Ex Parte Shirvanian

Patent Trial and Appeal Board

Jun 27, 2016

12770277 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121770,277 04/29/2010
28395 7590 06/29/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Alireza Pezhman Shirvanian
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.
81205395 9396
EXAMINER
PARSONS, THOMAS H
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALIREZA PEZHMAN SHIRVANIAN
Appeal2014-007722
Application 12/770,277
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-3, 5, 8-13, and 22-26 of
Application 12/770,277 under 35 U.S.C. § 103(a) as obvious. Final Act.
(September 4, 2013). Appellant1 seeks reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The '277 Application describes a fuel cell electrode assembly having
a plurality of catalyst regions and a method of making the electrode
1 Ford Global Technologies, LLC is identified as the real party in interest.
Appeal Br. 1.
Appeal2014-007722
Application 12/770,277
assembly. Spec. 1. The fuel cell electrode assembly includes a substrate
and a plurality of catalyst regions supported on the substrate in a manner.
Id. at 1-2. The catalyst regions include a number of atomic layers of
catalyst metals. Id. at 2.
Claim 1 is representative of the '277 Application's claims and is
reproduced below:
1. A fuel cell electrode assembly comprising:
a substrate; and
a plurality of spaced apart catalyst regions each having a
surface contacting the substrate and a thickness dimension
extending from the surface, the surface including a linear
dimension greater than the thickness dimension, the linear
dimension being the largest linear distance between two points
on an outer boundary of the surface, the plurality of catalyst
regions including catalyst metals and being provided with less
than 5 weight percent of carbon materials.
Appeal Br. 5 (Claims App.). 2
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 5, and 23-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hahn3 and Brown. 4 Final
Act. 4--6.
2 Appellant has not numbered the pages of the Claims Appendix. For ease
of reference, we have continued the numbering scheme from the body of the
Appeal Brief.
3 US 2005/0208354 Al, published September 22, 2005.
4 US 6,958,308 B2, issued October 25, 2005.
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Application 12/770,277
2. Claims 2, 3, 9, 10, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hahn, Brown, and Lopez. 5
Final Act. 6-9.
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Hahn and Brown as applied to claim 1. Final
Act. 9-10.
4. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hahn, Brown, Lopez, and
Niu.6 Final Act. 10-11.
5. Claims 22 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hahn, Brown, and Lopez.
Final Act. 11-14.
DISCUSSION
Appellant presents a single argument and for reversal of the rejection
of the '277 Application's pending claims. See Appeal Br. 2--4. Although
not explicitly stated, Appellant's argument appears to be based upon claim
l's limitations. Id. Claims 2, 3, 5, 8-13, and 23-25 are said to be patentable
because they depend from claim 1. Id. Independent claim 22 is said to be
patentable for the same reasons that claim 1 is patentable. Id. at 4. Claim 26
is said to be patentable because it depends from claim 22. Id. We, therefore,
limit our discussion to claim 1.
The Examiner rejected claim 1 as unpatentable over the combination
of Hahn and Brown. Final Act. 4--5. In particular, the Examiner found that
5 US 2010/0092841 Al, published April 15, 2010.
6 US 7,977,013 B2, issued July 12, 2011.
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Application 12/770,277
Hahn describes the subject matter of claim 1 except that Hahn does not
describe that the plurality of catalyst regions comprise less than 5 weight
percent of carbon material. Id. at 4. The Examiner further found that Brown
describes a catalyst provided with less than 5 weight percent carbon
material. Id. (citing Brown col. 4, 11. 7--46; col. 10, 1. 21---col. 12, 1. 3; col.
12, 1. 38---col. 13, 1. 67). The Examiner also found that a person of ordinary
skill in the art at the time of the invention would have been motivated to
make a supported catalyst with less than 5 weight percent carbon for use in a
fuel cell with a controlled particle size that has increased commercial
viability and purity. Id. at 4--5.
We reverse for the reasons given in Appellant's Brief. We add the
following for emphasis.
Brown describes the use of essentially any amount of carbon black in
its catalyst:
In one aspect, the carbon black is greater than about 0% to
less than about 100% by weight of the composition of the present
invention, for example, about 2, 5, 10, 15, 20, 25, 30, 35, 40, 45,
50, 55, 60, 65, 70, 75, 80, 85, 90, 95, 96, or 97%, where any value
can comprise an upper or a lower endpoint, as appropriate.
Brown col. 11, 11. 3-8 (emphasis added).
Brown's broad disclosure does not create a prima facie case of
obviousness of Appellant's claim directed to catalysts with less than 5
weight percent carbon. See In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)
("A disclosure of millions of compounds does not render obvious a claim to
three compounds, particularly when that disclosure indicates a preference
leading away from the claimed compounds."). The Examiner has not
provided any explanation or guidance as to why a person of ordinary skill in
the art at the time of the invention would have selected any particular range
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Appeal2014-007722
Application 12/770,277
of carbon content based upon Brown's disclosure. In the absence of such an
explanation, we cannot sustain the obviousness rejection. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.").
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-3,
5, 8-13, and 22-26 of the '277 Application.
REVERSED
5