PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO ...-ii- LISTING OF EXHIBITS Exhibit 1001 U.S....

UNITED STATES PATENT AND TRADEMARK OFFICE __________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

__________________________________________________________________

UMICORE AG & CO. KG,

Petitioner

Patent No. 8,404,203 Issue Date: March 16, 2013

Title: PROCESS FOR REDUCING NITROGEN OXIDES USING COPPER CHA ZEOLITE CATALYSTS

_________________________________________________________________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,404,203

PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104

Case No. IPR2015-01123 __________________________________________________________________

-i-

Table of Contents

I. Mandatory Notices (37 C.F.R. § 42.8) ..................................................................... 1

A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ............................................ 1

B. Related Matters (37 C.F.R. § 42.8(b)(2)) ...................................................... 1

C. Counsel (37 C.F.R. § 42.8(b)(3)) ................................................................... 2

II. Payment of Fees Incurred in Connection with this Petition (37 C.F.R. § 42.103) ...................................................................................................................... 2

III. Requirements for IPR (37 C.F.R. § 42.104) ............................................................ 2

A. Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................ 2

B. Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief Requested (37 C.F.R. § 42.22(a)(1)) .................................................. 2

C. Claim Construction (37 C.F.R. § 42.104)(b)(3)) ......................................... 4

1. “A process for the reduction of oxides of nitrogen contained in a gas stream in the presence of oxygen” .............................................................. 4

2. “[C]atalyst” ............................................................................................ 7

3. “[Z]eolite having the CHA crystal structure” ........................................... 8

IV. Overview of the ’203 Patent ..................................................................................... 8

V. How Challenged Claims are Unpatentable (37 C.F.R. § 42.104(b)(4)-(5)) ......... 9

A. Ground 1: Claims 1, 14, 15, 17-22, 26, and 27 are obvious under 35 U.S.C. § 103(a) over Zones in view of Maeshima. ................................ 9

B. Ground 2: Claims 2-13, 16, 23-25, and 29-31 are obvious under 35 U.S.C. § 103(a) over Zones, Maeshima, and Patchett. ....................... 20

VI. PURPORTED SECONDARY CONSIDERATIONS ..................................... 38

VII. CONCLUSION ....................................................................................................... 45

-ii-

LISTING OF EXHIBITS

Exhibit 1001 U.S. Patent No. 8,404,203 to Bull et al.

Exhibit 1002 U.S. Patent No. 4,046,888 to Maeshima et al.

Exhibit 1003 U.S. Patent No. 4,503,023 to Breck, deceased et al.

Exhibit 1004 U.S. Patent No. 6,709,644 to Zones et al.

Exhibit 1005 U.S. Patent Application Publication No. US 2006/0039843 to Patchett et al.

Exhibit 1006 U.S. Patent Application Publication No. US 2005/0031514 to Patchett et al.

Exhibit 1007 Dedecek et al., “Siting of the Cu+ Ions in Dehydrated Ion Exchanged Synthetic and Natural Chabasites: a Cu+ Photoluminescence Study” Microporous and Mesoporous Materials, Vol. 32, pp. 63-74 (1999).

Exhibit 1008 Expert Declaration of Johannes A. Lercher, Ph.D

Exhibit 1009 Excerpts from File History of U.S. Patent No. 8,404,203 to Bull et al., and Reexamination No. 95/001,453

Exhibit 1010 U.S. Patent No. 4,961,917 to Byrne

Exhibit 1011 U.S. Patent No. 5,516,497 to Speronello et al.

Exhibit 1012 Ishihara et al., “Copper Ion-Exchanged SAPO-34 as a Thermostable Catalyst for Selective Reduction of NO with C3H6,” 169 Journal of Catalysis 93-102 (1997)

Exhibit 1013 U.S. Patent No. 4,297,328 to Ritscher et al.

Exhibit 1014 Chung, S.Y. et al., “Effect of Si/Al Ratio of Mordenite and ZSM-5 Type Zeolite Catalysts on Hydrothermal Stability for NO Reduction by Hydrocarbons,” Studies in Surface Science and Catalysis, vol. 130, pp. 1511-1516 at 1513 (2000)

Exhibit 1015 Declaration of Dr. Frank-Walter Schütze

Exhibit 1016 U.S. Patent No. 4,544,538 to Zones

-1-

Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, real party-in-interest

Umicore AG & Co. KG (“Umicore” or “Petitioner”) respectfully requests inter partes

review (“IPR”) of claims 1-31 of U.S. 8,404,203 (“the ’203 patent”) to Ivor Bull et al.,

which was filed June 8, 2009 and issued March 26, 2013. According to U.S. Patent

and Trademark Office (“US PTO”) assignment records, the ’203 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)

A. 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 the real parties-in-interest.

B. Related Matters (37 C.F.R. § 42.8(b)(2))

Petitioner is not aware of any existing related matters. Petitioner is

concurrently filing IPR Petition No. IPR2015-01124, which also relates to the ’203

patent. This petition focuses on a primary prior art reference that discloses

aluminosilicate CHA zeolite catalysts that are specifically intended for use in internal

combustion engines, and have a silica to alumina mole ratio within the claimed range.

The secondary reference discloses and provides a motivation to modify those catalysts

by adding copper, resulting in a copper to aluminum atomic ratio within the claimed

range. The -1124 petition focuses on the reverse: There, the primary prior art

-2-

references disclose aluminosilicate CHA catalysts with copper to aluminum atomic

ratios within the claimed range, and secondary references that disclose and provide

the motivation to modify the primary reference catalysts to use silica to alumina mole

ratios within the claimed range.

C. 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: [email protected]; [email protected]

Post and Delivery: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004

Telephone: 212-425-7200 Facsimile: 212-425-5288

II. Payment of Fees Incurred in Connection with this Petition (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 Kenyon & Kenyon LLP: 11-0600.

III. Requirements for IPR (37 C.F.R. § 42.104)

A. Grounds for Standing (37 C.F.R. § 42.104(a))

Petitioner certifies that the ’203 patent (Exhibit 1001) is available for IPR and

that Petitioner is not barred or estopped from requesting an IPR challenging the

patent’s claims on the grounds identified in this petition.

B. 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 1-31 of the ’203

-3-

patent. Each claim should be found unpatentable and cancelled. This petition

explains the reasons why the claims are unpatentable, includes a description of the

relevance of the prior art, and identifies where each claim element can be found in

that art. Detailed claim charts are provided, and additional explanation and support is

set forth in the attached Declarations of Johannes A. Lercher, Ph.D (Ex. 1008) and

Dr. Frank-Walter Schütze (Ex. 1015).

The ’203 patent claims priority back through U.S. App. Nos. 12/480,360 and

12/038,423 to U.S. Prov. App. 60/891,835, which was filed February 27, 2007. While

Petitioner does not concede that the ’203 patent is entitled to claim the benefit of any

of these applications, for purposes of this petition it is assumed that the patent has an

effective filing date of February 27, 2007.

Petitioner relies on the following references: (1) U.S. 6,709,644, issued March

23, 2004 (“Zones,” Exhibit 1004); (2) U.S. 4,046,888, issued September 6, 1977

(“Maeshima,” Exhibit 1002); and (3) U.S. App. 2006/0039843, published Feb. 23,

2006 (“Patchett,” Exhibit 1005) Zones, Maeshima, and Patchett are prior art under 35

U.S.C. § 102(b).

Petitioner requests that claims 1-31 be cancelled on the following grounds:

Ground 1: Claims 1, 14, 15, 17-22, 26, 27 are obvious under 35 U.S.C. § 103(a)

over Zones in view of Maeshima.

Ground 2: Claims 2-13, 16, 23-25, and 28-31 are obvious under 35 U.S.C. §

103(a) over Zones and Maeshima in further view of Patchett.

-4-

C. 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). Petitioner contends that certain of the claim terms are indefinite and

render the claims invalid under 35 U.S.C. § 112. However, because indefiniteness

cannot be raised herein, Petitioner proposes the following in rendering the broadest

reasonable constructions:

1. “A process for the reduction of oxides of nitrogen contained in a gas stream in the presence of oxygen”

The preamble of independent claims 1 and 26 of the ’203 patent states that the

claims are directed to a “process for the reduction of oxides of nitrogen contained in a

gas stream in the presence of oxygen.” (Ex. 1001, 23:9-11, 24:29-31.) A preamble

will not be limiting if it simply recites the purpose of the claimed subject matter and

the body of the claim does not depend on the preamble for completeness. See in re

Hirao, 535 F.2d 67, 70 (CCPA 1976). The preamble of claims 1 and 26 provides

antecedent basis for the term “the gas stream” that appears later in the claim. In view

of this, while the preamble may be a claim limitation, it is readily understood and can

simply be afforded its plain and ordinary meaning.

Despite the straight-forward language of the preamble, Petitioner anticipates

that Patent Owner may argue that the ’203 patent’s claims are limited to processes

-5-

that have very specific performance characteristics. For instance, during prosecution

the Patent Owner attempted to argue that the catalysts of the ’203 patent purportedly

have the ability to “maintain NOx conversion across a broad temperature range after

exposure to hydrothermal conditions.” (Ex. 1009, ’203 file history, 1/24/2011

Amend., at p. 22.) It also argued that the catalysts exhibit “high NOx conversion in

the low temperature range” of 200 oC to 350 oC. (Id. at pp. 24-25.) Likewise, the

Patent Owner argued that it is not enough for a catalyst to simply have “some activity

in the reduction of oxides of nitrogen.” Instead, the “claimed process” purportedly

requires “excellent activity at temperatures below 350 oC that is maintained after

hydrothermal aging.” (Id., 5/1/12 Amend., at p. 13.) The Patent Owner went on to

argue that the claims require not only the “subject matter which is literally recited,”

but also any “properties … which are inherent in the subject matter and are disclosed

in the specification.” (Id. at pp. 13-14 (citing In re Antonie, 559 F.2d 618 (CCPA 1977)

and In re Goodwin, 576 F.2d 375 (CCPA 1978)).)

The ’203 patent’s claims should be interpreted to require only what they state,

namely, a “process for the reduction of oxides of nitrogen.” The claims cannot

properly be limited to only processes employing materials that exhibit “excellent

activity,” including activity over a wide range of temperatures or resistance to

hydrothermal aging. There is nothing in the claims that requires this type of

performance. And, the ’203 patent’s specification does not define any claim term to

require this functionality, or disclaim coverage of materials that do not possess these

-6-

characteristics. In fact, the specification indicates that the materials of the patent do

not need to have “excellent activity.” For instance, Example 1 employs the claimed

zeolite, SAR, and Cu/Al ratio. (Ex. 1001, ’203 patent, 10:48-50, Table 1.) Yet, this

catalyst “did not show enhanced resistance to thermal aging.” (Id. at 11:21-26.)

The prosecution history of the ’203 patent itself also serves to confirm that the

claims cannot be limited to only processes with “excellent” performance. When

originally filed, the ’203 patent included claims explicitly requiring that the catalyst

“prevent thermal degradation” and “maintain NOx conversion … after hydrothermal

aging.” (Ex. 1009, ’203 patent file history, at 11/18/09 Prelim. Amend., pp. 4-5.)

Other claims required that the “NOx conversion of the catalyst at about 200 oC after

hydrothermal aging” be “at least 90% of the NOx conversion of the catalyst at about

200 oC prior to hydrothermal aging,” or that the catalyst be able to reduce “at least

about 90%” of nitrogen oxides “over the temperature range of about 250 oC to 450

oC.” (Id. at p. 5) These claims were repeatedly rejected as not described or enabled.

(Id., 2/26/10 Office Action, at pp. 3-4; 2/1/12 Office Action, at pp. 5-6; 7/18/12

Office Action, at pp. 2-4.) In response, the Patent Owner cancelled the claims and

proceeded with claims requiring only a “process for the reduction of oxides of

nitrogen” without any performance requirements. (Id., 5/1/12 Amend., at p. 4.)

Any argument on the part of the Patent Owner that the ’203 patent’s claims

must be limited to processes that exhibit “excellent activity” across a wide range of

temperatures and a high “hydrothermal stability” is also wrong as a matter of law.

-7-

The two cases cited during prosecution—In re Antonie and In re Goodwin—simply stand

for the proposition that it may be possible to rebut a prima facie case of obviousness

by showing that selection and optimization of a particular claimed range produced

“unexpectedly good” results. In re Antonie, 559 F.2d at 620. This does not mean,

however, that performance characteristics allegedly possessed by certain embodiments

in the specification should be read into the claims. Further, as discussed below in

Section VI, the ’203 patent’s specification fails to provide any basis for the contention

that use of the zeolites in the claimed range produces “unexpected” results. (See also

Ex. 1008, Lercher Dec. at ¶¶ 245-254.)

2. “[C]atalyst”

The “catalyst” of the claims is indefinite, as it is defined as having various

metrics and characteristics set forth in the body of the claim, but it is unclear whether

those recited features (such as mole ratios and atomic ratios) are those of the zeolite

alone, or whether they are of the entire catalyst in its broadest sense, which would

include a combination of the zeolite and binder, as well as the various substrates on

which the zeolite is deposited. (Ex. 1001, ’203 patent, at 2:59-3:5.) Accordingly,

because these two possibilities overlap in scope, with neither being necessarily broader

than the other, the broadest reasonable interpretation of the “catalyst” would embrace

both a zeolite alone and the zeolite in combination with a binder well and substrate on

which the zeolite and binder are deposited. (See Ex. 1008, Lercher Dec. at ¶¶ 42-45.)

-8-

3. “[Z]eolite having the CHA crystal structure”

All of the claims of the ’203 patent require a “zeolite having the CHA crystal

structure.” The patent’s specification provides that the “CHA crystal structure” is

“defined by the International Zeolite Association.” (Ex. 1001, ’203 patent, 1:60-61.)

According to that definition, zeolites with this particular crystal structure are also

known as “chabazite.” (Ex. 1008, Lercher Dec. at ¶¶ 47-51.)

IV. Overview of the ’203 Patent

The ’203 patent relates to zeolite catalysts having the CHA crystal structure.

(Ex. 1001, ’203 patent, 1:17-19.) These catalysts incorporate copper to facilitate their

use in gas exhaust treatment systems to reduce nitrogen oxides. (Id. at 1:19-22.) The

’203 patent acknowledges that both aluminosilicate zeolites and copper promoted

zeolites useful as nitrogen oxide reducing catalysts were known in the prior art. (Ex.

1001, 1:34-37.) It was also known that zeolites can be used as part of a “selective

catalytic reduction,” or “SCR,” process to catalyze the selective reaction of ammonia

with nitrogen oxides to form nitrogen and water. (Id. at 8:38-41.)

The ’203 patent’s claims purport to be an advantage over the acknowledged

prior art due to recited ranges of mole ratios of silica to alumina (the “SAR”) and

atomic ratios of copper to aluminum (the “Cu/Al ratio”). Independent claims 1 and

26 requires a SAR from about 15 to about 100 or 150, and a Cu/Al ratio from about

0.25 to about 0.50 or 1. The remaining claims are all dependent.

The ’203 patent also provides that its catalytic materials can be used as “part of

-9-

an exhaust gas treatment system used to treat exhaust gas streams, especially those

emanating from gasoline or diesel engines.” (Id. at 1:62-65.) In this regard, the

specification discusses disposition of its catalysts on various prior art substrates,

including “wall flow” or “flow through” “honeycomb” substrates. (Id. at 2:41-45.)

Various other prior art components of an exhaust gas treatment system are also

discussed, including an “oxidation catalyst,” a “soot filter,” and a device to add a

reductant like “ammonia” to an exhaust stream. (Id. at 5:65-6:5; 21:58-22:67.)

V. How Challenged Claims are Unpatentable (37 C.F.R. § 42.104(b)(4)-(5))

A. Ground 1: Claims 1, 14, 15, 17-22, 26, and 27 are obvious under 35 U.S.C. § 103(a) over Zones in view of Maeshima.

Zones (Ex. 1004) is generally directed to processes for using an

aluminosilicate zeolite, such as SSZ-62 which has the chabazite crystal structure, as a

catalyst for the selective reduction of oxides of nitrogen in the presence of a

stoichiometric excess of oxygen in the exhaust gas stream of an internal combustion

engine. (Ex. 1004, Zones at 1:7-15; 1:54-67.) Zones discloses reaction mixtures of

zeolite catalysts that have a SAR value greater than 10, ranging from 20-50, and more

preferably ranging from 25-40. (Id. at 1:32-35; 2:30-38.) Example 1 of Zones

describes the preparation of a particular SSZ-62 chabazite zeolite having a SAR value

of 22. (Id. at 6:8-31.) Claim 3 describes a zeolite with a SAR of at least 30. (Id. at

7:34-35.) Zones also teaches that the zeolite may be exchanged or impregnated to

contain metal or metal ions, and identifies copper as one such metal, to catalyze the

-10-

reduction of oxides of nitrogen. (Id. at 1:61-64; 5:25-28.) Zones does not place any

limitation on the amount of copper, but states that such a metal cation is preferably

incorporated in the range of from 0.05 to 5% by weight. (Id. at 5:25-28.)

Maeshima relates to materials for use in “a process wherein the concentration

of nitrogen oxides is reduced by catalytic reduction.” (Ex. 1002, Maeshima at 1:8-10.)

This entails “contacting the … gaseous mixture with a catalyst in the presence of

ammonia to reduce the nitrogen oxides selectively.” (Id. at 2:4-8.) Maeshima’s

process is meant to be operable at a temperature range of 200 oC to about 500 oC. (Id.

at 2:48-49, 3:20-32.) “[A] crystalline aluminosilicate” can be used as the catalyst. (Id.

at 3:33-35.) “Chabazite” is provided as an example of a “suitable … zeolite” catalyst.

(Id. at 4:6-12.) Maeshima states that the zeolite catalysts employed in its process

should have a SAR ratio greater than 2. (Id. at 3:67-4:3.) Further, “at least one metal

cation having an activity of reducing nitrogen oxides” can be incorporated into the

zeolite. (Id. at 3:35-38.) Copper is identified as an active metal that can be used for

this purpose. (Id. at 4:51-54.) According to Maeshima, zeolite catalysts should

incorporate a sufficient amount of active metal such that resulting “ion exchange

ratio” is “about 60 to about 100%.” (Id. at 4:44-54.) Maeshima also explains that the

catalyst should be impregnated with active metals in the amount of 2% to 10% by

weight. (Id. at 6:1-18.) And, an example that includes 3% copper by weight is

provided. (Id. at 9:10-12.)

-11-

The combination of Zones and Maeshima teach all the limitations of claims 1,

14, 15, 17-22, 26, and 27 of the ’203 patent. Applying the teachings of the copper

addition of Maeshima to the aluminosilicate chabazite zeolite of Example 1 of Zones,

with a SAR value of 22, one of ordinary skill in the art would incorporate copper in an

amount of between 60% to 100% of the maximum ion exchange capacity of Zones’s

zeolite. This results in a Cu/Al ratio of 0.3- 0.5. (Ex. 1008, Lercher Dec. at ¶¶ 99-

105.) Similarly, Zones teaches a preferred SAR value of 25-40 and includes a claim 2

with a specifically recited SAR value of at least 30. (Ex. 1004, Zones at 2:34; 7:34-35.)

Accordingly, the combination of Zones and Maeshima teach a catalyst falling within

the scope of the SAR range of 15-100 and the Cu/Al range of 0.25-0.50 of claim 1.

The combination of Zones and Maeshima also teach a zeolite catalyst that is

effective to promote the reaction of ammonia with nitrogen oxides to form nitrogen

and H2O selectively, as required by claim 1. As taught by Zones, the Zones catalyst is

useful for reducing oxides of nitrogen. (Ex. 1004, Zones at 1:54-57) Maeshima

expressly provides that its catalysts can be used in an SCR process to selectively

reduce nitrogen oxides in a gas stream containing oxygen. (Ex. 1002, Maeshima at

2:4-8.) Accordingly, the combination of Zones and Maeshima teaches a process for

the reduction of oxides of nitrogen contained in a gas stream falling squarely within

the scope of claim 1 of the ’203 patent.

Claims 14 and 26 require “adding a reductant to the gas stream.” Claims 15

and 27 specify that this reductant be “ammonia or an ammonia precursor.”

-12-

Maeshima explains that “ammonia” should be added to a gas stream during the

treatment process as a “reducing agent.” (Ex. 1002 at 2:9-64; 8:32-52.)

Claims 17-22 further limit the SAR and Cu/Al ratio of the claimed catalyst.

Claims 17 and 18 respectively require a SAR of “about 25 to about 40” or “about 30.”

Claims 19 and 20 respectively require a Cu/Al ratio of “0.30 to about 0.50” or “about

0.4.” Claim 21 requires both a SAR “from about 25 to about 40” and a Cu/Al ratio

“from about 0.3 to about 0.5,” while claim 22 requires a SAR of “about 30” and a

Cu/Al ratio of “about 0.4.” The combination of Zones and Maeshima discloses a

copper-loaded chabazite zeolite with SARs of 25-40, as described in Zones as a

preferred SAR range, as well as an exemplary SAR of 30. Maeshima’s zeolites have

Cu/Al ratios of 0.3 to 0.5, which matches the claimed ranges. (Ex. 1002, Maeshima at

4:44-54; 6:1-18; 8:60-9:11.)

One of ordinary skill in the art as of February 20071 would have been

motivated to utilize copper exchanged zeolites in processes for SCR in the presence

of ammonia using Zones’ higher SAR chabazite zeolites to arrive, with a reasonable

1 For purposes of this Petition, one of ordinary skill in the art is assumed to hold at

least a Master’s degree in chemistry or a related discipline, and have knowledge of the

structure and chemistry of molecular sieves like zeolites, including factors that impact

their stability and activity. (See Ex. 1008, Lercher Dec. at ¶ 69.)

-13-

expectation of success, at the subject matter of the claims. (Ex. 1008, Lercher Dec. at

¶¶ 145-154.) While Zones discloses all the other required claim limitations, including

the use of zeolites with the CHA crystal structure and the claimed SAR values in an

SCR process, it does not expressly reference zeolites with Cu/Al ratios within the

claimed ranges. Instead, it simply states that “the zeolite may contain a metal or metal

ions (such as . . . copper. . .)” without expressly stating an amount of copper to load.

(Ex. 1004, Zones at 1:61-63.) One of ordinary skill in the art would also understand

that it would be beneficial to follow Maeshima’s instruction to use a 60% to 100%

ion-exchange rate when adding copper to Zone’s zeolite. It was well known that

larger amounts of copper ions, including that achieved by copper loading up to the

100% ion-exchange rate, enhance the effectiveness of a zeolite when catalyzing the

reduction of nitrogen oxides. (See Ex. 1008, Lercher Dec. at ¶¶ 147-148.)

One of ordinary skill in the art would also have every reason to believe that use

of the copper content of Maeshima in the zeolites of Zones in an SCR process in the

presence of ammonia for treating combustion exhaust gases would succeed. (Id. at ¶

149.) In fact, as acknowledged in the ’203 patent’s Background section “[m]etal-

promoted zeolite catalysts, including, among others, iron-promoted and copper-

promoted zeolite catalysts, for the selective catalytic reduction of nitrogen oxides with

ammonia are known.” (Ex. 1001 at 1:34-37.) Maeshima explains that “at least one

metal cation having an activity of reducing nitrogen oxides” should be incorporated

into the zeolite via ion exchange. (Ex. 1002, Maeshima at 3:35-38.) Copper can be

-14-

used for this purpose. (Id. at 4:51-54.) According to Maeshima, zeolite catalysts

should be ion exchanged with the active metal in the amount of 60% to 100%. (Id. at

4:44-54.) Maeshima also explains that the catalyst should be impregnated with 2% to

10% active metal by weight. (Id. at 6:1-18.) And, Maeshima includes an example of

zeolite catalyst that includes 3% copper by weight. (Id. at 9:10-12.)

Zones and Maeshima are also in the same technical field (zeolite catalysts and

the use of these catalysts) and are directed to solving the same problem (catalyzing the

reduction of nitrogen oxides). (See Ex. 1008, Lercher Dec. at ¶ 152.) This would

further motivate the combination. (Id.) Additionally, the combination of Zones and

Maeshima amounts to nothing more than the application of one particular known

modification to catalytic zeolites with a known benefit—increasing the copper content

of aluminosilicate chabazite zeolites to improve catalytic activity as taught by

Maeshima—to the very materials to which this modification is meant to be applied—

Zones high SAR copper-promoted aluminosilicate zeolites for use in SCR processes.

(Id. at ¶ 153.) Thus, application of Maeshima to Zones would be considered nothing

more than a routine optimization and an obvious design choice. (Id. at ¶ 154.)

The combination of Zones and Maeshima teach aluminosilicate zeolites of the

chabazite structure for use in SCR processes in the presence of ammonia. The

combination of Zones and Maeshima also teach such a zeolite that falls within the

scope of the claimed ranges of SAR and Cu/Al ratio. While the particular limits of

those claimed SAR and Cu/Al ranges are not highlighted in the prior art, those

-15-

claimed ranges and the limits lend no patentable significance, but rather are either

insignificant or the obvious and natural result of routine design and optimization. As

shown in the attached declarations of Dr. Frank-Walter Schütze (Ex. 1015) and Dr.

Johannes Lercher (Ex. 1008), there is no criticality to the claimed SAR and Cu/Al

ranges, and the performance of zeolites falling both within the range and outside the

range are what would be fully expected by one of ordinary skill in the art from the

teachings of Zones and Maeshima. (See Ex. 1008, Lercher Dec. at ¶¶ 255-300.)

Claim charts further identifying the portions of Zones and Maeshima that

disclose the limitations of claims 1, 14, 15, 17-22, 26, and 27 are provided below:

Claim 1 Disclosure Zones and Maeshima A process for the reduction of oxides of nitrogen contained in a gas stream in the presence of oxygen wherein said process comprises

E.g., Zones, 1:54-67 (“The zeolite . . . [is] capable of catalyzing the reduction of the oxides of nitrogen, and may be conducted in the presence of a stoichiometric excess of oxygen. In a preferred embodiment, the gas stream is the exhaust stream of an internal combustion engine.”). E.g., Maeshima, 1:6-13 (“[T]his invention relates to a process . . . wherein the concentration of nitrogen oxides is reduced by catalytic reduction. … Nitrogen oxides are, of course, generally present in significant quantities in gaseous mixtures such as flue gases.”); 2:4-8 (“[N]itrogen oxides are removed from a gas containing the nitrogen oxides and oxygen by contacting the resulting gaseous mixture with a catalyst in the presence of ammonia to reduce the nitrogen oxides selectively.”); see also 2:9-64; 3:20-27; 8:15-52.

contacting the gas stream with a catalyst comprising

E.g., Zones, 1:54-60 (“Also provided . . . is an improved process for the reduction of oxides of nitrogen contained in a gas stream in the presence

-16-

of oxygen wherein said process comprises contacting the gas stream with a zeolite, the improvement comprising using as the zeolite a zeolite having a CHA crystal structure . . .”) E.g., Maeshima, 1:55-63 (“[T]he gaseous mixture is contacted with a zeolite catalyst….”); 2:4-8 (“[N]itrogen oxides are removed from a gas containing the nitrogen oxides and oxygen by contacting the resulting gaseous mixture with a catalyst….”); see also 1:6-13; 2:9-64; 3:20-27; 7:20-27; 8:15-52.

a zeolite having the CHA crystal structure

E.g., Zones, Abstract (“The present invention relates to zeolites having the crystal structure of chabazite (CHA) . . . to processes using the small crystallite CHA as a catalyst . . .); see also 1:7-15; 1:18-23; 1:24-30; 1:31-37; 1:54-61; 6:9-31; 8:15-22.

E.g., Maeshima, 3:33-35 (“As the catalyst that can be used for practicing the method of the present invention, there [is] . . .a crystalline aluminosilicate . . .”); 4:3-11 (“As the crystalline aluminosilicate, there may be used both natural and synthetic zeolites. … Suitable natural zeolites are: … Chabazite: (Ca, Na2) [Al2Si4O12].6H2O”); see also 1:60-63; 3:44; 3:67-68; 4:36-50; 6:1-4; 7:28-30; 8:1-4; 8:14-19; 8:60-62; 9:14-17.

and a mole ratio of silica to alumina from about 15 to about 100

E.g., Zones, 6:8-31 (“Example 1 Synthesis of SSZ-62 . . . The silica/alumina mole ratio [“SAR”] of the SSZ-62 product is 22.”); 2:30-34 (Table 1 shows typical ratios of SiO2 to Al2O3 of 20-50 and preferred ratios of 25-40); 4:6-9 (“SSZ-62 as prepared has a mole ratio of silicon oxide to aluminum oxide of greater than 10. SSZ-62 can also be made with a mole ratio of silicon oxide to aluminum oxide of at least 30.”); see also 1:7-10; 1:24-34; 1:46-67; 4:15-17. E.g., Maeshima, 3:68-4:3 (“In the present invention, [crystalline aluminosilicates] having … SiO2/Al2O3 molar ratios of above about 2 are preferred.”).

-17-

and an atomic ratio of copper to aluminum from about 0.25 to about 0.50.

E.g., Zones, 1:61-64 (“The zeolite may contain a metal or metal ions (such as cobalt, copper or mixtures thereof) capable of catalyzing the reduction of the oxides of nitrogen . . . .”); 4:36-40 (“The hydrogen, ammonium, and metal components can be ion-exchanged into the SSZ-62. The zeolites can also be impregnated with metals, or the metals can be physically and intimately admixed with the zeolite using standard methods known to the art.”); see also 4:25-30. E.g., Maeshima, 4:44-54 (“A zeolite catalyst having incorporated therein an active metal ion . . . it is generally preferred that the ion exchange ratio be about 60 to about 100%. … As the active metal, there is employed at least one member selected from copper….”); 6:1-18 (“The … active metal component … [that] reduc[es] nitrogen oxides is supported on the … aluminosilicate carrier by the impregnation treatment. Most preferred metals are copper…. The amount of the active metal component in the catalyst is a catalytically effective amount, … preferably about 2 to about 10% by weight. . .”); 8:60-9:11 (“Copper-supported zeolite catalyst was prepared … carrying 3 wt. % copper.”); see also 5:32-68; 6:66-7:13; 8:14-19.

Claim 14 Disclosure in Zones and Maeshima The process of claim 1, wherein See above discussion of claim 1.

the process further comprises adding a reductant to the gas stream.

E.g., Zones, 1:54-67 (“The zeolite . . . [is] capable of catalyzing the reduction of the oxides of nitrogen, and may be conducted in the presence of a stoichiometric excess of oxygen. In a preferred embodiment, the gas stream is the exhaust stream of an internal combustion engine.”). E.g., Maeshima, 1:55-63 (“[T]he gaseous mixture is contacted with a zeolite catalyst in the presence of the minimum amount of ammonia necessary to reduce the nitrogen oxides contained therein.”); 7:20-27 (“[A]mmonia is incorporated in the

-18-

exhaust gas in an amount not smaller than about 1.2 times, preferably about 1.2 to about 3 times, the stoichiometric amount necessary for reduction of nitrogen oxides contained in the exhaust gas. Then, the resulting gas mixture is contacted with a fixed bed of a zeolite catalyst…); see also 2:4-64; 8:15-59.

Claim 15 Disclosure in Zones and Maeshima The process of claim 14, wherein the reductant comprises ammonia or an ammonia precursor

See above discussion of claim 14.

Claim 17 Disclosure in Zones and Maeshima The process of claim 15, where See above discussion of claim 15. the mole ratio of silica to alumina is from about 25 to about 40.

See above discussion of the “mole ratio of silica to alumina from about 15 to about 100” limitation of claim 1.

Claim 18 Disclosure in Zones and Maeshima The process of claim 15, wherein


the mole ratio of silica to alumina is about 30.




the atomic ratio of copper to aluminum is from about 0.30 to about 0.50.

See above discussion of the “atomic ratio of copper to aluminum from about 0.25 to about 0.50” limitation of claim 1.



the atomic ratio of copper to aluminum is about 0.40.




the mole ratio of silica to alumina is from about 25 to

See above discussion of the “mole ratio of silica to alumina from about 15 to about 100” limitation of

-19-

about 40 claim 1. and the atomic ratio of copper to aluminum is from about 0.30 to about 0.50.




the mole ratio of silica to alumina is about 30


and the atomic ratio of copper to aluminum is about 0.40.


Claim 26 Disclosure in Zones and Maeshima A process for the reduction of oxides of nitrogen contained in a gas stream in the presence of oxygen wherein said process comprises adding a reductant to the gas stream and

See above discussion of the “process for the reduction of oxides of nitrogen contained in a gas stream in the presence of oxygen” limitation of claim 1 and the “process further comprises adding a reductant to the gas stream” limitation of claim 14.

contacting the gas stream containing the reductant with a catalyst comprising

See above discussion of the “ contacting the gas stream with a catalyst” limitation of claim 1 and the “process further comprises adding a reductant to the gas stream” limitation of claim 14.

a zeolite having the CHA crystal structure and

See above discussion of the “a zeolite having the CHA crystal structure” limitation of claim 1.

a mole ratio of silica to alumina from about 15 to about 150


and an atomic ratio of copper to aluminum from about 0.25 to about 1.




the reductant comprises ammonia or an ammonia precursor.

See above discussion of “[a] process for the reduction of oxides of nitrogen contained in a gas stream in the presence of oxygen wherein said process comprises adding a reductant to the gas

-20-

stream” limitation of claim 26.

B. Ground 2: Claims 2-13, 16, 23-25, and 28-31 are obvious under 35 U.S.C. § 103(a) over Zones, Maeshima, and Patchett.

The combination of Zones and Maeshima discloses all the elements of and

renders claims 1, 14, 15, 17-22, 26, and 27 obvious. Zones also states that, in a

preferred embodiment, the process is used in the gas stream of the exhaust system of

an internal combustion engine (Ex. 1004, Zones at 1:65-67). Claims 2-13, 16, 23-25,

and 28-31 include additional limitations relating to particular features of the process of

claims 1 and 26 when used with an internal combustion engine, all of which were well

known in the prior art and are disclosed by, for instance, Patchett.

Patchett generally relates to “emissions treatment system and method for

reducing nitrogen oxides (NOx) emissions in the exhaust stream produced from an

internal combustion engine.” (Ex. 1005, Patchett, at ¶ 1.) The system engages in

“Selective Catalytic Reduction (SCR) using ammonia (NH3) or an NH3 precursor” to

reduce nitrogen oxides. (Id. at ¶ 3.) Patchett’s system employs an “injector for

periodically metering ammonia or an ammonia precursor into an exhaust stream.” (Id.

at ¶ 18.) “Urea” can “serve as the ammonia precursor.” (Id. at ¶ 60.) Downstream

from the injector there is a “first substrate” that includes two catalytic zones on the

same substrate. (Id. at ¶ 18; see also Fig. 3A) The first zone includes a “first SCR

catalyst composition.” (Id. ¶ 18) The second zone includes a “NH3 destruction

catalyst.” (Id. at ¶ 19.) The substrate can be a “honeycomb flow-through substrate”

-21-

or, alternatively, “a honey-comb wall flow substrate.” (Id. at ¶ 23.) The “SCR catalyst

composition” can be “a copper-exchanged zeolite.” (Id. at ¶ 21.) The “NH3

destruction catalyst” can be “platinum.” (Id. at ¶¶ 19-20.) Patchett explains that using

a “zoned SCR-NH3 destruction catalyst in emission treatment systems” results in “a

space-saving benefit gained by integrating two catalyst functions on a single

substrate.” (Id. at ¶ 56.) An example of a substrate coated with both a copper-

exchanged zeolite and platinum is shown in Figure 4. (Id. at Fig. 4; ¶ 59.)

Patchett’s system can also employ a “second substrate” located downstream of

the NH3 injector but upstream of the “first substrate.” (Id. at ¶ 25; Figs. 3B, 3C.)

This second substrate is coated with a “second SCR catalyst” that can be the same as

or different from the SCR catalyst used to coat the first substrate. (Id. at ¶ 25.) Use

of two substrates coated with SCR catalysts allows the system to account for the

different exhaust temperatures throughout the exhaust system. (Id. at ¶ 62.) The

“second substrate” can be “honey-comb flow-through substrate,” an “open-cell foam

substrate,” or a “wall flow substrate.” (Id.) If a wall flow substrate is utilized, the

second substrate acts as a soot filter and “can remove greater than 80% of the

particulate matter including the soot fraction and SOF” (i.e., the “soluble organic

fraction” of the particulate). (Id. at ¶ 63.) Patchett notes that additional details

regarding an “SCR-coated wall flow substrate and its utility in the reduction of NOX

and particulate matter have been described … in co-pending U.S. patent application

Ser. No. 10/634,659.” (Id.) This application, which is incorporated by reference,

-22-

published as U.S. App. 2005/031514 (attached as Ex. 1006, “Patchett 514”).

Patchett’s system can also include an “oxidation catalyst” to remove unburned

gaseous hydrocarbons from the exhaust stream. (Ex. 1005, Patchett, at ¶ 64.)

Use of these various catalyst coated substrates allows Patchett’s system to

selectively “reduce NOx to N2 while simultaneously providing for at least partial

abatement of other components of the exhaust including unburned gaseous

hydrocarbons, CO, and the SOF” and converting any excess “ammonia to N2 and

H2O.” (Id. at ¶ 55; Fig. 3C.)

As explained above, Zones and Maeshima disclose the use of a catalyst with

the CHA crystal structure, SAR, and Cu/Al ratio required by the claims. While Zones

states a preference for use of its catalyst in a process to treat the exhaust of an internal

combustion engine, Zones and Maeshima do not make explicit reference to various

other engine use limitations required by claims 2-13, 16, 23-25, and 28-31. Patchett,

however, explains that copper-exchanged zeolite catalysts like those set forth in Zones

and Maeshima can be employed in SCR processes to treat the exhaust of “an internal

combustion engine” such as a “diesel engine[s].” (Ex. 1005, Patchett, at ¶¶ 1, 2, 5, 24,

26, 57, 112; Figs. 3A, 3B.) Patchett also discloses the additional limitations of claims

2-13, 16, 23-25, and 28-31 and one of ordinary skill in the art would consider these

claims to be obvious over Zones, Maeshima, and Patchett. (See Ex. 1008, Lercher

Dec. at ¶¶ 227-244.)

-23-

Claim 2 requires that the “gas stream” be “from an internal combustion

engine.” Again, Patchett repeatedly explains that its system is specifically designed to

treat diesel engine exhaust. (Ex. 1005, Patchett at ¶¶ 2, 5, 24, 57; Figs. 3A, 3B, 3C.)

Claim 2 also requires that the “catalyst” be disposed on a “honeycomb flow through

substrate.” This is also required by claims 23 and 29. Patchett expressly and

repeatedly discloses the use of this particular type of substrate coated with an SCR

catalyst. (See id. at ¶ 18, 23, 58.)

Claim 3 requires that the exhaust stream contain ammonia, and that the flow

through catalyst be coated with “CuCHA.” Patchett describes an SCR process that

employs ammonia as a reductant. (See Ex. 1005, Patchett, at ¶¶ 3, 18, 26-27.) And,

Patchett notes that its flow-through substrate can be coated with “a copper-

exchanged zeolite” (like that of Zones and Maeshima). (Id. at ¶¶ 21, 69.)

Claim 4 requires a “flow through substrate” with portions “coated with Pt and

CuCHA.” Patchett discloses this limitation. As discussed above, Patchett’s system

employs a “first substrate” that can be a flow-through substrate. This substrate has

“two catalytic zones; an inlet zone suited for the SCR reaction and an outlet zone

suited for the destruction (oxidation) of NH3.” (Id. at ¶ 54.) The inlet zone is coated

with an “SCR catalyst,” such as a “copper-exchanged zeolite.” (Id. at ¶ 21.) The

outlet zone is coated with a “NH3 destruction catalyst,” such as “platinum.” (Id. at ¶¶

19, 20.) An example of a flow-through substrate coated with both an SCR catalyst

like a copper-exchanged zeolite and a NH3 destruction catalyst like platinum is shown

-24-

in Figure 4. (See id. at Fig. 4; ¶ 59.) According to Patchett, use of this type of “zoned

SCR-NH3 destruction catalyst in emissions treatment systems is a space-saving benefit

gained by integrating two catalyst functions on a single substrate.” (Id. at ¶ 56.)

Claim 5, like claim 2, requires that the “gas stream” be “from an internal

combustion engine.” The claim also requires that the catalyst be “disposed on a

honeycomb wall flow substrate.” Claim 24 and 30 also require use of this type of

substrate. Again, Patchett relates to the treatment of the exhaust emitted by an

internal combustion engine. While some of Patchett’s embodiments employ a “flow-

through substrate” to form the SCR catalyst coated “first substrate,” Patchett also

notes that a “honeycomb wall flow substrate” can alternatively be used. (Id. at ¶ 23.)

Claim 6 depends on claim 5 and requires that the “exhaust gas stream further

comprises ammonia.” Additionally, the “wall flow substrate” must be “coated with

CuCHA.” As discussed above, Patchett discloses both a SCR process that employs

ammonia, and a “first substrate” (which can be a wall flow substrate) coated with a

copper-exchanged zeolite.

Claim 7 requires that “at least a portion of the wall flow substrate” be coated

with “Pt and CuCHA to oxidize ammonia in the exhaust gas stream.” Again, as noted

above, Patchett describes a system that employs a “first substrate” (which can be wall

flow substrate) with two catalytic zones. The first zone is coated with an SCR catalyst

such as a copper-exchanged zeolite. The second zone is coated with a NH3

destruction catalyst such as platinum. (Id. at ¶¶ 19-21, 23, 54, 56.)

-25-

Claim 8 requires both that the gas stream be “from an internal combustion

engine” and that a “catalyzed soot filter” be used. Patchett’s system includes a

“second substrate” upstream from the “first substrate” discussed above. (Id. at ¶ 25;

Figs. 3B, 3C.) This “second substrate” can be coated with the same SCR catalyst as

the first substrate. (Id. at ¶ 25.) Further, “the second substrate” can be a “wall flow

substrate” allowing the “system [to] …remove greater than 80% of the particulate

matter including the soot fraction and the SOF.” (Id. at ¶ 63.) Thus, Patchett’s

system can employ a catalyzed soot filter. Patchett also incorporates by reference

another application filed by the same group of inventors that further describes “[a]n

SCR-coated wall flow substrate and its utility in the reduction of NOx and particulate

matter.” (Id. ) This other reference details an “emission treatment system having … a

soot filter coated with a material effective in the Selective Catalytic Reduction (SCR)

of NOx by a reductant, e.g., ammonia.” (Ex. 1006, Patchett 514, at ¶¶ 1, 9, 43-44, 47,

68, 74.)

Claim 9 requires that the “catalyzed soot filter” be “upstream” of a nitrogen

oxide reducing catalyst. Patchett describes systems that include both an upstream

catalyzed soot filter (which it refers to as a “second substrate”) and another substrate

with a nitrogen oxide reducing SCR catalyst (which it refers to as a “first substrate”)

downstream of the soot filter. (See Ex. 1005, Patchett at ¶¶ 25, 26-29; Figs. 3B, 3C.)

Claim 10 requires that the “catalyzed soot filter” be “downstream” of a nitrogen oxide

reducing catalyst. As noted above, Patchett explains that its system includes an

-26-

upstream “second substrate” and a downstream “first substrate.” Both of these

substrates are coated with a nitrogen oxide reducing SCR catalyst. (Id. at ¶ 25.)

Patchett also explains that the downstream “first substrate” can be a “wall flow

substrate,” and that this type of substrate acts as soot filters. (Id. at ¶¶ 23, 63.) This is

all claim 10 requires. Further, even if Patchett disclosed only the use of an upstream

soot filter, reversing the order of Patchett’s catalyst coated substrates such that the

catalyzed soot filter was located downstream would have been nothing more than an

obvious design choice. (See Ex. 1008, Lercher Dec. at ¶ 200.)

Claims 11, 12, and 13 respectively require use of “diesel oxidation catalyst,” a

“diesel oxidation catalyst” “upstream” of a nitrogen oxide reducing catalyst, and both

a “diesel oxidation catalyst” and a “catalyzed soot filter” upstream of a nitrogen oxide

reducing catalyst. Claims 25 and 31 require a similar arrangement of catalysts.

Patchett discloses use of the claimed oxidation catalyst, catalyzed soot filter, and a

second SCR catalyst arranged in series in this order to treat an exhaust gas stream.

(See id. at ¶¶ 63-64, Fig. 3C.) Claim 16 and 28 require the use of “urea” as a

“reductant.” Patchett employs urea. (See id. at ¶¶ 3, 60.)

One of ordinary skill in the art as of February 2007 would have been motivated

to utilize the high silica, copper promoted zeolites with the CHA crystal structure set

forth in Zones and Maeshima as part of Patchett’s SCR system to arrive, with a

reasonable expectation of success, at the claimed subject matter. (See Ex. 1008,

Lercher Dec. at ¶¶ 227-244.) As explained above, Patchett describes the use of a

-27-

copper-exchanged zeolite as a catalyst in an SCR process to reduce nitrogen oxides in

diesel engine exhaust. The only difference between Patchett and the subject matter of

the claims is that Patchett does not specifically reference zeolites with the CHA crystal

structure or the claimed SARs or Cu/Al ratios. Patchett does, however, identify the

characteristics of the zeolite that should be employed. For instance, catalytic materials

for use with Patchett must be suitable for use in connection with an internal

combustion engine. (Id. at ¶¶ 1, 66.) Copper is preferably present in an amount of

“about 1 to 5 percent by weight.” (Id. at ¶ 65.) Patchett also cites to other references

that include examples of “[s]uitable SCR catalyst compositions.” (Id.) The zeolites in

these references have a SAR greater than 10. (See, e.g., Ex. 1010, U.S. 4,961,917 to

Byrne at Abstract, 2:26-35; Ex. 1011, U.S. 5,516,497 to Speronello et al at Abstract,

6:3-7:3.)

Zones and Maeshima describe this very type of catalytic material. The zeolites

of Zones and Maeshima can have a SAR of 20 - 50 (see Ex. 1004, at 2:34), include

from 60% to 100% of the theoretical maximum exchange amount of copper or

approximately 2-10% copper by weight (see Ex. 1002, at 4:44-54; 6:1-18; 9:10-12), and

can be used in an internal combustion engine (see Ex. 1004 at 1:65-67). Thus, as of

February 2007, one of ordinary skill in the art would be directed to the catalytic

material of Zones and Maeshima when attempting to implement Patchett’s process,

rendering the combination of these references particularly obvious and straight

forward. (See Ex. 1008, Lercher Dec. at ¶¶ 232-237.)

-28-

Zones, Maeshima, and Patchett are also in the same technical field (catalysts

and catalytic processes) and are directed to solving the same problem (catalyzing the

reduction of nitrogen oxides in gas streams). (See id. at ¶ 238.) This would further

motivate combination. (Id.) Additionally, the combination of Zones, Maeshima, and

Patchett amounts to nothing more than the application of one particular known type

of catalytic material with known benefits—the high silica, copper promoted chabazite

zeolites of Zones and Maeshima—in a process that calls for the use of this very type

of material—Patchett’s SCR process for reducing nitrogen oxides in engine exhaust.

(Id. at ¶¶ 239-240.)

Once the process of Zones and Maeshima is utilized in an internal combustion

engine as described in Patchett, the other limitations set forth by claims 2-13, 16, 23-

25, and 28-31, including the use of catalyst coated honeycomb flow through

substrates, catalyst coated honeycomb wall flow substrates, soot filters, oxidation

catalysts, urea to produce NH3 for use in an SCR reaction, and substrates coated with

both a copper-exchanged zeolite to reduce nitrogen oxides and platinum to oxidize

excess NH3 are only obvious design choices. (See id. at ¶ 240.) As evinced by

Patchett, these various claim features were commonly known as of February 2007,

and were routinely included as part of a system to treat engine exhaust. (See id. at ¶

241.)

One of ordinary skill in the art would also have a reasonable expectation of

success when combining Zones, Maeshima, and Patchett. (See id. at ¶ 242.) In

-29-

particular, Zones, Maeshima and Patchett all generally relate to catalytic materials that

can be used as part of an SCR process. (Compare Ex. 1004, Zones, 1:61-67 and Ex.

1002, Maeshima, at 2:9-21, 3:33-38; and Ex. 1005, Patchett, at ¶¶ 1, 18-34.) Further,

Zones explains that its catalyst can be used in an internal combustion engine. (Ex.

1004, Zones, at 1:61-67.) This would indicate to one of ordinary skill in the art that

the zeolites of Zones and Maeshima have applicability in and would be successfully

used with Patchett. (See Ex. 1008, Lercher Dec. at ¶¶ 243-244.)

Claim charts further identifying the portions of Zones, Maeshima, and Patchett

disclosing the limitations of claims 2-13, 16, 23-25, and 28-31 are provided below:

Claim 2 Disclosure of Zones, Maeshima, and Patchett The process of claim 1, wherein

See discussion of Zones and Maeshima and claim 1 in Section V(A) above.

the gas stream is an exhaust gas stream from an internal combustion engine and

E.g., Patchett ¶ 1 (“The present invention relates to an emissions treatment system and method for reducing nitrogen oxides (NOx) emissions in the exhaust stream produced from an internal combustion engine.”); see also Abstract; ¶¶ 24, 26-29; Figs. 3A, 3B, 3C.

the catalyst is disposed on a honeycomb flow through substrate.

E.g., Patchett ¶ 18 (“The treatment system also has a first substrate with a first SCR catalyst composition…. The first substrate has an inlet end, an outlet end, a length extending between the inlet end to the outlet end, wall elements and a plurality of passages defined by the wall elements. The first SCR catalyst composition is disposed on the wall elements from the inlet end toward the outlet end….”); ¶ 23 (“The first substrate is typically a honeycomb flow-through substrate”); ¶ 58 (“FIGS. 1 and 2 illustrate a typical honeycomb-type flow through substrate that can be used in the articles of the invention. The honeycomb flow through substrate 10 has an outer surface 12, an inlet end 14 and an outlet end 14'. There is a plurality of parallel passages 16

-30-

defined by the substrate's wall elements 18. Each passage has a corresponding inlet and outlet. The catalyst is coated on the wall elements so that the gases flowing through the passages contact the catalyst.”); ¶ 83 (“The carriers used for the first substrate should be relatively inert with respect to the catalytic composition dispersed thereon. … In one preferred embodiment, the carriers are preferably of the type sometimes referred to as honeycomb or monolithic carriers, comprising a unitary cylindrical body having a plurality of fine, substantially parallel gas flow passages extending through and connecting both end-faces of the carrier to provide a ‘flow-through’ type of carrier.”); see also ¶¶ 25, 32, 87, 95, 101-102; Figs. 1, 2, 3A, 3B.

Claim 3 Disclosure of Zones, Maeshima and Patchett The process of claim 2, wherein


the exhaust gas stream further comprises ammonia and

E.g., Patchett ¶ 18 (“The treatment system has an injector for periodically metering ammonia or an ammonia precursor into an exhaust stream.”); ¶¶ 26-27 (“[T]he invention relates to a method for reducing NOx emissions in the exhaust stream produced from an internal combustion engine. The method includes: (a) metering at periodic intervals ammonia or an ammonia precursor into the exhaust stream….”); see also Abstract; ¶¶ 3-8, 33, 60; Figs. 3A, 3B, 3C.

at least a portion of the flow through substrate is coated with CuCHA.

See above discussion of Zones and Maeshima and the “zeolite having the CHA crystal structure and a mole ratio of silica to alumina from about 15 to about 100 and an atomic ratio of copper to aluminum from about 0.25 to about 0.50” limitation of claim 1 in Section V(A). E.g., Patchett ¶ 21 (“In other embodiments, the first SCR catalyst composition contains a copper-exchanged zeolite.”); ¶ 69 (“In one preferred embodiment of the invention, the SCR catalyst composition that is coated on the zone-coated monolith is a copper-exchanged zeolite.”); see also ¶¶ 65-70. See also above discussion of Patchett and “the catalyst is disposed on a honeycomb flow through substrate” limitation of claim 2.

-31-



at least a portion of flow through substrate is coated with Pt and CuCHA to oxidize ammonia in the exhaust gas stream.

See above discussion of “the catalyst is disposed on a honeycomb flow through substrate” limitation of claim 2 and the “at least a portion of the flow through substrate is coated with CuCHA” limitation of claim 3. See also Patchett ¶ 18 (“The treatment system also has a first substrate with a first SCR catalyst composition…. The first substrate has an inlet end, an outlet end, a length extending between the inlet end to the outlet end, wall elements and a plurality of passages defined by the wall elements. The first SCR catalyst composition is disposed on the wall elements from the inlet end toward the outlet end….”); ¶ 19 (“The first substrate also has an NH3 destruction catalyst composition comprising a platinum group metal component dispersed on a refractory metal oxide, wherein the NH3 destruction catalyst is disposed on the wall elements from the outlet end toward the inlet end….”); ¶ 20 (“The platinum group metal component can be selected from the group consisting of platinum, palladium, rhodium, iridium and combinations thereof. Preferably, the NH3 destruction catalyst contains a platinum component.”); ¶ 21 (“In other embodiments, the first SCR catalyst composition contains a copper-exchanged zeolite.”); ¶ 54 (“The catalyst article is composed of a coated substrate having two catalytic zones; an inlet zone suited for the SCR reaction and an outlet zone suited for the destruction (oxidation) of NH3.”); ¶ 56 (“Another desirable feature of employing the zoned SCR-NH3 destruction catalyst in emissions treatment systems is a space-saving benefit gained by integrating two catalyst functions on a single substrate.”); ¶ 59 (“FIG. 4 depicts a single passage of a zoned coated honeycomb flow through substrate 10 having an inlet end 14, an outlet end 14', wall elements 18, a passage defined by the wall elements 16, an inlet zone 20 and a outlet zone 21. The inlet zone has an SCR catalyst composition 28 disposed on the wall elements …. The outlet zone has an NH3 destruction catalyst composition 29 disposed on the wall elements…); ¶ 69 (“In one preferred embodiment of the invention, the SCR catalyst composition

-32-

that is coated on the zone-coated monolith is a copper-exchanged zeolite.”); ¶¶ 71-72 (“The NH3 destruction catalyst is composed of a platinum group metal component dispersed on a refractory inorganic oxide support. … [T]he platinum group metal component is effective for the oxidation of ammonia to form N2…. Most preferably the platinum group metal component is a platinum component.”); see also ¶¶ 15, 30-31, 55, 69, 81, 87, 90, 99; Fig. 4.

Claim 5 Zones, Maeshima and Patchett The process of claim 1, wherein


the gas stream is an exhaust gas stream from an internal combustion engine

See above discussion of the “gas stream is an exhaust gas stream from an internal combustion engine” limitation of claim 2.

and the catalyst is disposed on a honeycomb wall flow substrate.

E.g., Patchett ¶ 23 (“[I]n some embodiments of the emissions treatment system, the first substrate is a honeycomb wall flow substrate.”); see also ¶¶ 25, 32, 63, 84. See also above discussion of Patchett and “the catalyst is disposed on a honeycomb flow through substrate” limitation of claim 2.

Claim 6 Disclosure Zones, Maeshima and Patchett The process of 5, wherein


the exhaust gas stream further comprises ammonia

See discussion of the “the exhaust gas stream further comprises ammonia” limitation of claim 3.

and at least a portion of the wall flow substrate is coated with CuCHA.

See above discussion of Zones and Maeshima and the “zeolite having the CHA crystal structure and a mole ratio of silica to alumina from about 15 to about 100 and an atomic ratio of copper to aluminum from about 0.25 to about 0.50” limitation of claim 1 in Section V(A). See also above discussion of Patchett and “the catalyst is disposed on a honeycomb flow through substrate” limitation of claim 2 and the “at least a portion of the

-33-

flow through substrate is coated with CuCHA” limitation of claim 3. See also, Patchett ¶ 23 (“[I]n some embodiments of the emissions treatment system, the first substrate is a honeycomb wall flow substrate.”).



at least a portion of the wall flow substrate is coated with Pt and CuCHA to oxidize ammonia in the exhaust gas stream.

See above discussion of the “at least a portion of flow through substrate is coated with Pt and CuCHA to oxidize ammonia in the exhaust gas stream” limitation of claim 4. See also, Patchett ¶ 23 (“[I]n some embodiments of the emissions treatment system, the first substrate is a honeycomb wall flow substrate.”).

Claim 8 Disclosure of Zones Maeshima, and Patchett The process of claim 1, wherein



See above discussion of “the gas stream is an exhaust gas stream from an internal combustion engine” limitation of claim 5.

and the process further comprises contacting the exhaust gas stream with a catalyzed soot filter.

E.g., Patchett ¶ 25 (“In a preferred embodiment of the invention, the emission treatment system has a second substrate interposed and in fluid communication with the injector and the first substrate. The second substrate … [has] a second SCR catalyst composition. The first and second SCR catalyst compositions used to coat the first and second substrates, respectively, may be the same or different. … [I]n one preferred embodiment of the invention, the first and second SCR catalyst compositions are the same.”); ¶ 63 (“In the embodiment depicted in FIG. 3B, the second substrate 27 can either be a honeycomb flow through substrate, an open cell foam substrate or a honeycomb wall flow substrate. In configurations of this embodiment where the second substrate is a wall flow substrate or a high efficiency open cell foam filter, the system can remove greater than 80% of the

-34-

particulate matter including the soot fraction and the SOF. An SCR-coated wall flow substrate and its utility in the reduction of NOx and particulate matter have been described, for instance, in co-pending U.S. patent application Ser. No. 10/634,659, filed Aug. 5, 2003, the disclosure of which is hereby incorporated by reference.”); see also ¶¶ 62, 84. See also Ex. 1006, Patchett 514 ¶ 1 (“The present invention relates to an emission treatment system having … a soot filter coated with a material effective in the Selective Catalytic Reduction (SCR) of NOx by a reductant, e.g., ammonia.”); ¶ 43 (“The emission treatment system uses an integrated soot filter and SCR catalyst to significantly minimize the weight and volume required for the emissions system.”); ¶ 47 (“The exhaust stream with the added ammonia is conveyed to the soot filter 12 which is coated with an SCR catalyst composition.”); see also ¶¶ 6, 12, 16, 18-19, 26-27, 43-45, 56-61, 68, 74; Figs. 1A, 1B, 3.

Claim 9 Disclosure of Zones, Maeshima and Patchett The process of claim 8, wherein


said catalyzed soot filter is upstream of said catalyst.

E.g., Patchett ¶ 25 (“In a preferred embodiment of the invention, the emission treatment system has a second substrate interposed and in fluid communication with the injector and the first substrate.”); ¶¶ 26-29 (“[T]he invention relates to a method for reducing NOx emissions in the exhaust stream produced from an internal combustion engine. The method includes: … (a) metering at periodic intervals ammonia or an ammonia precursor into the exhaust stream; and … (b) passing the exhaust stream through a first substrate comprising a first SCR catalyst composition. … Optionally, the method further includes (a1) passing the exhaust stream through a second substrate after (a) and prior to (b).”); see also Figs. 3B, 3C.



said catalyzed soot filter is

E.g., Patchett ¶ 23 (“[I]n some embodiments of the emissions treatment system, the first substrate is a

-35-

downstream of said catalyst.

honeycomb wall flow substrate.”); ¶ 25 (“[T]he emission treatment system has a second substrate interposed and in fluid communication with the injector and the first substrate. The second substrate … [has] a second SCR catalyst composition. The first and second SCR catalyst compositions used to coat the first and second substrates, respectively, may be the same or different. … [I]n one preferred embodiment of the invention, the first and second SCR catalyst compositions are the same.”); ¶ 63 (noting that when “a wall flow substrate or a high efficiency open cell foam filter,” is used, “the system can remove greater than 80% of the particulate matter including the soot fraction and the SOF.”); see also Figs. 3B, 3C. See also above discussion of the “catalyzed soot filter is upstream of said catalyst” of claim 9.

Claim 11 Disclosure of Zones, Maeshima, and Patchett The process of claim 8,


further comprising contacting the exhaust gas stream with a diesel oxidation catalyst.

E.g., Patchett ¶ 64 (“In some applications it may be advantageous to include an oxidation catalyst upstream of the site of ammonia/ammonia precursor injection. For instance, in the embodiment depicted in FIG. 3C an oxidation catalyst is disposed on a catalyst substrate 34. … In this embodiment, the exhaust stream is first conveyed to the catalyst substrate 34 where at least some of the gaseous hydrocarbons, CO and particulate matter are combusted to innocuous components.”); see also ¶¶ 14, 15, 16; Fig. 3C.



said diesel oxidation catalyst is upstream of said catalyst comprising a zeolite having the CHA crystal structure.

E.g., Patchett ¶ 64 (noting that the “oxidation catalyst is disposed on a catalyst substrate 34” which is “upstream of the site of ammonia / ammonia precursor injection” such that the “exhaust stream is first conveyed to the catalyst substrate 34”); see also Fig. 3C.



-36-

said diesel oxidation catalyst and catalyst soot filter are upstream from said catalyst comprising a zeolite having the CHA crystal structure.

See above discussion of the “catalyzed soot filter is upstream of said catalyst” limitation of claim 9 and “said diesel oxidation catalyst is upstream of said catalyst comprising a zeolite having the CHA crystal structure” limitation of claim 12. See also e.g., Patchett ¶¶ 63-64 and Fig. 3C (discussing and showing “oxidation catalyst … disposed on a catalyst substrate 34” followed by the “SCR catalyst” coated “second substrate 27” and “first substrate 12” arranged in series).



the reductant comprises urea.

E.g., Patchett ¶ 60 (“Aqueous urea shown on one line 25 can serve as the ammonia precursor which can be mixed with air on another line 26 in a mixing station 24. Valve 23 can be used to meter precise amounts of aqueous urea which are converted in the exhaust stream to ammonia.”); see also ¶ 3.



the catalyst is disposed on a honeycomb flow-through substrate.

See above discussion of the “catalyst is disposed on a honeycomb flow through substrate” limitation of claim 2.



the catalyst is disposed on a honeycomb wall flow filter substrate.

See above discussion of the “catalyst is disposed on a honeycomb wall flow substrate” limitation in claim 5.




See above discussion of the “the gas stream is an exhaust gas stream from an internal combustion engine” limitation in claim 5.

-37-

and the process further comprises contacting the exhaust gas stream with a catalyzed soot filter and an oxidation catalyst, wherein

See above discussion of the “contacting the exhaust gas stream with a catalyzed soot filter” limitation of claim 8, and “contacting the exhaust gas stream with a diesel oxidation catalyst” limitation of claim 11.

the oxidation catalyst is upstream of the catalyst comprising a zeolite with the CHA crystal structure and the catalyzed soot filter are upstream from the catalyst comprising a zeolite with the CHA crystal structure.

See above discussion of the “diesel oxidation catalyst and catalyzed soot filter are upstream from said catalyst comprising a zeolite having the CHA crystal structure” limitation of claim 13.



the reductant comprises urea.

See above discussion of “the reductant comprises urea” limitation of claim 16.



the catalyst is disposed on a honeycomb flow-through substrate.

See above discussion of the “catalyst is disposed on a honeycomb flow through substrate” limitation of claim 2.



the catalyst is disposed on a honeycomb wall

See above discussion of the “catalyst is disposed on a honeycomb wall flow substrate” limitation in claim 5.

-38-

flow filter substrate. Claim 31 Disclosure of Zones, Maeshima, and Patchett

The process of claim 27, wherein


the gas stream is an exhaust gas stream from an internal combustion engine and

See above discussion of the “the gas stream is an exhaust gas stream from an internal combustion engine” limitation in claim 5.

the process further comprises contacting the exhaust gas stream with a catalyzed soot filter and an oxidation catalyst, wherein

See above discussion of the “contacting the exhaust gas stream with a catalyzed soot filter” limitation of claim 8, and “contacting the exhaust gas stream with a diesel oxidation catalyst” limitation of claim 11.

the oxidation catalyst and the catalyzed soot filter are upstream from the catalyst comprising a zeolite with the CHA crystal structure.

See above discussion of the “diesel oxidation catalyst and catalyzed soot filter are upstream from said catalyst comprising a zeolite having the CHA crystal structure” limitation of claim 13.

VI. PURPORTED SECONDARY CONSIDERATIONS

During the course of an inter partes reexamination of U.S. Patent No. 7,601,662

(“the ’662 patent”), which is related to the ’203 patent, the Patent Owner pointed to

purported secondary considerations of non-obviousness. For instance, the Patent

Owner submitted a declaration arguing that use of copper promoted zeolite with a

SAR greater than 15 and a Cu/Al ratio greater than 0.25 produces “unexpected

results,” including “low temperature NOx performance after exposure to

hydrothermal conditions, and that the Cu/zeolite formulation provided high NOx

-39-

conversion in the 200 o to 350 oC temperature range.” (Ex. 1009, 2/8/11 Dec. of Dr.

Gary Haller from Inter Partes Reex. No. 95/001,453, at ¶¶ 33-34.) The patent owner

submitted another declaration arguing that “many researchers and those skilled in the

art” believed that “Cu-zeolites could not be used as catalysts for the SCR of NOx

because of the inability to maintain NOx conversion upon exposure to hydrothermal

conditions.” (Ex. 1009, 1/20/11 Dec. of Stanley Roth, Ph.D. from Inter Partes Reex.

No. 95/001,453, at ¶ 8.) And, the materials set forth in the specification of the ’203

patent purportedly “met a long-standing and previously unfilled need – a metal zeolite

that exhibits both excellent NOx conversion over a wide temperature range, including

the range of 200 o to 350 oC, and that maintains high conversion after exposure to

hydrothermal conditions.” (Id. at ¶ 11.) An award received by the named inventors

was also referenced. (Id. at ¶ 12.)

As an initial matter, even if true, none of these purported secondary

considerations overcome the strong prima facie showing of obviousness of claims 1-31

of the ’203 patent as described above. And, any positive testing results, feedback, or

awards purportedly obtained by the Patent Owner related only to a limited subset of

catalysts, and not catalysts with SARs and Cu/Al ratios spanning the claimed range.

Thus, none of this evidence of “secondary considerations” is commensurate in scope

with the claimed subject matter. See In re Huai-Hung Kao, 639 F. 3d 1057, 1068 (Fed.

Cir. 2011). Further, the results achieved by the use of the process of claims 1-31 are

not “unexpected” in view of the prior art, and there was no “long standing” or

-40-

“unfilled need” for the claimed subject matter. In particular, as described above, it

was known in the prior art that adding copper to a high SAR aluminosilicate CHA

zeolite improved the zeolite’s catalytic reduction of oxides of nitrogen. (Ex. 1004,

Zones, at 1:61-67.) In view of this, the ’203 patent does nothing more than combine

known, prior art catalytic materials with known benefits to produce expected and

obvious results. (See Ex. 1008, Lercher Dec. at ¶¶ 251-254.)

VII. THE CLAIMED RANGES DO NOT PRODUCE UNEXPECTED RESULTS AND ARE NOT CRITICAL

As described above, the prior art discloses SCR processes for reducing nitrogen

oxides in a gas stream that employ a catalyst including a zeolite with the CHA crystal

structure, and Cu/Al ratios and SARs overlapping the claimed ranges. “[W]here,” as

here, “the general conditions of a claim are disclosed in the prior art, it is not

inventive to discover the optimum or workable ranges by routine experimentation.”

In re Applied Materials, 692 F.3d 1289, 1295 (Fed. Cir. 2012) (quoting In re Aller, 220

F.2d 454, 456 (C.C.P.A. 1955)). “A prima facie case of obviousness typically exists

when the ranges of a claimed composition overlap the ranges disclosed in the prior

art.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Woodruff, 919

F.2d 1575, 1578 (Fed. Cir. 1990) (holding that claims requiring “more than 5% to

about 25%” carbon monoxide were obvious over a prior art reference disclosing

“about 1-5%” carbon monoxide); In re Malagari, 499 F.2d 1297, 1303 (C.C.P.A. 1974)

(holding that claims requiring 0.030-0.070% carbon were rendered prima facie

-41-

obvious by prior art disclosing 0.020-0.035% carbon); In re Geisler, 116 F.3d 1465,

1469 (Fed. Cir. 1997) (finding claims requiring a coating that was 100-600 Angstroms

thick to be obvious over a prior art reference disclosing a coating 50-100 Angstroms

thick). This rule applies whenever the claimed ranges involve “results-effective

variables.” In re Applied Materials, 692 F.3d at 1295. A “results-effective variable” is a

variable that is known to affect a particular desirable property or result. See id. at

1295-96. “A recognition in the prior art that a property is affected by the variable is

sufficient to find the variable result-effective.” Id. at 1297.

Both the Cu/Al ratio and the SAR of a catalyst are “results-effective variables.”

In particular, as of February 2007, it was known that incorporation of copper ions

into a zeolite allows that zeolite to be used in an SCR process for the reduction of

nitrogen oxides. (See Ex. 1008, Lercher Dec. at ¶¶ 262-267.) It was also known that

increasing the relative amount of copper ions incorporated into the zeolite results in

improved nitrogen oxide reducing performance. (See id. at ¶¶ 267-268.) And, it was

known that the maximum amount of copper that can be incorporated into a zeolite

via ion-exchange is approximately 1 mole of Cu per mole of Al2O3 (producing a

Cu/Al ratio of 0.5). (See id. at ¶ 269.) This is reflected in Maeshima, which instructs

that a “catalytically effective amount” of copper should be incorporated into a zeolite,

including an amount sufficient to produce a Cu/Al ratio in the range of 0.3 to 0.5.

(Ex. 1002, Maeshima, 1:27-33, 4:44-60, 6:13-17.) Another prior art reference,

Dedecek et al., “Siting of the Cu+ Ions in Dehydrated Ion Exchanged Synthetic and

-42-

Natural Chabasites: a Cu+ Photoluminescence Study” Microporous and Mesoporous

Materials, Vol. 32, pp. 63-74 (1999) (Exhibit 1007) likewise explains that it is the

incorporation of “Cu+ ions” that gives rise to a zeolite’s nitrogen oxide reducing

capabilities. (Id. at p. 64.) Other prior art references also explain that increasing the

amount of copper ions in a zeolite results in a steady, almost linear increase in

performance up to the maximum ion-exchange capacity of the zeolite. (See Ex. 1012,

Ishihara et al., “Copper Ion-Exchanged SAPO-34 as a Thermostable Catalyst for

Selective Reduction of NO with C3H6,” 169 Journal of Catalysis 93-102 at p. 95, Fig. 4

(1997) (showing a graph of “NO conversion … as a function of the amount of Cu

ion-exchanged” and noting that “conversion of NO to N2 increases with increasing

amount of Cu ion-exchanged”); see also Ex. 1008, Lercher Dec. at ¶¶ 262-269.)

Likewise, it was known that increasing the SAR of a zeolite has an impact

hydrothermal stability. (See Ex. 1008, Lercher Dec. at ¶¶ 286-289.) In particular, it

was known that as the SAR of a zeolite increased, stability (and thus nitrogen oxide

reduction performance after aging) would increase in a steady fashion. (See id.) For

instance, U.S. Patent No. 4,503,023 to Breck (Ex. 1003) explains that because

“stability quite obviously is, in part at least, a function of the SiO2/Al2O3 ratio of

zeolites,” “zeolites having higher” SARs should be employed. (Id. at 3:10-14; 47:44-

50.) This is also recognized by other prior art references. (See, e.g., Ex. 1013, U.S.

Patent No. 4,297,328 to Ritscher et al., at 5:49-53 (noting that “high-silica zeolites”

provide “thermal and hydrothermal stabilities” that are “often hundreds of degrees

-43-

Centigrade higher than those of conventional zeolites….”); Ex. 1014, Chung, S.Y. et

al., “Effect of Si/Al Ratio of Mordenite and ZSM-5 Type Zeolite Catalysts on

Hydrothermal Stability for NO Reduction by Hydrocarbons,” Studies in Surface

Science and Catalysis, vol. 130, pp. 1511-1516 at 1513 (2000) (noting that “the

hydrothermal stability of zeolite catalysts for NO reduction under the lean NOx

condition primarily depends on the Si/Al ratio of the catalyst, despite the differences

in the zeolite structure.”); see Ex. 1008, Lercher Dec. at ¶¶ 286-289.)

“The outcome of optimizing a result-effective variable” is patentable only if

“the claimed ranges are ‘critical’ and ‘produce a new and unexpected result which is

different in kind and not merely in degree from the results of the prior art.’” In re

Applied Materials, 692 F.3d at 1297 (quoting Aller, 220 F.2d at 456.) Further, any

purportedly “unexpected results must be commensurate in scope with the claimed

range.” In re Peterson, 315 F. 3d at 1330.

Here, there is nothing unexpected about the resulting properties from the

claimed Cu/Al ratios and SARs. (See generally Ex. 1008, Lercher Dec. at ¶¶ 255-300.)

Thus, the claimed Cu/Al ratios and SARs are not critical and do not distinguish the

’203 patent’s claims from the prior art. This petition is accompanied by the

Declaration of Dr. Frank-Walter Schütze (Ex. 1015). Dr. Schütze’s declaration

describes the testing performed on catalysts with SARs and Cu/Al ratios both within

and outside the claimed ranges. (See Ex. 1015 at ¶¶ 4-17.) Dr. Schütze’s data shows

-44-

that, just as one of ordinary skill would expect in view of the disclosures of the prior

art, increasing the Cu/Al ratio from a value below to a value within the claimed range

results in a predictable, steady increase in nitrogen oxide conversion performance of a

catalyst. (See Ex. 1008, Lercher Dec. at ¶¶ 273-282; see also Ex. 1015, Schütze Dec. at

¶¶ 18-27, Exs. A, B.) There is no significant or unexpected increase or change in

performance at the bounds of the claimed Cu/Al ratio ranges. (See Ex. 1008, Lercher

Dec. at ¶¶ 276, 277, 278, 280, 282; see also Ex. 1015, Schütze Dec. at ¶ 28, Exs. A, B.)

Indeed, at some temperatures and SARs, there is almost virtually no difference

between a Cu/Al ratio outside the claimed range and a ration within the claimed

range. (See id. at ¶¶ 279, 283-284.) Similarly, Dr. Schütze’s data shows that increasing

the SAR of a catalyst from a value below to a value within the claimed range also

produces the type of steady, linear increase in stability and thus nitrogen oxide

reducing performance after aging that was described in and would be predicted in

view of the prior art. (See id. at ¶¶ 290-292.) And, as was the case with the claimed

Cu/Al ratio, there was no significant or unexpected increase or change in

performance at the bounds of the SAR claimed ranges. (See id. at ¶¶ 292, 296.) Since

there is nothing about the claimed ranges that is critical or unpredictable, the claims of

the ’203 patent are all obvious.

-45-

VIII. CONCLUSION

For the foregoing reasons, claims 1-31 of the ’203 patent are unpatentable.

Accordingly, Petitioner respectfully requests cancellation of each of the claims 1-31 of

the ’203 patent.

Dated: April 30, 2015 /Elizabeth Gardner / Elizabeth Gardner (Reg. No. 36,519)

Kenyon & Kenyon LLP One Broadway New York, NY 10004 Tel: 212.425.7200 Fax. 212.425-5288 Email: [email protected]

CERTIFICATE OF SERVICE

The undersigned hereby confirms that the foregoing Petition for Inter Partes

Review of U.S. Patent No. 8,404,203 and associated Exhibits 1001-1016 were caused

to be served on April 30, 2015, via Express Mail upon the following:

Servilla Whitney LLC 33 Wood Avenue South Second Floor, Suite 210 Iselin NJ 08830 BASF Corporation 100 Park Avenue Florham Park NJ 07932

/Elizabeth Gardner/ Elizabeth Gardner (Reg. No. 36,519) Kenyon & Kenyon LLP One Broadway New York, NY 10004-1004 Tel: 212-425-7200

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO ...-ii- LISTING OF EXHIBITS Exhibit 1001 U.S....

Documents

Transcript of PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO ...-ii- LISTING OF EXHIBITS Exhibit 1001 U.S....