Ex Parte Yang et al

Patent Trial and Appeal Board

Sep 29, 2016

12911827 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/911,827 10/26/2010
28395 7590 10/03/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Jun Yang
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.
83163722 1957
EXAMINER
LI, TIJN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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 JUN YANG, SHINICHI HIRANO, RICHARD E. SOLTIS,
ANDREW ROBERT DREWS, ANDREA PULSKAMP,
and JAMES WALDECKER 1
Appeal2015-006465
Application 12/911,827
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's maintained rejection of claims 1, 2, 4, 7, 9-13, and 24-34. We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
BACKGROUND
Appellants' claimed invention is directed to a catalyst assembly
including a two-dimensional catalyst and a two-dimensional substrate where
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. Appeal Br. 3.
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Application 12/911,827
both the catalyst and support are crystalline and planar, and the catalyst
crystal plane and substrate crystal plane are substantially aligned. Spec.
Abstract. The independent claims are directed to a catalyst assembly.
Independent claim 1 sets forth that the catalyst assembly includes "a
crystalline platinum catalyst ... including an exposed surface layer
crystallographically oriented according to a (111) plane." Independent claim
26 sets forth that the catalyst assembly includes "a Pt3Ni catalyst layer ...
including an exposed surface layer crystallographically oriented according to
a (111) plane."
Independent claims 1 and 26 are reproduced below from the Revised
Claims Appendix filed December 23, 2014.
1. A catalyst assembly comprising:
a crystalline substrate of Ag, Al, Au, Cu, Ir, Pd, Rh, Mo,
Nb, Ta, W, Os, Re, Ru and/or Ti atoms and
a crystalline platinum catalyst having 1-20 atomic layers
including an exposed surface layer crystallographically oriented
according to a (111) plane, the cP;stalline platinum catalyst
supported on the crystalline substrate and the atomic distance
between two adjacent catalyst atoms and the atomic distance
between any two adjacent substrate atoms is less than 10
percent apart.
26. A catalyst assembly comprising:
a crystalline substrate of metal oxide, metal nitride and/or
carbide and having an atomic distance between first and second
adjacent atoms; and
a Pt3Ni catalyst layer of up to 20 atomic layers including
an exposed surface layer crystallographically oriented
according to a (111) plane, and supported on the crystalline
substrate, the atomic distance between two adjacent catalyst
atoms and the atomic distance between any two adjacent
substrate atoms is less than 10 percent apart.
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Application 12/911,827
THE REJECTIONS
I. Claims 1, 2, 4, 7, 9, 11, 24-30, 32, and 33 stand rejected under
35 U.S.C. § 103 over Debe2 in view of Stamenkovic3;
II. Claims 10 and 34 stand rejected under 35 U.S.C. § 103 over
Debe in view of Stamenkovic in further view of Popov4 ;
III. Claims 12, 13, and 31 stand rejected under 35 U.S.C. § 103
over Debe in view of Stamenkovic in further view ofNiu5; and
IV. Claims 1, 2, 4, 7, 9-13, and 24-34 stand provisionally rejected
on the ground of nonstatutory obviousness-type double
patenting over claims 1, 2, 4, 7, 9-13, and 24-34 of Yang. 6
DISCUSSION7
The provisional rejection of the claims on the ground of nonstatutory
obviousness-type double patenting (Rejection IV) is not addressed in the
Appeal Brief and is, therefore, summarily affirmed.
As to the rejections under 35 U.S.C. § 103, Appellants argue the
claims subject to Rejection I on the basis of independent claims 1 and 26,
and then, with the exception of claim 2 requiring the crystalline catalyst to
2 Debe et al. (US 6,040,077, issued March 21, 2000).
3 Stamenkovic et al. (US 2009/0247400 Al, published October 1, 2009).
4 Popov et al. (US 2008/0161183 Al, published July 3, 2008).
5 Niu et al. (US 2009/0017363 Al, published January 15, 2009).
6 Patent Application No. 12/911,862 filed in the name of Yang et al. on
October 26, 2010, currently on appeal as noted in the Related Appeals and
Interferences section on page 3 of the Appeal Brief.
7 We refer to the Final Office Action mailed February 21, 2014, the Appeal
Brief filed October 24, 2014 (supplemented December 23, 2014), and the
Examiner's Answer mailed April 16, 2015.
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Application 12/911,827
include at least three layers, rely on the dependency of claims subject to
Rejections II and III from claims subject to Rejection I. Appeal Br. 4-5.
Our discussion, accordingly, focuses on the rejection of independent
claims 1 and 26 over Debe in view of Stamenkovic. Upon consideration of
the evidence, we are unpersuaded of reversible error in the Examiner's
decision rejecting independent claim 1, and claims dependent thereon, but
we are persuaded the Examiner erred reversibly as to the obviousness
rejection of independent claim 26.
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner's rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
13 65---66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, it has long been the Board's practice to require an
appellant to identify the alleged error in the examiner's rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) ("[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency's
determination." (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
The Examiner relies on Debe for disclosing a microstructured
substrate supporting nanoscopic catalyst thin film that can comprise
alternating layers of catalyst materials where the catalyst can have crystal
structure of Pt (111). Ans. 2 (citing Debe Abstract, col. 3, 11. 1-10, col. 5,
11. 6-59, Fig. 2, col. 10, 1. 66 to col. 15, 1. 39). Debe discloses, inter alia,
alternating layers of Pt and Ru as the thin film. See, e.g., col. 15, 11. 46--47.
As to the substrate, the Examiner finds Debe teaches "the microstructured
substrates can be metal such as Al, Co, Cu, Mo, Ni, Pt, Ta etc. [sic] (col. 7,
lines 12-14)" and "the individual microstructure ... [can be] crystalline
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(col. 9, lines 32-33)." Ans. 2. The Examiner also finds Debe to further
teach that the substrate can be formed from organic material such as
heterocyclic compounds (col. 7, 1. 18 to col. 8, 1. 13) and inorganic material
such as carbon, ceramics like alumina, silica, and titanium nitride (TiN) (col.
10, 11. 17-51 ). Ans. 3. As to the layers of catalysts, the Examiner finds
Debe teaches that a 1-20 monolayer thickness can be deposited (col. 15,
11. 28-31) to form a catalyst film that can be continuous (col. 12, 1. 65 to col.
13, 1. 1) and that the degree of crystallinity and crystallite morphology can
be changed by varying conditions by which they are deposited (col. 14,
11. 55-61). Ans. 2-3.
The Examiner relies on Stamenkovic for disclosing that the exposed
surface layer of catalyst is crystallographically oriented according to a (111)
plane. Ans. 3. The Examiner finds "Stamenkovic teaches catalyst having
nanosegregated surface layers of Pt alloyed with transition metals, such as
Co, Ni, Fe, Ti, Cr, V, Zr and Mn" where the surface structure has "a
[ (] 111 [)] crystallographic orientation." Ans. 3 (citing Stamenkovic i-f 6,
claims 1-2, 11-15). The Examiner further relies on Stamenkovic for its
disclosure that its platinum alloy catalyst having such surface
crystallographic orientation has advantageous electronic structures greatly
enhancing catalytic properties. Ans. 3 (citing Stamenkovic i-f 6).
The Examiner concludes one of ordinary skill in the art at the time of
the invention would have found it obvious to modify the catalyst of De be so
as to have nanosegregated surface layers of platinum alloyed with transition
metals, which nanosegregated surface structures have a (111)
crystallographic orientation for the benefit of improved catalytic properties.
Ans. 3. The Examiner further concludes that it would have been obvious to
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Application 12/911,827
adopt a proper number of layers to produce a catalyst with desired final
composition and morphology. Ans. 4 (citing Debe col. 15, 11. 24-39).
As to the limitation of the atomic distances between adjacent catalyst
atoms and between adjacent substrate atoms (claims 1, 26), the Examiner
relies on the structure of the relied on combination being substantially
similar to that claimed (Ans. 4), which determination Appellants do not
squarely contest (generally Appeal Br.).
Appellants proffer three general arguments. Appeal Br. 4-5.
First, Appellants contend that Debe does not disclose or suggest the
exposed surface being oriented in a (111) crystal plane. Appeal Br. 4. In
particular, Appellants argue De be at best discloses a (111) growth axis
(citing col. 5, 11. 7-24) and that "[t]he growth axis does not determine the
crystal orientation of the surface layer." Appeal Br. 4.
Appellants' argument is without persuasive merit because the
rejection is not grounded on Debe teaching this limitation, but rather on
Stamenkovic. Ans. 3, 8-10. It is axiomatic that "one cannot show non-
obviousness by attacking references individually where ... the rejections are
based on combinations of references." In re Keller, 642 F.2d 413, 426
( CCP A 19 81). Further, as to Appellants' contention that the crystal
orientation of the surface layer is not determined by the growth axis, we find
it to be mere attorney argument, particularly where there is no explanation as
to how the cited teaching of De be leads to this conclusion. See, e.g., In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ...
cannot take the place of evidence.").
Second, Appellants contend that Stamenkovic does not cure the
defective teachings ofDebe. Appeal Br. 4. For independent claim 1, and
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claims dependent thereon, Appellants argue that the catalyst must be formed
of layers having "the same composition in each layer, e.g., crystalline
platinum catalyst of at least three layers." Appeal Br. 4. For independent
claim 26, and claims dependent thereon, Appellants argue that the catalyst
must be formed having "an exposed layer of Pt3Ni catalyst." Appeal Br. 4.
Appellants further contend generally that "Stamenkovic does not disclose
the interactions between the crystalline substrate and planar crystalline
catalyst, as required by the rejected claims" (Appeal Br. 5), relying on the
"unmodulated catalyst compositions recited in the rejected claims ...
[giving rise to] strong d-band interactions" (Appeal Br. 4).
As to the layers each having the same composition, we find no basis
for the Appellants' position in claim 1 (or claim 2) where claim 1 recites "a
crystalline platinum catalyst having ... layers" and claim 2 recites that the
catalyst "includes ... layers" because the claim language is open to
additional layers. Likewise, as to the cited interactions between the
crystalline substrate and planar crystalline catalyst, including strong d-band
interactions, there is simply no basis for the claims requiring these
interactions. The "name of the game is the claim" and unclaimed features
cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998); In re Self, 671F.2d1344, 1348 (CCPA 1982).
Further, Appellants' argument is insufficient to address the Examiner's
detailed position as to the relied-on combination having the same properties,
including the d-band interaction. Ans. 10-11.
As to the argument grounded on independent claim 26 requiring "an
exposed layer of Pt3Ni catalyst" (Appeal Br. 4), we are persuaded the
Examiner has erred (Ans. 10). In particular, the Examiner has interpreted
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Application 12/911,827
the recited "Pt3Ni catalyst layer of up to 20 atomic layers including an
exposed surface layer crystallographically oriented according to a ( 111)
plane" as encompassing catalyst having an exposed surface layer consisting
of platinum (Pt). Ans. 10. In contrast, Appellants' position is in essence
that the exposed surface layer must be formed of Pt3Ni because the recited
catalyst is Pt3Ni catalyst and not merely a catalyst that includes, in multiple
layers, Pt and Ni in a 3 to 1 ratio. Appeal Br. 4.
While the PTO is required to give claims their broadest reasonable
construction, our reviewing court has repeatedly instructed that the
construction must be consistent with the Specification and claim language
should be read in light of the Specification as it would be interpreted by one
of ordinary skill in the art. See, e.g., In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010). Looking to the Specification, we find it
describes that the (111) crystal plane has relatively high electro-catalytic
activity for platinum nickel alloy Pt3Ni rather than for a catalyst including Pt
and Ni in a 3 to 1 ratio (Spec. 7, 11. 12-19) and refers, in the alternative, to
both crystallographically oriented Pt and Pt alloy catalysts (Spec. 14, 11. 19-
21 ).
For these reasons, we are of the opinion that the recited "exposed
surface layer crystallographically oriented according to a (111) plane" is a
layer of, and has the Pt3Ni composition of, the PhNi catalyst.
It follows we are persuaded that the Examiner, in interpreting the
claim to not require an exposed layer of Pt3Ni and then relying on a
combination in which the exposed layer consisted of Pt, has erred reversibly.
We are, accordingly, constrained to reverse the Examiner's rejection of
independent claim 26, and claims 27-31 which depend from claim 26.
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Third, Appellants contend that the Examiner has erred in relying on
impermissible hindsight. Appellants argue "Debe' s substrate and structure
are used to 'improve[] carbon monoxide tolerate [sic, tolerance]' ... , which
is not a stated objective of Stamenkovic" and that the proposed modification
would render Debe unsatisfactory for its intended purpose. Appeal Br. 5
(citing Debe Abstract).
We do not find Appellants' argument persuasive of reversible error
because, as explained by the Examiner, the improved carbon monoxide
tolerance is preferred, not required of Debe' s catalysts, both Debe and
Stamenkovic are directed to catalyst used in fuel cells, and there is no
evidence supporting Appellants' contention that Debe would be rendered
inoperable as a fuel cell catalyst. Ans. 11-13.
For the reasons above, Appellants have not shown reversible error in
the Examiner's obviousness rejection of independent claim 1 (and dependent
claim 2), but have in the rejection of independent claim 26. It follows that
we will sustain the Examiner's obviousness rejections of claims 1, 2, 4, 7, 9-
13, 24, 25, and 32-34, but will reverse the Examiner's obviousness rejection
of independent claim 26, and claims 27-31.
Further, having summarily affirmed the Examiner's provisional
obviousness-type double patenting rejection, all claims stand rejected.
CONCLUSION
The Examiner's rejections of claims 1, 2, 4, 7, 9-13, 24, 25, and 32-
35 under 35 U.S.C. § 103 is AFFIRMED.
The Examiner's rejections of claims 26-31 under 35 U.S.C. § 103 is
REVERSED.
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Application 12/911,827
We summarily affirm the Examiner's provisional obviousness-type
double patenting rejection of claims 1, 2, 4, 7, 9-13, 24-34, and 24-34.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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