Ex Parte Calderara et al

Patent Trial and Appeal Board

Feb 1, 2018

13981383 (P.T.A.B. Feb. 1, 2018)

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.
13/981,383 07/24/2013 Alice Calderara 267.157 6823
7590 02/05/2018
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
CHUNG, HO-SUNG
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
02/05/2018 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 ALICE CALDERARA, FABIO SALA,
and FABIO TIMPANO
Appeal 2017-005323
Application 13/981,383
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
JANE E. INGLESE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 10-12 and 14—18. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim an electrode and methods for making and using
it. Claim 10 is illustrative:
10. Electrode for oxygen evolution in electrochemical
processes comprising
a valve metal substrate,
Appeal 2017-005323
Application 13/981,383
a catalytic coating comprising a first layer of oxides of
iridium and tantalum having a molar composition of Ir 60-70%,
Ta 30-40%, and
an external coating consisting of 2 to 7 g/m2 of a single
valve metal oxide,
wherein said catalytic coating further comprises a second
layer of oxides of iridium, tantalum and titanium having a
molar composition of Ir 76-84%, Ta 15-23%, Ti 0.2-1.3%
interposed between said first catalytic layer and said external
coating, wherein the Ti has a valence equal to 4.
Asano
The References
US 4,481,097 Nov. 6, 1984
Saito US 5,294,317 Mar. 15, 1994
Ernes1 US 5,578,176 Nov. 26, 1996
Hardee US 6,527,939 B1 Mar. 4, 2003
The Rejections
Claims 10-12 and 14—18 stand rejected under 35 U.S.C. § 103 over
Hardee in view of Saito and either Ernes or Asano.
OPINION
We affirm the rejection over Hardee in view of Saito and Asano and
reverse the rejection over Hardee in view of Saito and Ernes.
Rejection over Hardee in view of Saito and Asano
The Appellants argue the claims as a group (Br. 3—4, 6—10). We
therefore limit our discussion to one claim, i.e., claim 10. Claims 11,12
and 14—18 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
1 The Examiner (Final Act. 2) and the Appellants (Br. 3) refer to
US 5,578,176 by the second named inventor (Ernes). For consistency we
likewise do so.
2
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Application 13/981,383
Hardee discloses an electrode for oxygen evolution, comprising a
valve metal substrate, a catalytic coating which can be iridium and tantalum
oxides having a 65:35 Ir:Ta weight ratio (64:37 Ir:Ta molar ratio), and a
valve metal oxide topcoat (col. 1,1. 55 — col.2,1. 9; col. 8,11. 38—51).
Saito discloses an electrode for oxygen evolution, comprising a valve
metal substrate and first, second and third layers of iridium and tantalum
oxides, where the first layer has a 0.084—0.14:0.86-0.916 Ir:Ta molar ratio,
the second layer has a 0.80-0.999:0.001—0.20 Ir:Ta molar ratio, and a third
layer has a 0.40-0.799:0.201-0.60 Ir:Ta molar ratio, and any of the layers
can contain up to 10 wt% titanium oxide (col. 1,11. 6—7; col. 6,11. 28—56;
col. 7,11. 50-60; col. 8,11. 11-16).
Asano discloses an electrode for oxygen evolution, comprising a valve
metal substrate, an intermediate layer comprising platinum and mixed metal
oxides, and on the intermediate layer an electrochemically active layer
which can be iridium oxide having 3.0 g/m2 iridium (col. 1,11. 5—9; col. 3,
11. 6—10; col. 3,1. 67 — col. 4,1. 10; col. 4,11. 43—63; col. 5,1. 55 — col. 6,
1. 14).
The Appellants assert that “[njothing in Saito specifically suggests the
use of Ti <1.3 mol% [sic, 0.2—1.3 mol%]” (Br. 8) which, the Appellants
state, is 0.05-0.33 wt% Ti (id.).
Saito’s disclosure that any of the layers can contain up to 10 wt%
titanium oxide (col. 8,11. 11—16) would have suggested including titanium
oxide in any of Saito’s iridium oxide/tantalum oxide layers in an amount
providing 0.2—1.3 mol% titanium.
The Appellants assert that “in all of Saito’s examples, the second and
third layers appear to be always exclusively composed of iridium and
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Application 13/981,383
tantalum oxides and the iridium content never falls within the specific range
of the claimed invention” (Br. 8).
Saito is not limited to its examples. See In re Fracalossi, 681 F.2d
792, 794 n.l (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972).
Instead, all disclosures therein must be evaluated for what they would have
fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d
961, 965 (CCPA 1966). As pointed out above, Saito would have suggested
iridium and titanium contents within the Appellants’ ranges.
The Appellants assert that Asano would not have suggested the
Appellants’ catalytic layer comprising iridium, tantalum and titanium oxides
(Br. 6-7).
The Examiner does not rely upon Asano for a suggestion of that layer
but, rather, relies upon Asano for a suggestion of the Appellants’ external
coating loading (Final Act. 4). Moreover, Hardee’s valve metal oxide
topcoat layer has the same composition as the Appellants’ external coating
and has the same purpose, i.e., to improve the catalytic coating’s durability
without adversely affecting the cell electrode potential (Hardee col. 1,11. 48—
54; Appellants’ Spec. p. 3,11. 13—17). Hence, it appears that one of ordinary
skill in the art, through routine optimization of Hardee’s topcoat’s valve
metal oxide loading, would have arrived at a valve metal oxide loading
within the Appellants’ range.
For the above reasons we are not persuaded of reversible error in the
rejection over Hardee in view of Saito and Asano.
Rejection over Hardee in view of Saito and Ernes
Ernes discloses an electrode for oxygen evolution, comprising a valve
metal substrate having thereon an oxide barrier layer which reduces a
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Application 13/981,383
subsequently-applied electrocatalytic coating’s loading required to extend
the substrate’s lifetime or to achieve a more cost effective lifetime based on
electrical charge passed per coating weight area (col. 2,11. 10-25; col. 3,
11. 1-2, 9-10, 39-45; col. 7,11. 3AA6; col. 8,11. 1-6; col. 10,11. A-5, 27-28).
The Examiner finds that “[sjince Hardee recognizes that it is desirable
for the external coating to extend lifetime and that Ernes teaches a way to
achieve an improved coating lifetime, a person having ordinary skill in the
art would surely apply Ernes’s teaching to Hardee’s topcoat/extemal coating
since both teachings apply to lifetime/durability” (Ans. 13), so “Ernes thus
teaches the effect of loading in the external coating” (id.).
Ernes does not extend the electrocatalytic coating’s lifetime but,
rather, extends the substrate’s lifetime at reduced electrocatalytic coating
loading by placing an oxide barrier layer between the substrate and the
electrocatalytic coating. The Examiner does not establish that optimizing
the loading of Ernes’ barrier layer to which an electrocatalytic coating is
applied optimizes the loading of Hardee’s topcoat layer applied to an
electrocatalytic coating.
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of the Appellants’ claimed invention.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejection over Hardee in view of Saito
and Ernes.
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DECISION/ORDER
The rejection of claims 10-12 and 14—18 under 35 U.S.C. § 103 over
Hardee in view of Saito and Asano is affirmed. The rejection of claims 10—
12 and 14—18 under 35 U.S.C. § 103 over Hardee in view of Saito and Ernes
is reversed.
It is ordered that the Examiner’s decision is affirmed.
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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