Ex Parte Elangovan et alDownload PDFPatent Trial and Appeal BoardSep 6, 201311954088 (P.T.A.B. Sep. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/954,088 12/11/2007 S. Elangovan 6000.2.18 3336 55162 7590 09/06/2013 CERAMATEC, INC. 2425 SOUTH 900 WEST SALT LAKE CITY, UT 84119 EXAMINER MOHADDES, LADAN ART UNIT PAPER NUMBER 1726 MAIL DATE DELIVERY MODE 09/06/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte S. ELANGOVAN and JOSEPH J. HARTVIGSEN ____________ Appeal 2012-001413 Application 11/954,088 Technology Center 1700 ____________ Before CHUNG K. PAK, ROMULO H. DELMENDO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001413 Application 11/954,088 2 The Appellants1 seek our review under 35 U.S.C. § 134(a) of a final rejection of claims 1-25.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. BACKGROUND The invention relates to an electrochemical cell. Specification (“Spec.”) ¶ 2. Representative claim 1 is reproduced below: 1. An electrochemical cell comprising: an oxygen electrode; a solid oxide electrolyte coupled to the oxygen electrode to transport oxygen ions, the solid oxide electrolyte comprising lanthanum and having a tendency to react with nickel; and a hydrogen electrode coupled to the solid oxide electrolyte, the hydrogen electrode comprising nickel combined with a magnesium-containing material tending to reduce the reactivity of the nickel with the solid oxide electrolyte, wherein the material is dispersed throughout the hydrogen electrode and wherein nickel is in direct contact with the solid oxide electrolyte. 1 The Appellants identify the real party in interest as “Ceramatec, Inc.” Appeal Brief filed April 11, 2011 (“App. Br.”) at 4. The Specification, however, states that the “invention was made with Government support under Contract No. DE-FG03-01ER83212 awarded by the U.S. Department of Energy” and that “[t]he Government has certain rights in this invention.” Specification (“Spec.”), as amended on April 29, 2103, ¶ 2. 2 Form PTOL-326 of the Final Office Action entered November 10, 2010 states that “[c]laim(s) 1-25 is/are rejected.” Claim 9, however, does not appear to have been included in any of the grounds of rejection. Final Office Action 3-6; Examiner’s Answer entered June 23, 2011 (“Ans.”) 4-8. Appeal 2012-001413 Application 11/954,088 3 App. Br. 18 (Claims App’x). The Examiner rejected the claims under 35 U.S.C. § 103(a) as follows: I. Claims1-6, 11-17, 19, 20, 22, 23, and 25 as unpatentable over Shimada3 and Takehisa;4 II. Claims 7, 21, 22, and 24 as unpatentable over Shimada, Takehisa, and Arico;5 III. Claim 8 as unpatentable over Shimada, Takehisa, and Ovshinsky;6 and IV. Claims 10 and 18 as unpatentable over Shimada, Takehisa, and Hartvigsen.7 Ans. 4-10. 3 PCT Publication WO/2006/092912 published September 8, 2006. The Examiner has relied on U.S. Patent Application Publication 2008/0102337 A1 published May 1, 2008 as an English language translation of the PCT publication. 4 Japanese Patent Document 6-111829 published April 22, 1994. We refer to the English language translation found in the electronic record. 5 U.S. Patent Application Publication 2006/0127747 A1 published June 15, 2006. 6 U.S. Patent 5,616,432 issued April 1, 1997. 7 Joseph Hartvigsen, Singaravelu Elangovan, James O’Brien, Carl. Stoots, J. Stephen Herring, and Paul. Lessing, “Operation and Analysis of Solid Oxide Fuel Cells in Steam Electrolysis Mode” (publisher and publication date uncertain from the document itself). Appeal 2012-001413 Application 11/954,088 4 In addition to the prior art references identified in the statements of the rejections, the Examiner relied on Endo8 and Moon.9 Ans. 5, 9. The Appellants, on the other hand, rely on Yan10 and Huang11 as evidence in support of nonobviousness. App. Br. 14. DISCUSSION For rejections I, II, and IV, the Appellants state that the claims subject to each of these rejections stand or fall together.12 App. Br. 7. The arguments against rejections II–IV, however, rely on the same arguments offered against rejection I. Id. at 16. Therefore, the outcome for all four rejections turns on claim 1, which we select as representative of the claims that are subject to rejection I. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner found that Shimada describes a solid oxide fuel cell comprising: a lanthanum cobalt air electrode; a lanthanum gallate solid 8 Masaki Endo, “Toto Ltd. Development of SOFC Can Be Operated at 500 °C,” 2 FUEL CELL MONTHLY NEWS, no. 1, 1-10 (2006) (as translated). 9 U.S. Patent 7,410,717 B2 issued August 12, 2008. 10 J.W. Yan, Z.G. Lu, Y. Jiang, Y.L. Dong, C.Y. Yu, and W.Z. Li, “Fabrication and Testing of a Doped Lanthanum Gallate Electrolyte Thin- Film Solid Oxide Fuel Cell,” 149 J. ELECTROCHEM. SOC. A1132-A1135, no. 9 (2002). 11 Keqin Huang, Man Feng, John B. Goodenough, and Michael Schmerling, “Characterization of Sr-Doped LaMnO3 and LaCoO3 As Cathode Materials for a Doped LaGaO3 Ceramic Fuel Cell,” 143 J. ELECTROCHEM. SOC. 3630-3635, no. 11 (1996). 12 Rejection III involves only a single claim – claim 8. Appeal 2012-001413 Application 11/954,088 5 oxide electrolyte, the electrolyte being coupled to the air electrode to transport oxygen ions and having a tendency to react with nickel; and a nickel and ceria fuel electrode in which the ceria suppresses the reaction of the nickel with the lanthanum gallate electrolyte. Ans. 4-5 (citing Shimada’s Abst.; ¶¶ 32, 34, 51, 52, 102-124). The Examiner further found that Takehisa teaches that an electrode made of a solid solution of nickel oxide and magnesium oxide provides “higher electrical performance.” Id. at 5 (citing Takehisa’s claim 1 and 2; ¶ 3). The Examiner concluded from these findings that a person of ordinary skill in the art would have been prompted to use Takehisa’s electrode in Shimada in order to achieve “higher electrical performance.” Id. The Appellants contend that the Examiner failed to articulate reasoning with some rational underpinning to support the conclusion of obviousness. App. Br. 10. Specifically, the Appellants argue that the improvement disclosed in Takehisa concerns a conventional zirconium- containing electrolyte, not a LSGM electrolyte. Id. at 11. In addition, the Appellants argue that Takehisa’s improvement appears to be related to a YSZ (yttria-stabilized zirconia) component of the electrolyte, not the magnesium in the electrode. Id. Furthermore, the Appellants contend that Yan and Huang teach away from the proposed combination of Shimada and Takehisa. Id. at 14. We do not find the Appellants’ arguments persuasive to show reversible error in the Examiner’s rejection of claim 1. In re Jung, 637 F.3d Appeal 2012-001413 Application 11/954,088 6 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima facie case, the Board would not have erred in framing the issue as one of reversible error because it has long been the Board’s practice to require an appellant to identify the alleged error in the examiner’s rejections). As correctly found by the Examiner, Shimada describes an electrochemical cell comprising an air electrode such as lanthanum cobaltate, a solid oxide electrolyte such as lanthanum gallate, and a fuel electrode such as a mixture of nickel oxide and ceria. ¶¶ 34, 51, 52. The Appellants do not dispute the Examiner’s finding that Shimada differs from the subject matter of claim 1 only in that the prior art fuel electrode does not include “a magnesium-containing material,” as required for the “hydrogen electrode” recited in claim 1. Ans. 5; App. Br. 7-15. Shimada, however, discloses that the fuel electrode includes “an oxide of one or more metals selected from the group consisting of yttrium, zirconium, scandium, cerium, samarium, aluminum, titanium, magnesium, lanthanum, gallium, niobium, tantalum, silicon, gadolinium, strontium, ytterbium, iron, cobalt, nickel, and calcium . . . .” (emphases added). ¶ 51. Thus, Shimada’s teachings alone provide a reason for a person of ordinary skill in the art to use a mixture of nickel oxide and magnesium oxide as the fuel electrode, thus arriving at an electrochemical cell encompassed by claim 1. Moreover, as pointed out by the Examiner, Takehisa teaches an improved solid oxide fuel cell electrode material in the Appeal 2012-001413 Application 11/954,088 7 form of “a mixture which mainly consists of an oxide solid solution, a cubic, and/or tetragonal zirconium oxide, [s]aid oxide solution mainly becomes [sic] from magnesium oxide and nickel oxide.” ¶ 4. Takehisa states that the improved electrode provides “higher” electrical performance. ¶ 3. While Takehisa appears to teach an example in which YSZ electrolyte is used, ¶ 14, Takehisa does not place any limitation on the type of electrolyte that may be used to make the solid oxide fuel cell. ¶¶ 2-4. Because Shimada explicitly teaches that mixtures of metal oxides of various metals including magnesium, zirconium, and nickel may be used, a person of ordinary skill in the art would have been prompted to use Takehisa’s electrode based on magnesium oxide, nickel oxide, and zirconium oxide with a reasonable expectation that the resulting cell would provide successful, if not improved, results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ( “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds.”). The Appellants urge that Yan and Huang “teach away from the proposed combination of a Ni-Mg-YSZ electrode (as taught in Takehisa) with a LSGM electrolyte (as taught in Shimada) because the resulting fuel Appeal 2012-001413 Application 11/954,088 8 cell would suffer from decreased electrical performance.” App. Br. 14 (citing Yan’s p. A1134, left column; Huang’s p. 3630, Introduction section). We find no merit in the Appellants’ “teaching away” argument. With respect to Yan, the reference states that “[n]early all strontium and most magnesium [in an LSGM film] migrated into the YSZ substrate” and that “[t]he loss of strontium and magnesium in the electrolyte film lowered the electrical conductivity of the electrolyte LSGM because the doping levels for both A and B site in LaGaO3 were significantly decreased.” P. A1134. Huang contains a similar disclosure. P. 3630. But neither claim 1 nor Shimada requires the use of LSGM electrolyte. Spec. ¶ 33; Shimada ¶ 34. Thus, to the extent that Yan teaches that the combination of LSGM and YSZ yields undesirable results, a person of ordinary skill in the art would have made a cell in accordance with Shimada’s teachings that avoided the use of strontium- and magnesium-containing lanthanum gallates with YSZ. Because the Appellants failed to show reversible error, we uphold the Examiner’s rejection of claim 1. SUMMARY Rejections I –IVare 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 sld Copy with citationCopy as parenthetical citation