Ex Parte Patolsky et al

Patent Trial and Appeal Board

Aug 3, 2016

12988518 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/988,518 10/19/2010
67801 7590 08/05/2016
MARTIN D, MOYNIHAN d/b/a PRTSI, INC
P.O. BOX 16446
ARLINGTON, VA 22215
FIRST NAMED INVENTOR
Fernando Patolsky
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.
49417 1280
EXAMINER
CHERNOW, FRANK A
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte FERNANDO PATOLSKY, BORIS FILANOVSKY,
and ERAN GRANOT
Appeal2014-005464
Application 12/988,518
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
AVEL YN M. ROSS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal the Examiner's decision to reject claims 53, 55, 57,
58, 61, 62, 64---66, 75, 78, 79, 81, 95-97, and 99-101under35 U.S.C.
§ 103(a) as obvious over McGrath.3 We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).
1 In our opinion below, we refer to the Specification filed October 19, 2010
(Spec.), Final Office Action mailed July 17, 2013 (Final), the Appeal Brief
filed December 19, 2013 (Appeal Br.), the Examiner's Answer mailed
January 27, 2014 (Ans.), and the Reply Brief filed March 27, 2014 (Reply
Br.).
2 Appellants identify the real party of interest as Ramot at Tel-Aviv
University Ltd. Appeal Br. 2.
3 McGrath et al., US 2007/0227300 Al, pub. Oct. 4, 2007.
Appeal2014-005464
Application 12/988,518
We REVERSE.
All of the claims are directed to a fuel cell having an anode with a
catalyst layer consisting of a metal selected from the group consisting of
copper, gold, silver, and an alloy of at least one of copper, silver and gold.
All of the claims require that the catalyst layer be "devoid of a platinum
group metal." See, e.g., claims 53 and 95 (reproduced in the Claims
Appendix, Appeal Br. 20).
As pointed out by Appellants, "devoid of' is defined in the
Specification. Specifically, the Specification states:
As used herein throughout, the phrase "devoid of'
encompasses the presence of minute amounts of the indicated
substance (for example, less than 0.1 % by weight, less than
0.01 % by weight, and less than 0.001 % by weight), as well as
the complete absence of the indicated substance.
Spec. 25, 3rd full para.
The Specification also defines the genus of "platinum group metals."
Specifically, the group refers to "six metallic elements clustered together in
the periodic table, which include ruthenium, rhodium, palladium, osmium,
iridium, and platinum." Spec. 25, 1st full para.
Thus, Appellants' claims require that the catalyst contain less than 0.1
wt% of the metals ruthenium, rhodium, palladium, osmium, iridium, and
platinum.
The Examiner finds that McGrath teaches a catalyst containing a
range of platinum overlapping the range represented by "devoid of
platinum," i.e., less than 0.1 %. Final 4.
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Appeal2014-005464
Application 12/988,518
We agree with Appellants that the Examiner has not provided a basis
in fact or technical reasoning to reasonably support the finding. Appeal Br.
10.
McGrath teaches compositions of nanoparticles in admixture with
platinum particles. McGrath i-f 1. The nanoparticles include metals that are
at least nearly as active as platinum at reducing oxygen or oxidizing
hydrocarbon fuel. McGrath i-f 3. Such metal compositions include cobalt,
iron, nickel, ruthenium, chromium, palladium, silver, gold, copper and their
alloys. Id. The Examiner focuses on the disclosure of copper, a non-
platinum group metal, and finds that the nanoparticles can be 90% or more
of the catalyst layer. Final 4. The Examiner finds that this range includes
100% or very close to 100%, resulting in a range of compositions
overlapping compositions that would be "devoid of platinum" as required by
the claims. Id.
The evidence does not support the Examiner's finding. McGrath uses
the nanoparticles in admixture with platinum particles. McGrath i-f 1.
McGrath desires the nanoparticles be in good contact with the platinum so
the nanoparticles accept electrons from the platinum. McGrath i-f 1 7. The
contact increases the activity of the platinum. McGrath i-f 18. The ratio of
platinum to the nanoparticles largely depends on the mode of fuel cell
operation, and while high nanoparticle fractions are ideal, and over 90% of
the platinum can be replaced, there is no convincing evidence that levels
devoid of platinum (less than 0.1 % platinum and greater than 99 .9%
nanoparticles) would have been suggested to those of ordinary skill in the art
as having the level of platinum necessary to allow the nanoparticles to
sufficiently accept electrons from the platinum. In fact, McGrath indicates
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Appeal2014-005464
Application 12/988,518
that "preferably up to 95% by total metal loading weight can be replaced
with nanoparticles." Although McGrath uses the word "preferably," in the
context of the entire disclosure, 95% appears to be an upper limit or at least
near the upper limit. McGrath i-f 3 7.
Thus, a preponderance of the evidence does not support the
Examiner's finding that McGrath would have suggested to one of ordinary
skill in the art a catalyst having less than 0.1 % platinum group metal.
CONCLUSION
We do not sustain the Examiner's rejection.
DECISION
The Examiner's decision is reversed.
REVERSED
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