Ex Parte Weisenstein et al

Patent Trial and Appeal Board

Sep 21, 2016

13910688 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/910,688 06/05/2013
22045 7590 09/23/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Adam Weisenstein
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.
ZAFC 0119 PUS 7590
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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 ADAM WEISENSTEIN, RANDOLPH M. KOS TED,
RONALD D. BROST, KRISTINE M. BROST and
HOWARDF. WILKINS
Appeal2016-006860
Application 13/910,688
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1-9 of Application 13/910,688.
We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 Appellants identify the real party in interest as ZAP Energy Systems, Inc.,
formerly known as Zinc Air Fuel Cells, Inc. App. Br. 2.
Appeal2016-006860
Application 13/910,688
BACKGROUND
The subject matter on appeal relates to a method for forming a
conductive catalytic layer for use with the negative electrode of a metal-air
battery. Specification ("Spec.") i-f 4. The catalyst is a perovskite formed
from metal salts and chemically bound to a conductive scaffold, such as a
metal foam or mesh, to form a catalytic layer. Spec. i-fi-1 20-25. Claim 1,
reproduced below from the Claims Appendix of the Appeal Brief, is
representative of the claims on appeal:
1. A method for forming a catalytic layer comprising:
infiltrating a mobile phase including metal salts into a
metal scaffold to form a percolated scaffold;
drying the percolated scaffold to form a green-group
scaffold;
calcining the green-group scaffold such that perovskites
form from the metal salts and chemically bind to the scaffold;
and
quenching the scaffold such that a surface area or activity
of the perovskites increases, or an electrical resistance of the
perovskites decreases.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Brokman et al., us 5,185,218 Feb.9, 1993
("Brokman")
Cable et al., us 2007/0065701 Mar. 22, 2007
("Cable")
Anderson et al., us 5,494,700 Feb.27, 1996
("Anderson")
Guttmann et al., us 4,762,961 Aug.9, 1988
("Guttmann")
Courty et al., us 4,535,067 Aug. 13, 1985
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Appeal2016-006860
Application 13/910,688
("Courty")
THE REJECTIONS
1. Claims 1, 2, and 5-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Brokman, Cable, and
Anderson.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Brokman, Cable, Anderson, and Guttmann.
3. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Brokman, Cable, Anderson, and Courty.
DISCUSSION
Appellants argue the claims as a group (App. Br. 2-5). Although
additional references are applied in rejecting dependent claims 3 and 4,
Appellants do not separately argue those claims (id.). We therefore limit our
discussion to claim 1, which is the sole independent claim. Claims 2-9
stand or fall with that claim. See 37 C.F.R. § 41.37(c)(l)(iv)
The Examiner finds that Brokman teaches a method for making a fuel
cell cathode having a metallic foamed or fiber mat which is impregnated
with a perovskite catalyst, and that Cable teaches a method for applying a
perovskite layer to impart catalytic properties to a cathode. Final Act. 4,
citing Brokman 3:22-32, 3:54---64, 4:21-30; Cable i-fi-168---69. The Examiner
further finds that Anderson teaches a method for manufacturing a cathode
for use in a solid oxide fuel cell wherein a perovskite layer is deposited on a
substrate and quenched in air after calcining. Final Act. 5, citing Anderson
Abstract, 4:20-23, 9:59---67. The Examiner determines that the properties of
increased surface area or activity, or decreased electrical resistance, of the
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Appeal2016-006860
Application 13/910,688
perovskites recited in claim 1 necessarily follow from Anderson's process,
and therefore it would have been obvious to a person of ordinary skill in the
art to combine the known methods of Brokman, Cable, and Anderson to
predictably yield a perovskite having the claimed properties. Final Act. 5.
Appellants argue that the Examiner's reliance on Anderson as
disclosing an increase in surface area following calcining is misplaced,
because Anderson teaches that calcining at temperatures exceeding 600 QC
can lead to crack formation, which is undesirable. Reply Br. 2, citing
Anderson 8:38-55. Appellants further argue that the claimed properties of
increased surface area or decreased electrical resistance of the perovskites
are not inherent to perovskites formed from the combined methods of the
prior art, because "different cation precursors and synthesis techniques lead
to different perovskite crystalline structures (polymorphs ), which of course
yield different properties (e.g., surface area, activity, electrical resistance
etc.)" App. Br. 3. Appellants rely on Cristina de la Calle et al.,
T"\ 1 1 • I' T\ r1 f"'f /""""\. /f). __., __., "I \ Tit. "1 • , J TTT1 7 "1
rotymorpnzsm OJ lia I-x 0rxcou3_6 (US:XS.1) rerovsKues: A 1 nermat ana
Structural Study by Neutron Diffraction ("Calle") to support their argument.
Id. Calle describes that changing the quenching conditions in preparation of
perovskites from a solid solution of Ba1_x SrxCo03_8 (O:Sx:Sl) leads to
different crystalline structures. Calle, Abstract. Calle does not directly
address the methods of Brokman, Cable, and Anderson relied upon by the
Examiner, however, and therefore does not establish conclusively that those
methods would not result in increased surface area or activity of the
perovskites upon calcining and quenching.
Appellants' arguments do not persuade us of reversible error.
Because the Examiner has correctly determined that the prior art process
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Appeal2016-006860
Application 13/910,688
steps-in particular Anderson's calcining and quenching steps-are
substantially identical to the steps recited in the claimed process, it is
Appellants' burden to prove that the products of those processes do not
necessarily or inherently possess the claimed properties. See In re Best, 562
F.2d 1252, 1255 (CCP A 1977) ("Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.") Appellants' reliance on Calle does
not meet that burden, because it does not directly address the methods
resulting from the combined teachings of Brokman, Cable, and Anderson
relied upon by the Examiner, and therefore does not establish that those
methods would not result in increased surface area or activity of the
perovskites upon calcining and quenching. Further, the fact that Anderson
discloses that calcining can lead to crack formation does not undercut the
basis of the rejection, i.e. inherency. ivforeover, Anderson does not teach
away from calcining as part of a process for perovskite formation, but
merely discloses that certain "[ c ]alcining temperatures above about 600QC
tend to cause unwanted thermal interaction between the film and substrate as
well as rapid grain growth" and, depending on average grain size and
polycrystalline oxide film thickness, can lead to crack formation. Anderson
8:49-55. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) ("a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine"). For these reasons, we are not persuaded by Appellants'
arguments for reversal of the rejection.
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Appeal2016-006860
Application 13/910,688
SUMMARY
We affirm the rejections of claims 1-9.
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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