Ex Parte LEE et al

Patent Trials and Appeals Board

Mar 26, 2019

14410191 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/410,191 12/22/2014
23373 7590 03/28/2019
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
KunchanLEE
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.
Q216443 1015
EXAMINER
PARSONS, THOMAS H
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNCHAN LEE, YOSHINORI ABE, and YUJI ITO
Appeal2018-004361
Application 14/410, 191
Technology Center 1700
Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our Decision, we refer to the Specification filed December 22, 2014
("Spec."); the Final Office Action dated March 13, 2017 ("Final Act."); the
Appeal Brief filed August 15, 2017 ("App. Br."); the Examiner's Answer
dated January 25, 2018 ("Ans."); and the Reply Brief filed March 19, 2018
("Reply Br.").
2 Appellant is the Applicant, SHOW A DENKO K.K., identified as the real
party in interest. App. Br. 2.
Appeal2018-004361
Application 14/410, 191
BACKGROUND
The claims are directed to membrane electrode assemblies and fuel
cells comprising the same. According to Applicant, in a direct methanol fuel
cell (DMFC), a methanol crossover phenomenon occurs, such that methanol
supplied to an anode permeates through the solid polymer electrolyte and
reaches the cathode. Spec. ,r,r 3, 4. This methanol is oxidized by oxygen
supplied to the cathode and is discharged as carbon dioxide. Id. ,r 4. In the
oxidation reaction process, an oxidation reaction intermediate such as formic
acid or formaldehyde is produced and discharged from the fuel cell. Id.
Applicant sought to provide a fuel cell system in which the fuel cell's
influence on system efficiency is small and only a small amount of oxidation
reaction intermediate is discharged over a long period of time. Id. ,r 9.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A membrane electrode assembly comprising an anode, a
cathode and a solid polymer electrolyte membrane and having
constitution in which the solid polymer electrolyte membrane is
interposed between the anode and the cathode, wherein
the cathode has a cathode catalyst layer and a cathode
diffusion layer that is arranged on a surface of the cathode
catalyst layer, said surface being on the opposite side to the
solid polymer electrolyte membrane side,
the cathode catalyst layer contains an oxygen reduction
catalyst composed of composite particles each of which is
constituted of a catalyst metal and a catalyst carrier,
the catalyst metal contains palladium or a palladium
alloy,
the catalyst carrier contains, as constituent elements,
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Application 14/410, 191
a transition metal element M 1 that is at least one
selected from the group consisting of titanium,
zirconium, niobium and tantalum,
a transition metal element M2 other than the
transition metal element M 1,
carbon,
nitrogen, and
oxygen,
the ratio of the number of atoms among the
transition metal element Ml, the transition metal element
M2, carbon, nitrogen and oxygen (transition metal
element Ml :transition metal element M2:carbon:nitro-
gen:oxygen) is (1-a):a:x:y:z (with the proviso that a, x, y
and z are numbers ofO < a :S 0.5, 0 < x :S 7, 0 < y :S2 and
0 < z :S3), and
the cathode diffusion layer contains an oxidation catalyst
and a water-repellent resin.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Suzuki et al. US 2011/0076591 Al
("Suzuki")
Monden et al. US 2012/0070763 Al
("Monden")
Toshiba Corp. 3 JP 2005-183014
("JP 2005-183014")
Mar. 31, 2011
Mar. 22, 2012
July 7, 2005
3 Appellant did not challenge the Examiner's use of a machine translation of
Toshiba Corp. (cited in this Decision as JP 2005-183014), thus, have waived
any objection to its evidentiary value. See In re Orbital Tech. Corp., 603
Fed. Appx. 924, 930 (Fed. Cir. 2015) (Appellant waived claims it might
have had related to machine translation by pursuing appeal on that record.).
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Application 14/410, 191
Monden et al. 4
("Monden '334")
WO 2009/104500 Al Aug. 27, 2009
REJECTIONS 5
The Examiner maintains and Appellant seeks review of the following
rejections under 35 U.S.C. § I03(a): (1) claims 1--4, 6, and 9 over Suzuki in
view of WO 2009/104500 Al; (2) claim 5 over Suzuki in view of WO
2009/104500 Al, and further in view of Monden; and (3) claims 7 and 8
over Suzuki in view of WO 2009/104500 Al, and further in view of JP
2005-183014. Final Act. 5-10; App. Br. 6.7
OPINION
Appellant argues patentability of the claims as a group. See App. Br.
6-13. We select claim 1 as representative of the claims. 3 7 C.F .R.
§ 4I.37(c)(l)(iv). Claims 2-9 will stand or fall with claim 1.
With respect to claim 1, the Examiner finds that Suzuki teaches the
limitations of the claim except for the "constituent elements" of the catalyst
carrier. Final Act. 5-7. The Examiner finds that WO 2009/104500 Al
discloses the claimed catalyst constituent elements in the claimed ratios. Id.
at 7. The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Suzuki's
membrane electrode assembly (MEA) with the catalyst carrier of
4 The Examiner used US 8,541,334 B2 as an English language equivalent of
this reference. Citations in this Decision to WO 2009/104500 Al refer to
figures and text in Monden '334.
5 Because this application claims an effective filing date before the March
16, 2013, effective date of the America Invents Act, we refer to the pre-AIA
version of the statute.
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Application 14/410, 191
WO 2009/104500 Al in order to provide a catalyst carrier having excellent
heat resistance and high catalytic ability without increasing the specific
surface area. Id.
Appellant argues that Suzuki does not disclose a catalyst carrier
containing, as constituent elements, a transition metal element, carbon,
nitrogen, and oxygen. App. Br. 9. Appellant argues that WO 2009/104500
Al does not disclose a cathode diffusion layer containing an oxidation
catalyst and a water-repellent resin. Id. Appellant argues that Monden,
further cited by the Examiner in rejecting claim 5 (Final Act. 8-9), does not
disclose a cathode diffusion layer containing an oxidation catalyst and a
water-repellent resin. Id. at 10. Appellant argues that JP 2005-183014,
further cited by the Examiner in rejecting claims 7 and 8 (Final Act. 9-10),
does not disclose a catalyst carrier containing, as constituent elements, a
transition metal element, carbon, nitrogen, and oxygen, or a cathode
diffusion layer containing an oxidation catalyst and a water-repellent resin.
Id.
These arguments are unpersuasive of reversible error. Each of the
above arguments addresses only individual references, and ignores the
combination of references cited by the Examiner. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Each reference cited by the Examiner must be
read, not in isolation, but for what it fairly teaches in combination with the
prior art as a whole. See id.
Appellant argues that none "of Suzuki, WO 2009/104500 Al,
Monden, [or] JP-2005-183014 discloses or suggests that use of a specific
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Application 14/410, 191
metal oxycarbonitride reduces emission of a reaction intermediate." App.
Br. 11. Initially, we observe that claim 1 does not require the claimed
membrane electrode assembly to reduce emission of a reaction intermediate.
See App. Br. 15 (Claims App.). In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) ("[L ]imitations are not to be read into the claims from the
specification.").
Appellant contends that if Suzuki's fuel cell was modified to replace
the carbon black catalyst carrier with WO 2009/104500 Al's metal
oxycarbonitride, "it is presumed that a corresponding modified membrane
electrode assembly would have properties regarding amount of an emitted
reaction intermediate similar to those for the membrane electrode assembly
in Suzuki." App. Br. 11. Appellant argues that, other than hindsight, there
would have been no reason to expect the membrane electrode assembly of
Suzuki as modified to have decreased the amount of an emitted reaction
intermediate. Id.
The skilled artisan "need not see the identical problem addressed in a
prior art reference to be motivated to apply its teachings." Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed.
Cir. 2005). The Supreme Court instructs us:
"In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103. . . . . The first error of the Court of
Appeals in this case was ... holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419--20 (2007). "As long as
some motivation or suggestion to combine the references is provided by the
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Application 14/410, 191
prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventors." In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992).
We are of the view that the Examiner's articulated rationale is
sufficient to support the rejection. The Examiner finds that Suzuki and
WO 2009/104500 Al are in a similar field of endeavor and are both
concerned with catalyst carriers of membrane electrode assemblies, thus, it
would have been obvious to modify Suzuki's catalyst carrier by
incorporating the catalyst carrier of WO 2009/104500 Al to provide a
catalyst carrier having excellent heat resistant that can exert high catalytic
ability without increasing the specific surface area. Final Act. 7; Ans. 7.
Where "a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond that person's skill." KSR, 550 U.S. at 401.
"Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious." In re Fout, 675 F.2d 297, 301
(CCPA 1982). Moreover, "[o ]bviousness does not require absolute
predictability of success ... all that is required is a reasonable expectation of
success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re
O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988)).
Thus, although the Examiner's rationale differs from Appellant's
reasons for using a metal oxycarbonitride carrier, the Examiner has
"articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
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Appellant's contention that the rejection is based on mere hindsight is
unpersuasive.
Appellant argues that the combination of the claimed cathode catalyst
layer and the claimed cathode diffusion layer in the MEA provides
unexpected superior results, making the claim nonobvious over the
references. App. Br. 8. Appellant argues that the fuel cells in Examples 1 to
3 of the Specification discharged only 1/10 to 1/30 of the reaction
intermediates (formaldehyde, formic acid, and methyl formate) that were
discharged by the fuel cell of Comparative Example 1. Id. Appellant
contends that Comparative Example 1, employing platinum-supported
carbon black to form the cathode catalyst layer, corresponds to the MEA
taught by Suzuki. Id. at 12. Appellant argues, therefore, that both the
claimed cathode catalyst layer (not present in Suzuki) and the claimed
cathode diffusion layer ( disclosed in Suzuki) are required to achieve
considerable reduction of reaction intermediates. Id. at 8.
"[T]he burden of showing unexpected results rests on he who asserts
them." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). When used as
evidence of nonobviousness, unexpected results must be shown to be
unexpected compared with the closest prior art. In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991). Superiority alone is not sufficient to
show that the result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 13 71 (Fed. Cir. 2007) ("[ A ]ny superior property must be unexpected
to be considered as evidence of non-obviousness." (emphasis in original)).
Appellant provides data on the amounts of formaldehyde, formic acid,
and methyl formate discharged by fuel cells comprising either 5 wt% Pd-
supported TiFeCNO ( catalyst 1) or 5 mass% Pt-supported carbon black
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(catalyst 5). Spec. ,r,r 243-267, 276-282. The data shows improvement in
results obtained with one catalyst versus the other, but Appellant provides
only attorney argument that the results obtained with catalyst 5 would have
been unexpected by one of ordinary skill in the art at the time of the
invention. It is well settled that arguments of counsel cannot take the place
of factually supported objective evidence. See, e.g., In re Huang, I 00 F .3d
135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
Of greater importance, Appellant's evidence is not commensurate
with the scope of claim 1. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (unexpected results must be "commensurate in scope with the degree
of protection sought by the claim[ s ]" on appeal). Claim 1 encompasses
catalyst carriers containing, inter alia, "a transition metal element Ml that is
at least one selected from the group consisting of titanium, zirconium,
niobium and tantalum," and "a transition metal element M2 other than the
transition metal element Ml." App. Br. 15 (Claims App.). The data
provided, however, is limited to a single catalyst carrier containing
Tio.91Feo.09C2.70No.070uo. Spec. ,r 241. Thus, data is available for only a
single amount of only one of the transition metals designated as transition
metal element Ml, only a single amount of a single transition metal M2 that
can be any transitional metal other than those specified as Ml, and only
single amounts of carbon, nitrogen, and oxygen. See id. Claim 1 is
substantially broader in scope than the limited data available, even assuming
it supports unexpected results. Such evidence is insufficient to overcome the
Examiner's prima facie case of obviousness.
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We are not persuaded by Appellant's argument that, because "all of
titanium, zirconium, niobium and tantalum are metals falling in periodic
table Group 4 or Group 5," they have "similar features in common," and one
of ordinary skill in the art would have expected the same superior effects
provided with Pd-supported TiFeCNO when titanium is substituted with
zirconium, niobium or tantalum. Reply Br. 4. Counsel's argument "cannot
take the place of evidence lacking in the record." Estee Lauder Inc. v.
L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Appellant's arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). We
sustain the rejection of claim 1 as obvious over Suzuki in view of WO
2009/104500 Al. For the same reasons, we sustain the rejections of claims
2-9, which Appellant did not argue separately.
DECISION
The rejections of claims 1-9 are 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 )(iv).
AFFIRMED
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