx by a reductant, such as ammonia (Id. at 1:18-21).
`
`However, the claims are all limited to a “catalyst article consisting essentially of a
`
`wall flow monolith and a catalytic material” and do not claim the other aspects of
`
`the treatment system.
`
`The ’982 patent acknowledges that the various components of the claimed
`
`catalyst article were already known in the prior art.
`
`Particulate filters: “One key aftertreatment technology in use for high
`
`particulate matter reduction is the diesel particulate filter.” (Id. at 2:13-21.) The
`
`patent goes on to explain that “ceramic wall flow filters … receive the most
`
`attention” in the prior art and “are capable of removing over 90% of the particulate
`
`material from diesel exhaust.” (Id.)
`
`-6-
`
`
`
`SCR Catalyst: “A proven NOx abatement technology applied to stationary
`
`sources with lean exhaust conditions is Selective Catalytic Reduction (SCR). In
`
`this process, NOx is reduced with ammonia (NH3) to nitrogen (N2) over a catalyst
`
`typically composed of base metals. The technology is capable of NOx reduction
`
`greater than 90%, and thus it represents one of the best approaches for achieving
`
`aggressive NOx reduction goals.” (Id. at 2:41-53.)
`
`The subject matter of the ’982 patent is purportedly different from this
`
`admitted prior art in that it integrates the two known components, the nitrogen
`
`oxide reducing catalyst and the particulate filtering substrate. (See id. at 2:54-64.)
`
`Prosecution History
`
`The application leading to the ’982 patent was filed on September 26, 2014.
`
`(Ex. 1010, ’982 Patent Prosecution History at 3). No prior art rejections were
`
`made. Instead, the Examiner entered double patenting rejections in Office Actions
`
`dated December 16, 2014 and March 12, 2015 in view of multiple members of the
`
`same patent family. (Id. at 59 and 70-73.) With respect to the rejection based on
`
`Application 14/454,931, BASF argued that the SCR catalyst composition of that
`
`application comprised “one or more of a copper and iron component,” while the
`
`catalyst composition of the pending application comprised the copper component
`
`only. (Id. at 66.) BASF overcame the other double patenting rejections by filing
`
`terminal disclaimers. (See Id at 80.) The claims were allowed on May 26, 2015.
`
`-7-
`
`
`
`The prior art references relied on in this petition were not considered during
`
`prosecution of the claims in the application leading to the ’982 patent.
`
`Prior Inter Partes Review
`On December 4, 2015, the Board instituted inter partes review of claims 1-
`
`27 of the ’982 patent. (See IPR 2015-01266, Paper 8.) Muraki, Taoka and Joy,
`
`were not raised by Johnson Matthey or considered by the PTAB.
`
`V.
`
`How Challenged Claims are Unpatentable (37 C.F.R. § 42.104(b)(4)-(5))
`
`Overview of the Prior Art Relied upon in this Petition
`
`All of the features required by the claims of the ’982 patent were known in
`
`the prior art as of the patent’s effective filing date. A summary of the art follows.
`
`1. Muraki
`
`Muraki published in 1989 and discloses a combined catalyst and filter for
`
`simultaneously removing combustible fine particles and nitrogen oxide from
`
`exhaust gases while also providing a soot filter. (See Ex. 1003, Muraki.)
`
`According to Muraki, the exhaust gas stream emitted by an engine includes, among
`
`other things, “combustible fine particles such as carbon” and “nitrogen oxides
`
`(NOx).” (Id. at 3:9-11, 37-38.) While “conventional technology demonstrates an
`
`effect in terms of removing combustible fine particles and nitrogen oxides on their
`
`own, it is not possible to remove both combustible fine particles and nitrogen
`
`oxides at the same time.” (Id. at 4:5-9.) This conventional technology creates a
`
`problem, according to Muraki, because it “require[s] two devices, namely a filter
`
`-8-
`
`
`
`and a catalytic converter” and is inconsistent with the desire to use “compact and
`
`lightweight components” in a vehicle. (Id. at 4:18-22.)
`
`Muraki explains that its “invention has been devised in view of these
`
`problems, and the aim thereof lies in providing a catalyst which can simultaneously
`
`remove combustible fine particles and nitrogen oxides in exhaust gas, and also in
`
`providing a filter.” (Id. at 4:24-28.) To accomplish this, Muraki discloses “a
`
`catalyst for removing combustible fine particles and nitrogen oxides” that is
`
`“formed by supporting a catalyst component comprising copper and zeolite on a
`
`support.” (Id. at 4:31-35.) Copper can be incorporated into the zeolite via ion-
`
`exchange. And, “the ion-exchange rate is preferably between 50% and 100%.”
`
`(Id. at 5:9-22.) Different materials, including cordierite, can be used as a substrate.
`
`(Id. at 5:24-32.)
`
`The substrate has a “large number of passages partitioned by filter walls.”
`
`(Id. at 6:18-22.) There are “admission passages closed at the outflow side and
`
`exhaust passages closed at the inflow side.” (Id. at 6:24-25) Further, the “filter
`
`wall has through-holes for trapping combustible fine particles in the exhaust gas
`
`when said exhaust gas passes from the inflow passages to the exhaust passages….”
`
`(Id. at 6:27-30.) The filter has an average pore size in the range of 5-50 µm. (Id. at
`
`7:24-35.) This type of substrate is referred to as a wall flow substrate since
`
`-9-
`
`
`
`exhaust gas is forced to flow through the filter walls as generally shown in the
`
`following figure in Muraki:
`
`(Id. at Fig. 2.)
`
`Muraki explains that the “catalyst component comprising copper and zeolite
`
`is supported in the filter walls.” (Id. at 6:30-32.) The catalyst not only reduces
`
`nitrogen oxides in the exhaust gas stream, but also allows the “combustible fine
`
`particles” to “be combusted and removed at a low temperature….” (Id. at 8:13-
`
`16.) This, eliminates the need for a separate heater to remove particle buildup. (Id.
`
`at 8:16-19.) Muraki includes various working examples showing that its catalyst-
`
`loaded wall flow filter is able to successfully and simultaneously reduce nitrogen
`
`oxides and remove particulate matter from diesel exhaust. (See id. at 10:24-17:24.)
`
`2.
`
`Taoka
`
`Taoka relates to a “catalyst for exhaust gas purification.” (Ex. 1006, Taoka
`
`at ¶ [0001].) The catalyst is loaded on to a “catalyst carrying filter 100” that is
`
`“formed in a honeycomb shape” with “alternately sealed” cells or passageways.
`
`(Id. at ¶ [0002].) Accordingly, Taoka discloses a catalyst coated wall-flow filter.
`
`The “catalyst carrying filter 100 collects particulates (PM: black sooty particulate)
`
`-10-
`
`
`
`deposited in the interior, and purifies exhaust gas through oxidation of PM, HC and
`
`CO, and by reducing NOx.” (Id.) “[P]orous silicon carbide” can be used as carrier
`
`substrate material. Id. at ¶ [0003].)
`
`Taoka explains that “since both ends of the … carrier are alternately sealed
`
`in a checkered pattern with a sealing body, exhaust gas that penetrated from one
`
`end of the ceramic carrier, between the time it exits from the other end, will
`
`certainly pass through the cell wall.” (Id. at ¶ [0030].)
`
`(Id.) And, “since the …
`
`carrier is a honeycomb structure having a plurality of through holes divided by cell
`
`walls, the area that can make the exhaust gas contact the catalyst increases.” (Id. at
`
`¶ [0029].) This “improve[s] the purification efficiency of” the catalyst. (Id.)
`
`Taoka provides details regarding the physical characteristics of preferred
`
`wall flow substrates. In particular, “[t]he pores of the porous cell wall 12 are
`
`within an average pore diameter range of 5 µm to 250 µm…. [D]iesel particulate
`
`can be reliably collected by setting the average pore diameter … within such
`
`range.” (Id.at ¶ [0034].) However, “[w]hen the average pore diameter of the cell
`
`wall 12 is less than 5 µm, the pressure loss that occurs when exhaust gas passes
`
`through the cell wall 12 becomes excessively large which may cause the engine to
`
`stop. Further, when the average pore diameter exceeds 250 µm, fine particulate
`
`can no longer be collected efficiently.” (Id.)
`
`-11-
`
`
`
`Next, “the porosity of the porous cell wall 12 in the ceramic carrier 15 is set
`
`to 40-60%,” or more preferably “within a range of 50-60%.” (Id. at ¶ [0035].)
`
`Taoka explains that “[w]hen porosity is less than 40%, the pressure loss that occurs
`
`when exhaust gas passes through the cell wall 12 becomes excessively large which
`
`may cause the engine to stop. Further, when porosity exceeds 60%, fine
`
`particulate can no longer be collected efficiently” and “it becomes easy for a crack
`
`to develop … due to deteriorated mechanical strength.” (Id.) Thus, an “average
`
`pore diameter … between 5 µm and 250 µm” and a “porosity [between] 40-60%”
`
`reduces pressure lose, improves mechanical strength, and efficiently collects
`
`particulate matter. (Id. at ¶ [0036].)
`
`3.
`
`Joy
`
`Joy relates to a “catalytic composite and process for reducing the ignition
`
`temperature of diesel soot.” (Ex. 1008, Joy at Abstract.) Joy’s “catalytic
`
`composite consists essentially of a diesel soot filter” that can be a “ceramic wall
`
`flow filter” that has “deposited thereon” a catalytic material. (Id. at 4:31-41.)
`
`According to Joy, “[t]he desired ceramic … diesel soot filter can be washcoated
`
`using a slurry or dispersion” that contains the catalytic material. (Id. at 4:56-58.)
`
`Joy explains that “[t]he preparation of slurries and methods of washcoating a filter
`
`element with a slurry are well known in the art.” (Id. at 4:58-60.) Joy specifies the
`
`catalyst loading levels that should be employed. While “[t]he quantity of washcoat
`
`-12-
`
`
`
`to be applied to a filter element is less critical with regard to the lower limit,” a
`
`“minimum amount will be when the filter element contains about 0.2 grams of
`
`washcoat per cubic inch of filter volume.” (Id. at 4:65-5:2.) “The upper range is
`
`limited by the maximum permissible backpressure which the filter exerts on a
`
`diesel engine.” (Id. at 5:2-4.) These concerns lead to a “preferred” loading range
`
`of “from about 0.8 g/in3 to about 2.5 g/in3.” (Id. at 5:5-7.)
`
`4.
`
`Speronello
`
`Speronello generally relates to “metal-promoted zeolite catalysts and a
`
`method for the catalytic reduction of nitrogen oxides with ammonia using
`
`catalysts, including carrying out such catalytic reduction selectively in the presence
`
`of oxygen.” (Ex. 1011, Speronello at 1:11-15.) Speronello’s catalyst is staged,
`
`with an upstream “first zone catalyst [that] favors the selective catalytic reduction
`
`of nitrogen oxides with ammonia” and a “second” downstream “zone [that] favors
`
`the oxidation of (excess or residual) ammonia to nitrogen.” (Id. at 2:66-3:4.)
`
`Speronello discusses preferred metal loading levels: the first zone on the
`
`substrate should include from 0.1 to 1% metal, while the second zone on the
`
`substrate should include 1% to 30%, or more preferably 2% to 5% metal. (See id.
`
`at 3:27-35.) “[I]ron or copper” can be employed. (See id. at 5:34-51.) Use of
`
`these loading levels allows the catalyst zones to respectively engage in SCR to
`
`reduce nitrogen oxides and then oxidize any excess ammonia. (See id.)
`
`-13-
`
`
`
`Speronello also identifies several preferred zeolites, including “Beta zeolites,
`
`ultrastable Y (‘USY’) zeolites and ZSM-20 zeolites.” (Id. at 6:56-59.) These are
`
`preferred because they have “an average pore size of about 7 Angstroms or more”
`
`and are “resistant to sulfur poisoning.” (Id. at 6:34-49.) “The zeolite materials
`
`employed should have a silica to alumina molecular ratio greater than 10 in order
`
`to enhance their resistance to acidic conditions.” (Id. at 6:25-28.) Speronello’s
`
`zeolites are able to withstand temperatures up to about 600 oC. (Id. at 6:17-20.)
`
`Ground 1: Claims 22, 23 and 27 are obvious under 35 U.S.C.
`§103(a) over Muraki in view of Taoka
`
`As of August 2003, claims 22, 23 and 27 would have been obvious to one of
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`ordinary skill in the art. 1 The subject matter set forth in those claims is nothing
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`more than the combination of a known wall flow filter and a known SCR catalyst
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`1 For purposes of this Petition, one of ordinary skill in the art would hold at least a
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`Bachelor’s degree in chemistry, chemical engineering, mechanical engineering, or
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`a related discipline, and have a few years of work experience with diesel exhaust
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`treatment systems, such that they have knowledge of the various aspects of these
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`systems, including the types of catalytic materials and filters used. Additional
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`years of work experience with diesel exhaust treatment systems can substitute for a
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`more advanced educational degree. (See Ex. 1009, Khair Dec. at ¶¶ 54-56.)
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`washcoat.
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`As discussed in the prior art summary above, Muraki discloses a wall flow
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`filter that is slurry loaded with a zeolite. Copper is then incorporated into the
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`zeolite via ion-exchange. Just as required by the ’982 patent, Muraki explains that
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`this catalyst loaded filter is able to simultaneously remove particulate matter and
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`reduce nitrogen oxides in the exhaust gas stream emitted by a diesel engine.
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`Muraki also employs the average pore size required by the ’982 patent. While
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`Muraki does not specifically reference the porosity of its substrate, Taoka explains
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`that substrates with the claimed porosity should be used to achieve adequate
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`filtering while avoiding backpressure and mechanical strength issues.
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`Independent claim 22 is directed to a catalyst article “consisting essentially
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`of a wall flow monolith and a catalytic material.” Muraki describes its invention
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`as relating to a catalyst for “simultaneously removing nitrogen oxides and
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`combustible fine particles such as carbon contained in exhaust gas from an internal
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`combustion engine . . . and also relates to a filter employing said catalyst.” (Ex.
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`1003, Muraki at 3:1-6; see also 3:36-4:2; Ex. 1009, Khair Dec. at ¶¶ 96-97.)
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`Claim 22 specifies that the “wall flow monolith has a plurality of
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`longitudinally extending passages formed by longitudinally extending walls
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`bounding and defining said passages, wherein the passages comprise inlet passages
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`having an open inlet end and a closed outlet end, and outlet passages having a
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`closed inlet end and an open outlet end.” Claim 22 additionally requires that the
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`“wall flow monolith [have] a porosity of from 50% to 60% and an average pore
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`size of from 10 to 25 microns.” Muraki’s system employs the claimed type of wall
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`flow monolith. (Ex. 1003, Muraki at 5:27-32; 6:17-30; see also 10:34-11:15; Figs.
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`1-3.) Use of this type of monolith, according to Muraki, “improve[s] contact with
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`exhaust gas and … enhance[s] the effect of removing combustible fine particles
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`and nitrogen oxides.” (Id. at 5:27-32.) Moreover, Muraki explains that its
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`monolith has an average pore size in the range of “5μm -50μm.” (Id. at 7:28-35;
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`see also Ex. 1009, Khair Dec. at ¶¶ 98-104.) While the range of average pore sizes
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`required by the claims is somewhat narrower than that set forth in Muraki, one of
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`ordinary skill in the art would have recognized that use of pore sizes in the middle
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`of Muraki’s range would be more likely to result in an acceptable balance of
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`filtering and clog avoidance. (See Ex. 1009, Khair Dec. at ¶ 102.) Moreover,
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`selection of any particular pore size is nothing more than a routine design choice.
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`(See id. at ¶ 103.) While Muraki does not expressly identify the monolith’s
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`porosity, Taoka teaches that a catalyst coated wall flow filter should preferably
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`have a porosity in the range of 50-60% to achieve adequate filtration performance
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`while avoiding backpressure and mechanical strength issues. (See Ex. 1006, Taoka
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`at ¶¶ [0035]-[0036].)
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`Claim 22 specifies that the wall flow monolith contains a catalytic material
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`which “comprises a washcoat of SCR catalyst composition including a slurry-
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`loaded washcoat of a zeolite and base metal selected from copper, the washcoat
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`permeating the walls.” This is disclosed by Muraki. In particular, Muraki employs
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`a “catalyst component comprising copper and zeolite” that “is supported in the
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`filter walls.” (Ex. 1003, Muraki at 6:30-32; see also 2:6-35; 4:32-35; 7:37-38.)
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`Further, this catalytic material is applied by using a “wash-coat slurry” of zeolite
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`and then incorporating copper via ion exchange. (Id. at 12:1-18 see also Ex. 1009,
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`Khair Dec. at ¶¶ 105-106.)
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`Finally, claim 22 specifies that the wall flow monolith has “integrated, NOx
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`and particulate removal efficiency in which presence of the catalytic material in the
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`wall flow monolith catalyzes the oxidation of soot.” This is disclosed by Muraki
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`which relates to “a catalyst for simultaneously removing nitrogen oxides and
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`combustible fine particles such as carbon contained in exhaust gas.” (Ex. 1003,
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`Muraki at 3:1-6; see also 4:24-28; 9:33-10:4; 13:20-28.) Muraki also explains that
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`“the combustible fine particles may be combusted and removed at a low
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`temperature because of the presence of the Cu and the zeolite.” (Id. at 8:13-16, 22-
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`35; see also Ex. 1009, Khair Dec. at ¶¶107-108.)
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`Dependent claim 23 includes all the limitation of claim 22 and further
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`requires that “the SCR catalyst composition has a thermal resistance to degradation
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`at a temperatures greater than 650 ºC.” Muraki states that “the catalyst according
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`to the present invention is preferably used at 200 oC to 800 oC.” (Id. at 6:12-14; see
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`also Ex. 1009, Khair Dec. at ¶¶ 110-112.) Further, it was generally known in the
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`art that catalytic materials for treating diesel exhaust should be able to withstand
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`such temperatures (Ex. 1004, Koebel at 7; see also Ex. 1009, Khair Dec. at ¶ 113.)
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`Dependent claim 27 includes all the limitation of claim 22 and further
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`requires that “the wall flow monolith is effective to remove soot by deposition of
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`particulate matter on the wall flow monolith and the catalyst material contains a
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`component to promote the combustion of the soot in the absence of a fine pore path
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`layer on the wall of the wall flow monolith.” This is also described by Muraki
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`which states that “[i]t should be noted that in the first and second inventions, the
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`combustible fine particles may be combusted and removed at a low temperature
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`because of the presence of the Cu and the zeolite….” (Ex. 1003, Muraki at 8:13-
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`16, 22-35; see also Ex. 1009, Khair Dec. at ¶¶ 115-117.)
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`One of ordinary skill in the art in August of 2003 would have been
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`motivated to combine the teachings of Muraki with the Taoka disclosure to arrive
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`at a catalyst coated filter for the simultaneous reduction of NOx with a filter
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`substrate that also provides for the combustion of fine particulate soot, as claimed
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`in claims 22, 23 and 27 of the ’982 patent. Muraki and Taoka are in the same
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`technical field, and thus one of ordinary skill in the art would have both references
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`readily available to them. (See Ex. 1009, Khair Dec. at ¶131) Further, one of
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`ordinary skill in the art at the time would have been motivated by legislation to
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`reduce both particulates and NOx. See, e.g. Koebel, stating “[f]orthcoming
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`European and U.S. emission legislation for diesel vehicles calls for a significant
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`reduction of both particles and NOx.” (Ex. 1004, Koebel at 1.) These increasingly
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`stringent environmental regulations would strongly motivate one of ordinary skill
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`in the art to consider the use of and prefer systems, like that of Muraki, able to
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`remove both particulate matter and NOx from diesel engine exhaust. (Ex. 1009,
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`Khair Dec. at ¶¶ 121-122.) Further, one of ordinary skill in the art would also
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`prefer an exhaust gas treatment system to include fewer catalysts, since this would
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`serve to reduce both cost and system bulk. (Id. at ¶ 123.) Muraki’s system
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`combines particulate filtering and NOx removal capabilities on a single substrate,
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`and thus would be viewed as particularly preferable. (Id.)
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`Muraki expressly provides for the use of a “porous” substrate for supporting
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`the catalyst (Ex. 1003, Muraki at 5:24-26), though Muraki does not expressly
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`reference the porosity of its wall flow filters. However, by 2002, it was well
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`known that porosities in the range of 50-60% achieve adequate filtration while
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`avoiding backpressure and mechanical strength problems. (See Ex. 1006, Taoka at
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`¶¶ [0035]-[0036]; see also Ex. 1009, Khair Dec. at ¶¶ 125-126.) This particular
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`poro