Ex Parte Cao et al

Patent Trial and Appeal Board

Sep 21, 2016

11720384 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111720,384 03/24/2008
123223 7590 09/23/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Lixin Cao
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074032-0014-US-287202 7694
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIXIN CAO, YU-MIN TSOU, and EMORY DE CASTRO
Appeal2015-000657
Application 11/720,3841,2
Technology Center 1700
Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
1 This application was the subject of Appeal No. 2011-004211 in which the
Board affirmed the Examiner's rejections.
2 BASF Fuel Cell GmbH is indicated as the real party in interest (App. Br.
2).
Appeal2015-000657
Application 11/720,384
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
25-39. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to a platinum-alloy carbon-supported
electrocatalyst suitable for incorporation in a gas diffusion electrode or a
catalyst-coated membrane structure (Spec. 1: 5-7).
Claim 25 is illustrative:
1. A carbon-supported platinum alloy catalyst obtainable by the
method comprising the following steps:
a) in situ forming platinum dioxide by converting a
platinum precursor on a carbon support,
b) forming at least one transition metal hydrous oxide by
conversion of a soluble salt on said carbon support,
c) simultaneous chemical reducing the situ-formed
platinum dioxide and of the at least one transition metal
hydrous oxide on said carbon support, wherein
d) said platinum precursor being dihydrogen
hexahydroxyplatinate and
e) the in situ formation of the platinum dioxide is
obtained by variation of pH reaching a pH between 2 and 9 and
raising temperature to a final temperature of 30°C to 100°C,
f) the variation of pH in step e) is effected by the addition
of an alkali or ammonia to the acidic starting solution until a pH
between 2 and 9 is reached.
App. Br. 11 (Claims Appendix).
Appellants appeal the following rejections (App. Br. 4):
1. Claims 25, 26, 27, 28, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Itoh (US 5,876,867, issued Mar. 2, 1999).
2
Appeal2015-000657
Application 11/720,384
2. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Itoh in view of Reetz (US 7 ,244,688 B2, issued July 17, 2007) and
Cao (US 2005/0227862 Al, published Oct. 13, 2005).
3. Claims 32-39 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Reetz in view ofltoh and Cao.
Appellants do not present the Examiner's rejection of claims 25, 26 and
31 under 35 U.S.C. § 102(b) as anticipated or alternatively under 35 U.S.C.
§ 103(a) as obvious over Reetz for review on appeal in the principal Brief
(App. Br. 4). Appellants do provide, however, untimely arguments against
the§§ 102(b)/103(a) rejection over Reetz on page 2 of the Reply Brief. 37
C.F.R. § 41.41(b)(2)(2013). There is no apparent reason why Appellants
could not have presented their arguments regarding this rejection in the
principal Brief and Appellants provide no reason for the late submission of
these arguments (Reply Br. 2). Appellants' untimely submission of the
arguments in the Reply Brief deprives us of the benefit of the Examiner's
response to these arguments. We shall not consider these arguments
presented in the Reply Briefregarding the§§ 102(b)/103(a) over Reetz. 37
C.F.R. § 41.41(b)(2) (2013). Because no timely arguments were made
regarding this rejection, we affirm the Examiner's§§ 102(b)/103(a)
rejections of claims 25, 26 and 31 over Reetz.
FINDINGS OF FACT & ANALYSIS
REJECTION (1): § 103 over Itoh
Appellants' arguments focus on claim 25 only (App. Br. 4-6).
3
Appeal2015-000657
Application 11/720,384
Appellants argue that one of ordinary skill in the art would not have
had a reason to select all of the process conditions of claim 32 to produce a
novel catalyst as recited in claim 25 according to the method steps therein
(App. Br. 5). Appellants contend that Itoh does not suggest simultaneous
chemical reduction of the in situ-formed platinum dioxide and of the at least
one transition metal hydrous oxide on said carbon support according to the
present claims. Id. Appellants contend that Itoh does not teach a
simultaneous chemical reduction of platinum with a transition metal hydrous
oxide. Id. Appellants contend that one of ordinary skill in the art could not
have predicted platinum crystallite diameter can be controlled by choosing a
specific starting material in the controlled temperature range and pH range
as recited in claim 25. Id. Appellants contend that Example 9 in the
Specification compares the catalyst particle size achieved in Appellants'
Example 6 to the particle size achieved in Itoh' s comparative example 1
(App. Br. 6). Appellants contend that Appellants' example 6 yields a
particle size of 37 Angstroms, while Itoh's process yields a particle size of
53 Angstroms. Id.
It is undisputed that claim 25 is a product-by-process claim. In a
product-by-process claim, patentability of a product does not depend on its
method of production; if the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process. In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). In the present case, claim 1
does not recite any limitation with regard to catalyst particle size. Rather,
claim 1 's structural recitation includes a "carbon-supported platinum alloy
catalyst." Appellants do not dispute that the catalyst of Itoh meets that
4
Appeal2015-000657
Application 11/720,384
structural feature. ivforeover, Itoh teaches that platinum crystallite diameter
of the platinum skeleton alloy supported catalyst (i.e., the catalyst alloy
remaining after partial removal of the base metal) may be from 15 to 100
Angstroms (col. 7, 11. 10-12 and 54--58). Therefore, Itoh teaches that
smaller diameter catalysts are possible and is not limited to the example
relied upon by Appellants in their comparative Example 9. Appellants'
arguments regarding the process used to form the product fails to direct us to
any structural limitation in the claim that expresses a patentable distinction
over that disclosed by Itoh.
On this record, we affirm the Examiner's§ 103 rejection over Itoh.
REJECTION (2): Claim 29 § 103 Itoh in view of Reetz and Cao
Claim 29 depends from claim 25 and recites "wherein said chemical
reduction is carried out with hydrogen gas at a temperature of at least
300°C."
Appellants contend that Reetz does not teach using dihydrogen
hexahydroxyplatinate and instead only teaches to use dihydrogen
hexachloroplatinate (App. Br. 7). Appellants contend that there is
insufficient motivation from Cao and Reetz to replace the
hexachloroplatinate with hexahydroxyplatinate (App. Br. 7). Appellants
contend that Reetz and Cao fail to teach combining dihydrogen
hexahydroxyplatinate with second metal or controlling pH during the entire
process. Id.
Claim 29, like claim 25, is a product-by-process claim. As noted
supra, if the product in a product-by-process claim is same as or obvious
from a product of the prior art, the claim is unpatentable even though the
5
Appeal2015-000657
Application 11/720,384
prior product was made by a different process. Thorpe, 777 F .2d at 697.
Appellants argue differences in the process and starting materials used in
forming the catalyst by Reetz and Cao, but fail to direct us to any structural
difference in the final catalyst formed. On this record, we affirm the
Examiner's§ 103 rejection over Itoh in view of Reetz and Cao.
REJECTION (3): Claim 32 § 103 Reetz in view ofltoh and Cao
Claim 32 is directed to a method to produce carbon-supported
platinum alloy catalyst.
Appellants argue that Reetz fails to disclose the in situ formation of
platinum dioxide obtained by variation of pH between 2 and 9 and raising
the temperature to a final temperature of 30 to 100°C, that the variation of
pH is effected by the addition of an alkali or ammonia to the acidic starting
solution until a pH between 2 and 9 is reached, and the use of dihydrogen
hexahydroxyplatinate (App. Br. 8). Appellants contend that one of ordinary
skill in the art would not have substituted Itoh's dihydrogen
hexahydroxyplatinate for Reetz's dihydrogen hexachloroplatinate because
the processes are different. Id. Appellants contend that Reetz uses an in situ
process, while Itoh uses a two-step reduction process such that there is no
reason to use Itoh's dihydrogen hexahydroxyplatinate from a two-step
process in Reetz's in situ process (App. Br. 8).
Appellants' arguments are not persuasive because the Examiner does
not rely solely on Itoh to teach the use of dihydrogen hexahydroxyplatinate
(Ans. 7 and 11 ). The Examiner finds that Itoh and Cao both teach using
dihydrogen hexahydroxyplatinate and Cao teaches using the dihydrogen
hexahydroxyplatinate in an in situ process for producing platinum catalysts.
6
Appeal2015-000657
Application 11/720,384
Id. Accordingly, the teachings of the applied references as a whole would
have suggested using dihydrogen hexahydroxyplatinate as a suitable
material in methods of making platinum sources. Indeed, Cao teaches
advantages in using dihydrogen hexahydroxyplatinate as the platinum
precursor material (Cao i-fi-f 15-1 7).
Appellants argue that the pH control and temperature control of steps
(e) and (t) in claim 32 provide substantial effects and Itoh would not have
yielded the claimed invention (App. Br. 9).
Appellants' argument is not persuasive because Cao teaches the
advantages of using dihydrogen hexahydroxyplatinate including the ability
to use temperature and/or pH to start precipitation and control crystal size
(Cao i-fi-f 15-17). Appellants' arguments regarding Itoh fail to address the
Examiner's findings with respect to Reetz's and Cao's teachings on pH and
temperature control (Ans. 6-7). Although Appellants argue that paragraph
19 of Cao cited by the Examiner on page 7 of the Answer does not relate to
simultaneous chemical reduction of in situ-formed platinum dioxide and of
at least one transition metal hydrous oxide according to step ( c) (Reply Br.
3), Appellants' argument attacks the references individually instead of
addressing what the combined teachings would have suggested to the
ordinarily skilled artisan. In the present case, the Examiner relies on Reetz
to teach the use of transition metal oxides with platinum in making a
catalyst. The Examiner proposes to substitute Itoh' s or Cao' s dihydrogen
hexahydroxyplatinate for the chloroplatinic acid in Reetz. Cao provides
advantages for making such a substitution and optimizing pH and
temperature parameters for reducing the platinum dioxide formed on the
carbon support (Cao i-fi-f 15-17 and 19).
7
Appeal2015-000657
Application 11/720,384
On this record, we affirm the Examiner's§ 103 rejection over Reetz
in view of Cao and Itoh.
DECISION
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)(l).
ORDER
AFFIRMED
8