Ex Parte Takahashi et al

Patent Trial and Appeal Board

Jan 23, 2019

14232409 (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/232,409 01/13/2014
23373 7590 01/25/2019
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Akira Takahashi
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.
Q209230 7631
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
01/25/2019 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
Exparte AK.IRA TAKAHASHI, TAKUYA IMAI, RYUJI MONDEN,
YASUAKI WAKIZAKA, and TAKASHI SAT0 1
Appeal2018-002349
Application 14/232,409
Technology Center 1700
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
SHELDON M. McGEE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103 of claims 1, 2, and 15-20 as unpatentable
over Monden (US 2011/0020729 Al, pub. Jan. 27, 2011). We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Showa Denko K.K. is identified as the real party in interest (Br. 2).
Appeal2018-002349
Application 14/232,409
Appellants claim an oxygen reduction catalyst comprising titanium,
carbon, nitrogen, and oxygen as constituent elements having certain ranges
(i.e., in which each of the constituent elements (titanium: carbon: nitrogen:
oxygen) is represented by 1: x: y: z) and wherein the catalyst exhibits certain
peak intensities in XRD measurement that satisfy relationships described in
expressions (1) and (2) as defined in the claim (sole independent claim 1 ).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
An oxygen reduction catalyst comprising titanium,
carbon, nitrogen, and oxygen as constituent elements, wherein
0.6:Sx:S7, 0.05:Sy:S2, and 0.05IB (1 ), and
0.7:S(I~(IA+Ic+ID)) :S 1 (2).
Appellants do not present separate arguments specifically directed to
dependent claims 2 and 15-20 (see Br. 7-15). Therefore, the dependent
claims will stand or fall with their parent independent claim 1.
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Appeal2018-002349
Application 14/232,409
We sustain the Examiner's rejection for the reasons given in the Final
Action and the Answer with the following comments added for emphasis
and completeness.
The Examiner finds that Monden teaches oxygen reduction catalysts
comprising titanium, carbon, hydrogen, and oxygen as constituent elements
in preferred ranges that overlap the claimed ranges and that Monden further
teaches exemplary embodiments wherein the constituent elements are within
or very close to the claimed ranges (Final Action 3--4 ( citing Monden ,r 22
and Examples 1, 3, 5, and 7 of Table 1)). Based on these findings, the
Examiner concludes that the ranges of constituent elements defined by claim
1 would have been obvious (id. at 4). As for the claimed relationships of
XRD peak intensities, the Examiner finds that Monden does not expressly
teach a single embodiment having such relationships in combination with
the claimed constituent element ranges (id. at 4--5). However, the Examiner
additionally finds that Monden's Figures teach intensity peaks lying within
or close to those required by claim 1 and that Monden's paragraph 122
teaches manipulating catalyst crystallinity via a heating protocol, whereby a
variety of XRD peak intensity profiles would have been expected (id. at 5).
These circumstances lead the Examiner to determine that the catalysts taught
or suggested by Monden include those having the constituent element ranges
and peak intensity relationships required by claim 1 (id.).
Appellants argue that "Monden does not render obvious the presently
recited oxygen reduction catalyst composition in view of the unexpectedly
superior results achieved by the presently claimed invention" (Br. 11
(emphasis removed); see also id. at 11-13 (citing Spec. examples involving
inventive versus comparative catalysts)).
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Appeal2018-002349
Application 14/232,409
In response, the Examiner determines that the Specification evidence
cited by Appellants lacks persuasive merit because it is not commensurate in
scope with claim 1 due to the inventive examples being "significantly
narrower in scope than the claimed embodiment" (Ans. 8). We emphasize
that Appellants do not dispute the Examiner's determination in the record of
this appeal (i.e., no Reply Brief has been filed). Moreover, we observe that
the Specification disclosures cited as showing "unexpectedly superior
results" fail to characterize the results as unexpected. In the appeal record,
only the attorney who wrote the Appeal Brief states that the results in
question are unexpected, and such an attorney statement is merely an
argument unsupported by evidence and therefore inadequate to establish
unexpected results. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
( explaining that argument by counsel cannot take the place of evidence).
For these reasons, the above quoted argument is unconvincing.
Appellants also state that "none of the Examples of Monden satisfy
the claimed ranges of x, y, and z" (Br. 11) and argue without embellishment
that "a person of ordinary skill in the art would not have arrived at the
claimed values of x, y, and z based on the extremely broad disclosure of
Monden" (id.).
The Examiner responds to Appellants' statement by finding that
Example 3 of Monden satisfies the claimed x, y, and z values (Ans. 7). As
above, we emphasize that Appellants do not challenge this finding in the
record before us. Further, Appellants' unembellished argument is not
convincing because it fails to address, and accordingly fails to show error in,
the rationale of the Examiner in reaching a conclusion of obviousness.
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Appeal2018-002349
Application 14/232,409
Finally, Appellants argue that Monden's disclosure including the cited
Examples do not teach or suggest the cubic structure said to be exhibited by
the claim 1 catalyst (Br. 13-15).
We agree with the Examiner that Monden's collective teachings (e.g.,
the constituent element ranges of paragraph 22 and Example 3 as well as
Figures 7 and 8 in combination with paragraph 122) support a determination
that the catalysts taught or suggested by Monden apparently are identical to
those of claim 1 and therefore necessarily have the same properties and
parameters including the claimed constituent element ranges and peak
intensity relationships ( Ans. 10-11; see also Final Action 5). Appellants
proffer no evidence supporting their burden of proving otherwise as
correctly noted by the Examiner (Ans. 11 ).
For the reasons expressed above and given by the Examiner,
Appellants fail to show error in the rejection of claim 1 as unpatentable over
Monden.
The decision of the Examiner is 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).
AFFIRMED
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