Ex Parte Antozzi et al

Patent Trial and Appeal Board

Nov 27, 2017

13704718 (P.T.A.B. Nov. 27, 2017)

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.
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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.
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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
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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
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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.
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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).
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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
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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
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