Ex Parte Haile et al

Patent Trial and Appeal Board

May 2, 2018

14156251 (P.T.A.B. May. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/156,251 01115/2014
20350 7590 05/04/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Sossina M. Haile
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.
86544-897703 (007021US) 6372
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
05/04/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOS SINA M. HAILE and ZONGPING SHAO
Appeal2017-008016
Application 14/156,251
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
BRIAND. RANGE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 64---68. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we cite to the Specification of January 15, 2014
(Spec.), Non-Final Office Action of September 17, 2015 (Non-Final),
Appeal Brief of June 2, 2016 (Br.), and Examiner's Answer of November 4,
2016 (Ans.).
2 Appellant is the Applicant, the California Institute of Technology, which,
according to the Brief, is the real party in interest. Br. 3.
Appeal2017-008016
Application 14/156,251
The claims are directed to a solid oxide fuel cell. Claim 64 is
illustrative:
64. A solid oxide fuel cell comprising:
a cathode comprising a compound of the general form
Ba1-xSrxC01-yFey03-8 having a perovskite crystal structure,
wherein y is less than 1 and greater than 0, xis greater than 0
and less than 1, and 8 is less than or equal to 1;
an anode; and
an electrolyte, wherein the solid oxide fuel cell has a
power density greater than about 100 mW I cm2 at a temperature
of less than or equal to 600 °C.
Br. 17 (claims appendix).
The Examiner maintains the following rejections:
A. The rejection of claims 64--68 under 35 U.S.C. § 112 i-f 1 as
lacking written descriptive support;
B. The rejection of claims 64, 67, and 68 under 35 U.S.C. § 103(a)
as obvious over Doshi 3 in view of Xiong4 ; and
C. The rejection of claims 65 and 66 under 35 U.S.C. § 103(a) as
obvious over Doshi in view of Xiong, as evidenced by
Reichner. 5
3 US 6,632,554 B2, issued Oct. 14, 2003.
4 Guoxing Xiong et al., Investigation of the permeation behavior and
stability of a Bao.s:Sro.s:Coo.s:Feo.2:03--8 oxygen membrane,
Journal of Membrane Science 172 (2000) 177-188.
5 Philip Reichner, EP 0 285 727 Bl, published Oct. 12, 1988.
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Application 14/156,251
Written Descriptive Support
OPINION
The Examiner rejects claims 64---68 as lacking written descriptive
support for a solid oxide fuel cell having "a power density greater than about
100 m w I cm2 at a temperature of less than or equal to 600 °C" as recited in
claim 64 and lacking support for the single chamber solid oxide fuel cell of
claim 65 having the power density of claim 64. Non-Final 3.
Appellant contends the Specification provides support throughout the
Specification, such as on page 10, line 35 to page 11, line 7. Br. 9.
The issue is: Has Appellant identified a reversible error in the
Examiner's finding that the original Specification fails to reasonably convey
to the ordinary artisan that Appellant had possession of a solid oxide fuel
cell and a single chamber solid oxide fuel cell having the required power
density?
Appellant has not identified such an error.
When discussing duel chamber fuel cells, the portion of the
Specification relied on by Appellant reports that "[ fJor example, power
densities ranging from about 100 to about 1000 mW I cm2 were obtained at a
temperature of approximately 600°C." Spec. 11: 5-7. This provides support
for a power density of 100 mW/cm2 to about 1000 mW/cm2 at about 600°C,
but says little about the power density at the "less than" temperatures
encompassed by claim 64. Nor does it provide support for power densities
above 1000 mW I cm2.
In regard to single chamber fuel cells, the Specification reports
obtaining power densities ranging from about 100 to about 500 mW/cm2 at
temperatures ranging from 450 to 600°C. Spec. 11: 16-20. Although, this
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Application 14/156,251
portion of the Specification extends to power densities greater than about
100 mW/cm2 up to about 500 mW/cm2 at temperatures of 450 to 600°C,
again, the claim encompasses power densities at temperatures lower than
450°C and the Specification does not convey any power density for those
lower temperatures. Nor does the Specification say anything about power
densities above 500 m W/cm2.
The difference in scope between the ranges of the claim and those
reported in the Specification supports the Examiner's finding of lack of
written descriptive support.
Appellant has not identified a reversible error in the Examiner's
finding that the original Specification fails to reasonably convey to the
ordinary artisan that Appellant had possession of a solid oxide fuel cell and a
single chamber solid oxide fuel cell having power densities outside the
ranges recited in the Specification.
Obviousness
In addressing the obviousness rejections, Appellant does not argue
any claim or rejection apart from the others. Br. 10-16. Thus, we confine
our discussion to the issues arising for the rejection of claim 64. The issues
on appeal focus on the requirement that the cathode comprise a compound of
the general form Ba1-xSrxC01-yFey03-8 and the requirement that the solid
oxide fuel cell have a power density greater than about 100 mW I cm2 at a
temperature of less than or equal to 600°C. Compare Non-Final 3--4, with
Br. 10-16.
Appellant has not identified a reversible error in the Examiner's
findings and determinations with regard to the compound and power density.
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Application 14/156,251
There is no dispute that Doshi discloses solid oxide fuel cells (SOFCs)
with cathodes capable of increased performance in about the 550° to 800° C
operating range. Doshi col. 5, 11. 2-10. Doshi discloses that conventional
SOFCs are operated at about 1000°C. Doshi's goal is to achieve a cell
power density of about 1 W/cm2 at about 600°C. Doshi col. 4, 11. 57-58. A
power density of about 1 W/cm2 is ten times greater than the about 100
m W/cm2 power density recited in claim 64.
Doshi discloses a cathode 13 particularly useful for about 550° to
800° C operation (Doshi col. 6, 11. 38-52, Fig. 2) with a conductive layer 20
that may comprise a perovskite, brownmillerite, or pyrochlore structure
selected from AB03±d, A2B20s±d, and C2D207±d, wherein A is one or more of
rare earth metals, Ca, Sr, Mg, and Ba; B is a transition metal and d is a
number from 0 to 1. Doshi col. 7, 11. 11-34. For the AB03±d compounds,
Doshi exemplifies Lao.sSro.sCo03 (LSC) and states that Fe can be substituted
for some of the Co. Id. For the A2B20s±d compounds, Doshi states that
SrFeCoo.s02.s±d is useful as well as compounds in which the Fe to Co ratio
varies, i.e., SrFe1-xCox02.s±d· Doshi col. 7, 11. 35--41. Although Doshi does
not provide an example including both Sr and Ba, Doshi specifically
suggests using those two elements.
Given that Doshi specifically suggests using AB03±d and A2B20s±d
compounds with A being one or more of a group of elements including Sr
and Ba, and B being a transition metal with a combination of Fe and Co
exemplified, we agree with the Examiner that Doshi suggests
Ba1-xSrxC01-yFey03-8 compounds as useful for about 550° to 800° C
operation and would achieve a cell power density of about 100 mW I cm2 at
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Application 14/156,251
about 600°C, which is ten times lower than the 1 W/cm2 at about 600°C
power density Doshi discloses as Doshi' s goal.
Appellant contends that "Doshi states only that the goal is to achieve a
power density of 'about 1 W/cm2 ' not that greater power densities, such as
the claimed value of greater than about 100 W/cm2, are sought." Br. 11.
But Appellant overlooks the fact that claim 64 recites a power density of 100
mW/cm2, not a power density of 100 W/cm2. The goal of Doshi is about 1
W/cm2 and given that this goal is ten times higher than the 100 m W/cm2
power density of the claim, that Doshi's fuel cell would be reasonably
expected to achieve the power density of the claim is a reasonable finding.
Appellant further contends that Doshi' s genus of disclosed
compounds is too large to suggest the cathode compounds encompassed by
claim 64. Br. 11-13. Given the specific disclosure of Sr and Ba as the one
or more compounds of A and the specific disclosure of using Fe and Co as
the B transition metals, a preponderance of the evidence supports the
Examiner's finding that Doshi suggests using Ba1-xSrxC01-yFey03-8·
Doshi' s disclosure that Ba and/ or Sr can be used provides a
reasonable expectation of success that the resulting compound will have the
properties Doshi desires in the conductive layer 20. Thus, the burden shifted
to Appellant to show that the compounds of claim 64 provide unexpected
results.
In arguing that there would be no reasonable expectation of success,
Appellant contends that "Ba1-xSrxC01-yFey03-8 surprisingly has
brownmillerite stoichiometry and perovskite crystal structure that result in
surprisingly low interfacial resistance even when the electronic conductivity
is low." Br. 14, citing Haile Deel. As we stated above, a preponderance of
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Application 14/156,251
the evidence supports the Examiner's finding of a reasonable expectation of
success such that the burden shifted to Appellant to show unexpected results.
"In order for a showing of 'unexpected results' to be probative
evidence of non-obviousness, it falls upon the applicant to at least establish:
(1) that there actually is a difference between the results obtained through
the claimed invention and those of the prior art, ... and (2) that the
difference actually obtained would not have been expected by one skilled in
the art at the time of invention." In re Freeman, 4 7 4 F .2d 1318, 1324
(CCP A 1973) (citations omitted). The "difference in results" must be
established as being between the claimed subject matter and the closest prior
art. In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991).
"[O]bjective evidence of non-obviousness must be commensurate in scope
with the claims which the evidence is offered to support."' In re Greenfield,
571F.2d1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792
(CCPA 1971)).
To the extent that Appellant is attempting to show unexpected results,
we agree with the Examiner that the evidence is insufficient (Ans. 10-11),
particularly, given that it is not clear that Appellant is using the evidence as a
showing of unexpected results and did not respond to the Examiner's
treatment as such (Ans. 9--11) in a reply brief.
CONCLUSION
In summary:
64---68 § 112 ii 1 64---68
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Application 14/156,251
64,67,68 § 103(a)
65,66 § 103(a)
Summar
Doshi, Xiong
+ Reichner
DECISION
The Examiner's decision is affirmed.
64,67,68
65,66
64---68
TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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