Ex Parte Endoh et al

Patent Trial and Appeal Board

Oct 16, 2014

11615256 (P.T.A.B. Oct. 16, 2014)

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.
11/615,256 12/22/2006 Eiji Endoh 086524-0106 1631
22428 7590 10/16/2014
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
MOHADDES, LADAN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
10/16/2014 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 EIJI ENDOH and SHINJI TERAZONO
____________

Appeal 2013-003981
Application 11/615,256
Technology Center 1700
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections under 35 U.S.C. § 103(a) of claim 1 as unpatentable over
Kuromatsu (aka Kuramatsu) (JP 2004-018573, pub. Jan. 22, 2004) in view
of Czapski ("The Kinetics of the oxidation of hydrogen peroxide by Cerium
(IV)," Journal of Physical Chem. 67, 201-203 (Jan. 1963)) and of remaining
claims 2–4, 7–13, 15, 18, 20, and 22–26 as unpatentable over these
references alone or in combination with additional prior art. We have
jurisdiction under 35 U.S.C. § 6.1

1 An oral hearing for this appeal was held on October 9, 2014.
Appeal 2013-003981
Application 11/615,256

2
We AFFIRM.
Appellants claim an electrolyte membrane comprising a cation
exchange membrane containing cerium ions (claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An electrolyte membrane for a polymer electrolyte fuel cell, which
comprises a cation exchange membrane made of a polymer having sulfonic
acid groups as cation exchange groups, characterized by containing cerium
ions in an amount of from 0.3 to 20 mol % of the number of –SO3- groups
contained in the cation exchange membrane.

Appellants do not present arguments specifically directed to the
individual claims on appeal (see App. Br. 12–19). Therefore, the appealed
claims will stand or fall with representative claim 1.
We sustain the above rejections based on the findings of fact,
conclusions of law, and rebuttals to argument well expressed by the
Examiner in the Final Action and in the Answer. The following comments
are added for emphasis.
The only reasonably specific argument advanced by Appellants in
their Appeal Brief against the above rejections is set forth below:
According to Czapski, 2 moles of Cerium (IV)
decompose 1 mole of H2O2. Therefore, it follows that the
amount of H2O2 which can be decomposed by Cerium (IV)
contained in 50 mg of a membrane is 9.1 x 10-6 x 1/2 = 4.6 x
10-6 mol. Therefore, one of ordinary skill in the art would
conclude that only 1/2,000 amount of the H2O2 amount in the
oxidation resistance test of Kuramatsu can be decomposed
using Cerium (IV).
Accordingly, a person of ordinary skill in the art would
not consider Cerium (IV) having very weak H2O2-
decomposition ability, described in Czapski, as a replacement
Appeal 2013-003981
Application 11/615,256

3
for the polyvalent metals described in Kuramatsu for which a
high H2O2-decomposition ability of a large amount of H2O2 is
required. For this reason, one of ordinary skill in the art would
not be motivated to modify Kuramatsu's membrane to include
Cerium ions in order to arrive at the presently claimed
invention.
(App. Br. 15).
The Examiner considers Appellants' argument to be unpersuasive
based on the Examiner's finding that the cerium ions of Czapski would
decompose hydrogen peroxide by an amount comparable to the
decomposition caused by the copper ions of Kuromatsu (Ans. 12). We
emphasize that this finding by the Examiner has not been contested by
Appellants in the record before us. For this reason alone, there is no
convincing merit in the above argument that an artisan "would not consider
using Cerium (IV) having very weak H2O2-decomposition ability, described
in Czapski, as a replacement for the polyvalent metals described in
Kuramatsu" (App. Br. 15).
For the first time in their Reply Brief, Appellants proffer argument
and evidence that, "surprisingly and unexpectedly, the durability of
membranes can be remarkably improved by incorporating cerium ions into
membranes, as shown in the working examples of the present application"
(Reply Br. 3). We will not consider this new argument and evidence
because they are not accompanied by a showing of good cause explaining
why the argument and evidence could not have been presented in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476–77 (BPAI 2010)
(informative).
The decision of the Examiner is affirmed.
Appeal 2013-003981
Application 11/615,256

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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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