Ex Parte Carter et al

Patent Trials and Appeals Board

May 1, 2019

13666662 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/666,662 11/01/2012
14333 7590 05/03/2019
Meagher Emanuel Laks Goldberg & Liao, LLP
ONE PALMER SQUARE
SUITE 325
Princeton, NJ 08542
FIRST NAMED INVENTOR
Emily Ann Carter
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.
Princeton - 22803 5159
EXAMINER
MENDEZ, ZULMARIAM
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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):
molech@meagheremanuel.com
14333-docket@meagheremanuel.eom
tmeagher@meagheremanuel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMILY ANN CARTER, PEILIN LIAO, and
JOHN ANDREW KEITH
Appeal2018-007252
Application 13/666,662
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-8. (Appeal Br. 3.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification
filed November 1, 2012 ("Spec."); Final Office Action dated August 24,
2017 ("Final Act."); Appeal Brief filed January 18, 2018 ("Appeal Br.");
Supplemental Examiner's Answer dated June 22, 2018 ("Ans."); and Reply
Brief filed July 5, 2018 ("Reply Br.").
2 Appellant is the Applicant, The Trustees of Princeton University, which is
identified as the real party in interest. (Appeal Br. 3.)
Appeal2018-007252
Application 13/666,662
THE INVENTION
Appellant states that the invention relates to photoanodes, and in
particular to high efficiency photoanodes with reduced overpotential. (Spec.
,r 6.) The photoanode includes an electrode partially formed of hematite ( a-
F e203 ), where the surface of the electrode is doped with at least one of
nickel, cobalt, and manganese. (Spec. ,r,r 10, 31.) According to the
Specification, the natural growth faces of hematite are the (0001) surface
and the (0112) surface, and the (0001) surface is less complicated with fewer
reconstructions than other surfaces. (Spec. ,r 31.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A photoanode comprising an electrode at least partially
formed of hematite and having a surface doped with at least one
of nickel, cobalt and manganese, the electrode having a (0001)
surface Fe bilayer doped with a concentration in the 1/8 to 1/2
range.
(Appeal Br. 12, Claims Appendix.)
REJECTION
The Examiner rejected claims 1-8 under 35 U.S.C. § 103 as obvious
over Reece et al. (US 2011/0048962 Al, published on March 3, 2011)
("Reece"); Velev et al., Elec. and Magnetic Structure of Transition-Metal-
Doped a-Hematite, 71 Physical Rev. B, 205208-1-205208-7 (2005)
("Velev"); and further in view of Liu et al., Photoelectrochemical Props. of
Ni-doped Fe 203 Thin Films Prepared by Electrodeposition, 59
Electrochemica Acta 121-127 (2012) ("Liu") (Application/Control Number:
13/666,662 electrodeposition); and Zachary et al., Hybrid Density
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Application 13/666,662
Functional Theory Band Structure Eng 'gin Hematite, 132 No. 22
J. Chem. Physics 1--45, (2011) ("Zachary").
Appellant presents arguments for claim 1. (See Appeal Br. 4, 10.)
Accordingly, we select claim 1 as representative for disposition of this
appeal. 37 C.F.R. § 4I.37(c)(l)(iv).
ISSUE
The Examiner found that Reece discloses a photoanode comprising an
electrode formed of a photoactive composition, which is hematite having a
doped surface, but Reece fails to disclose that the hematite is doped with at
least one of nickel, cobalt, and manganese, and the electrode has a (0001)
surface Fe bilayer doped with a concentration in the 1/8 to 1/2 range.
(Ans. 3.) The Examiner found that Velev discloses doping hematite with a
transition metal such as nickel, cobalt, or manganese. (Id. at 3--4.) The
Examiner found that Liu discloses that by adjusting the nickel molar ratios
in nickel-doped hematite, thin films with various compositions of nickel
could be tuned to produce the highest photo-response. (Id. at 4.) The
Examiner found that as modified, Reece fails to explicitly teach doping the
(0001) surface of hematite, but it was well known in the art to dope the
(0001) surface of hematite with transition metal in order to enhance its
optical and energetics properties in solar cells and photo-electrocatalytic
application as taught by Zachary. (Id. at 5, 8) ( citing Zachary, Abst. 3 ,r 2,
27 ,r 2 to page 29, last ,r, pages 30-31.) The Examiner determined that it
would have been obvious to dope the (0001) surface of hematite of Reece as
modified by Velev and Liu, because Zachary teaches that doping the (0001)
surface with a transitional metal is well known in the art to be effective for
enhancing its optical and energetics properties in solar cells and photo-
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Application 13/666,662
electrocatalytic applications. (Id. at 5.) The Examiner stated that Zachary's
disclosure of doping would include both bulk and surface doping. (Ans. 8-
9.) In addition, the Examiner determined that claim 1 allows for bulk doping
as a result of the open transitional phrase "comprising." (Id. at 8.)
Appellant argues that nothing in Zachary supports the Examiner's
position that Zachary discloses doping the (0001) surface of hematite.
(Appeal Br. 5-7.) In particular, Appellant argues that Zachary discloses
doping in order to verify that the computational model disclosed therein can
correctly predict certain properties of hematite. (Id. at 8.) Appellant argues
that although Zachary discloses doping, Zachary's use of the phrase
"doping" does not imply "surface doping" and that based on its disclosure,
Zachary uses bulk doping. (Id. at 7-10.) Appellant contends that although
claim 1 allows for the additional unrecited element of bulk doping, surface
doping and bulk doping are different such that the Examiner's interpretation
that Zachary discloses bulk doping and surface doping would "vitiate the
surface doping limitation" recited in claim 1. (Reply Br. 4--5.)
Accordingly, the dispositive issue on appeal is:
Has Appellant identified reversible error in the Examiner's position
that an electrode having a (0001) surface Fe bilayer doped with at least one
of nickel, cobalt, and manganese would have been obvious in view of Reece,
Velev, Liu and Zachary?
OPINION
We are not persuaded by Appellant's arguments that the Examiner's
findings with respect to Zachary constitute reversible error. Initially, we
observe that Appellant does not appear to dispute that Zachary discloses
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Application 13/666,662
hematite doped with transition metal can have enhanced optical properties,
which is consistent with the Examiner's rationale for combining Zachary
with Reece, Velev, and Liu. (Appeal Br. 9; Ans. 5.)
We disagree with Appellant's arguments that Zachary does not imply
doping of the (0001) surface by referencing the [0001] direction, because the
hexagonal basal plane (0001) surface is perpendicular to the [0001] direction
or that the computational model disclosed in Zachary implies only bulk
doping. (Appeal Br. 6-10) (citing Zachary, Abst. 6-10, 27-31.) To the
contrary, Zachary discusses the "planes parallel and perpendicular to
[0001]" (emphasis added) in calculating optical properties (Zachary 6-7),
which is consistent with the Examiner's position that doping (0001) surfaces
of hematite would have been well-known in the art (Ans. 5), as well as
Appellant's position that the (0001) surface is perpendicular to the [0001]
direction.
We are also not persuaded by Appellant's argument that Zachary's
disclosure is more consistent with bulk doping, and the Examiner's
interpretation that bulk doping includes surface doping vitiates the surface
doped recitation in claim 1. Rather, we are of the view that Zachary as well
as the other prior art supports the Examiner's position. The Examiner cites
Reece for disclosing hematite having a doped surface and Liu for nickel
doped hematite where dopants are present in the lattice. (Ans. 3-5; Reece,
,r,r 107, 108; Liu, Abst. 121.) Liu discloses doping hematite with nickel such
that "the concentration of Ni is much higher on the surface than that in
bulk." (Liu, Abst.) Thus, contrary to Appellant's arguments, the prior art
supports the Examiner's position that "doping" of hematite surfaces includes
surface doping as well as bulk doping. Moreover, Appellant has not
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provided a sufficient explanation as to why Zachary's disclosure of doping,
including bulk doping and surface doping would not include all surfaces of
hematite, including the (0001) surface. (See Ans. 8.)
The Examiner's interpretation of claim 1 is also consistent with the
Specification. In this regard, the Specification makes clear that the electrode
surface may be doped with nickel and the electrode may be bulk doped with
nickel to enhance light absorption. (Spec. ,r 10.) The Specification does not
provide any particular procedures or methods that would distinguish bulk
doping from surface doping as mutually exclusive procedures in the manner
argued by Appellant. (See also Specification ,r 110 discussing Liu's
disclosure that Ni-doping lead to improved performance of the Ni-doped
surface and that the disclosure in the present Specification ("our work")
"suggests additionally that the reaction thermodynamics is improved.")
Thus, we do not view the Examiner's interpretation of claim 1 or the
disclosure of Zachary as a source of reversible error.
Accordingly, we are of the view that the Examiner's findings and
rationale are supported by the preponderance of evidence of record.
Therefore, we affirm the Examiner's decision to reject claim 1, and claims
2-8 dependent therefrom.
DECISION
We affirm the Examiner's decision rejecting claims 1-8.
TIME PERIOD
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 )(iv).
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Application 13/666,662
AFFIRMED
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