Ex Parte Antozzi et alDownload PDFPatent Trial and Appeal BoardNov 27, 201713704718 (P.T.A.B. Nov. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/704,718 12/17/2012 Antonio Lorenzo Antozzi 267.150 6626 20311 7590 11/29/2017 LUCAS & MERCANTI, LLP 30 BROAD STREET 21st FLOOR NEW YORK, NY 10004 EXAMINER KEELING, ALEXANDER W ART UNIT PAPER NUMBER 1759 NOTIFICATION DATE DELIVERY MODE 11/29/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): info@lmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTONIO LORENZO ANTOZZI, MARIACHIARA BENEDETTO, ALICE CALDERARA, CHIARA PEZZONI, and CHRISTIAN URGEGHE Appeal 2017-003542 Application 13/704,718 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1—4 and 8—10 of Application 13/704,718 under 35 U.S.C. § 103(a) as obvious. Final Act. (Apr. 20, 2015). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we affirm. 1 Industrie De Nora S.p.A. is identified as the real party in interest. Br. 2. Appeal 2017-003542 Application 13/704,718 BACKGROUND The ’718 Application describes an electrode composition for electrochemical generation of hypochlorite. Spec. 1:5; 2:26. The’718 Application further describes the electrode composition as providing an improved duration and deactivation profile during operation under alternate polarity conditions in electrolytic processes. Id. at 2:26—30. Claim 1 is representative of the ’718 Application’s claims and is reproduced below from the Claims Appendix to the Appeal Brief: 1. Electrode for electrolytic cell comprising a valve metal substrate, an internal electrocatalytic coating and an external electrocatalytic coating of different composition overlaid thereto, the roughness profile of said substrate having an Ra value of 4 to 8 pm and an Rz value of 20 to 50 pm, said internal catalytic coating consisting of oxides of iridium, ruthenium and a valve metal selected between tantalum and niobium wherein an overall specific loading of iridium and ruthenium expressed as metals in said internal electrocatalytic coating ranges from 2 to 5 g/m2, said external electrocatalytic coating consisting of a mixture of oxides of iridium, ruthenium and titanium wherein the overall specific noble metal loading in said external electrocatalytic coating is not lower than 7 g/m2. Br. 12. 2 Appeal 2017-003542 Application 13/704,718 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1—3 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shimamune2 and Ashizawa,3 as evidenced by Akiyama.4 Final Act. 2; Answer 2. 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shimamune, Ashizawa, and Urgeghe.5 Final Act. 6; Answer 7. 3. Claims 8—10 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zolotarsky,6 Shimamune, and Ashizawa, as evidenced by Akiyama. Final Act. 7; Answer 8. Appellants argue for the reversal of the obviousness rejections to claims 1—4 and 8—10 on the basis of limitations present in both independent claims 1 and 8. See Br. 3—10. We select claim 1 as representative. Accordingly, claims 2—A and 8—10 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Rejection 1, Rejection 2, and Rejection 3. We affirm these rejections based upon the findings of fact and reasoning set forth on pages 2—19 of the Examiner’s Answer. We adopt these factual determinations and reasoning as our own. We add the following for emphasis. 2 US 7,566,389 B2, issued July 28, 2009. 3 US 5,665,218, issued Sept. 9, 1997. 4 US 6,250,251 Bl, issued June 26, 2001. 5 WO 2010/055065 Al, published May 20, 2010. 6 US 2002/0139689 Al, published Oct. 3, 2002. 3 Appeal 2017-003542 Application 13/704,718 Appellants make several different arguments that the rejections of claims 1—4 and 8—10 should be reversed. We address these in turn. First, Appellants argue that because the transition phrase “consisting of’ excludes any element not specified therein, claim 1 is limited to: (i) an internal catalytic coating that consists of iridium, ruthenium, and, as the valve metal, tantalum or niobium; and (ii) an external catalytic coating that consists of iridium, ruthenium, and titanium. Br. 5. Appellants’ argument is not persuasive. The term “comprising” is used to introduce elements in claim 1. Therefore, there is a presumption that the electrode for an electrolytic cell may contain elements in addition to those explicitly mentioned in the claim. See, e.g., In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) ((citing CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the patent claim context[,] the term ‘comprising’ is well understood to mean ‘including but not limited to.’”)). Claim 1, therefore, encompasses Shimamune’s electrode embodiments in which the internal layer can contain at least two platinum group metal oxides, including iridium and ruthenium, and tantalum as a valve metal oxide precursor. See Shimamune 2:1—4; 2:9—12. Claim 1 further encompasses Shimamune’s electrode embodiments in which the external layer can include at least iridium and ruthenium as platinum group metal oxides, and titanium as a valve metal oxide. See id. at 2:38—47. Second, Appellants argue that the rejection of claim 1 should be reversed because “there is no difference in the composition of the first and 4 Appeal 2017-003542 Application 13/704,718 second coating of Shimamune.” Br. 7. Appellants preface their conclusion by noting that Shimamune teaches the first coating comprising at least two selected from platinum, iridium, palladium, rhodium, osmium, ruthenium, iridium, palladium, platinum, rhodium and osmium (most preferably: ruthenium and iridium). Suitable valve metal oxides are chosen from aluminum, zirconium, bismuth, tungsten, niobium, titanium, silicon and tantalum (preferably: titanium). The loading is from about 0.5—10 g metal/m2.... Shimamune further teaches that the second coating comprises organic compounds such as ruthenium, osmium, rhodium, iridium, palladium, and platinum, and mixtures thereof (most preferably ruthenium and iridium). Suitable valve metal oxides are chosen from aluminum, zirconium, bismuth, tungsten, niobium, titanium, silicon and tantalum (preferably titanium). The loading is from about 1—10 g metal/m2.... Id. at 6—7 (citing Shimamune 2:1—13; 2:22—26; 2:37—52). Appellants’ arguments are not persuasive. These paragraphs are silent as to any requirement that Shimamune’s first and second coating layers must be the same. As the Examiner found, “Shimamune makes it a point to differentiate the two layers by describing the existence of two distinct layers . . . which can have different components and precursors . . . with different concentrations . . . and loadings . . . .” Answer 14 (citing Shimamune 2:1— 13; 2:37-52; 3:16-26; 2:22-36; 3:4—15). Third, Appellants argue that Shimamune’s disclosure that the “second coating solution is suitably applied to the obtained first coating layer until the total metal loading of the second layer is from about 1 to about 10, preferably from about 1.5 to about 3.5 g metal/m2” cannot render claim 1 obvious. Br. 7 (citing Shimamune 3:4—7). According to Appellants, such disclosure is “contrary to the presently claimed invention which provides for 5 Appeal 2017-003542 Application 13/704,718 an electrode having an internal coating with loading of 2—5 g/m2 and an external loading of not lower than 7 g/m2.” Br. 7. Appellants’ arguments are not persuasive. Shimamune’s passage particularly addresses “[t]he second coating solution,” i.e., “the total metal loading of the second layer.” Shimamune 3:4—7. Appellants have not identified reversible error in the Examiner’s finding that Shimamune’s total metal loading of 10 g metal/m2 in the second layer7 teaches that the overall specific loading of noble metals iridium and ruthenium is ~7 g metal/m2. See Answer 4. Fourth, Appellants argue that there is “no evidence of why one skilled in the art would be lead to pick and choose a certain combination of components for the first coating and a different combination for the second coating.” Br. 7. Appellants further argue that the ordinary skilled artisan would not have been led to “pick Ta or Ni from aluminum, zirconium, bismuth, tungsten, niobium, titanium, silicon, and tantalum when Shimamune teaches that it prefers titanium . . . .” Id. Appellants’ arguments do not overcome Shimamune’s disclosure that: (i) the internal layer contains iridium, ruthenium, and titanium and the external layer contains iridium, ruthenium, and titanium; (ii) the electrode metals titanium and tantalum are interchangeable; and (iii) only 8 valve metals are listed as suitable for the electrolytic cell electrode. Answer 16 (citing Shimamune Example 1; 4:24—26; 2:9-12); see In reFritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is 7 Although the Examiner found that Shimamune discloses the “total loading of 10 g metal/m2 for the internal layer” (Answer 4 (citing Shimamune 3:4— 7)), the cited passage actually refers to the second, i.e., external, layer. 6 Appeal 2017-003542 Application 13/704,718 relevant for all that it teaches to those of ordinary skill in the art.”). Furthermore, Shimamune’s disclosure is not limited to the preferred titanium embodiment. See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all disclosures of the prior art, including unpreferred embodiments, must be considered”). The Supreme Court has explained that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The Court went on to explain that When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Id. We, therefore, agree with the Examiner that these embodiments would have suggested to the ordinary skilled artisan that the internal layer may contain iridium, ruthenium, and tantalum, while the external layer may contain iridium, ruthenium, and titanium. Fifth, Appellants argue that Zolotarsky teaches away from including iridium oxide in an electrolytic cell electrode because Zolotarsky discloses that “those practicing the art seek to avoid the use of iridium oxide mixtures because of their known instability in reverse polarity systems.” Br. 8 (citing Zolotarsky 114). The teachings of a reference that arguably teaches away from a claimed feature must be weighed alongside the teachings of a cited reference that teaches the propriety of employing that feature. Para-Ordnance Mfg., Inc. v. SGSImps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). 7 Appeal 2017-003542 Application 13/704,718 In this case, Zolotarsky’s excerpt is merely directed to distinguishing Zolotarsky’s electrode from prior unsuccessful attempts at using iridium oxide mixtures in reverse polarity systems. For example, Zolotarsky teaches “[a]n electrode having an electrocatalytic surface or coating composed of a mixture with iridium oxide . . . used in a reversible polarity electrolytic cell. . . Zolotarsky Abstract (emphasis added). As the Examiner found, Zolotarsky claims a reversible polarity electrolytic cell comprising electrodes, “wherein the electrodes are coated with a mixture comprising iridium oxide.” Answer 18 (citing Zolotarsky Claim 1). On this record, Zolotarsky’s alleged teaching away from catalytic coatings comprised of iridium oxide is outweighed by Zolotarsky’s teachings regarding the propriety of employing iridium oxide. Sixth, Appellants argue that it would not have been obvious to adjust the Rz value of the substrate used in Shimamune because the claimed Rz to Ra value: (i) is obtained by localizing the corrosion of a metal surface onto the grain boundary and (ii) provides a substrate with “rather deep cavities relatively spaced apart and allows overlying two distinct catalytic coatings” for an improved duration and deactivation profile. See generally Br. 9. Appellants’ arguments are not persuasive. Appellants provide no explanation why Ashizawa’s teachings would not have led the ordinary skilled artisan to adjust the Rz value of Shimamune’s substrate. The Examiner provided an adequate reason to combine Shimamune with the subsidiary secondary reference, Ashizawa. The Examiner determined that a person of ordinary skill in the art at the time of the invention would have included: (i) the electrode of Shimamune and (ii) a substrate Rz value of 10- 40 pm of Ashizawa, because the Rz value taught in Ashizawa improves adhesion between layers of a titanium substrate, an intermediate valve oxide 8 Appeal 2017-003542 Application 13/704,718 layer, and an outer catalyst layer. Answer 5—6. We do not discern reversible error in these findings. We, therefore, affirm the Examiner’s rejection of claim 1 as unpatentable over the combination of Shimamune and Ashizawa, as evidenced by Akiyama. CONCLUSION For the reasons set forth above, we affirm the rejections of claims 1—4 and 8—10 of the ’718 Application. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation