Ex Parte Yang et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612911862 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/911,862 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. 83163747 1029 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 WALDECKER1 Appeal2015-002897 Application 12/911,862 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 rejection2 of claims 1-7, 10-16, 18, 19, 21, 26, and 27. We have jurisdiction pursuant to 35 U.S.C. § 6. We AFFIRM. 1 Appellants identify Ford Global Technologies, LLC as the real party in interest. Appeal Br. 3. 2 The Examiner has withdrawn prior 35 U.S.C. §§ 112, first paragraph and 103 rejections of claim 28 following cancellation of the claim. Final Act. 2; Ans. 3 Appeal2015-002897 Application 12/911,862 Appellants' claimed invention is directed to a catalyst assembly including a two-dimensional catalyst and a two-dimensional substrate where 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---directed to a catalyst assembly-set forth that there is "an exposed surface layer crystallographically oriented according to a (111) plane" and that "the crystalline substrate and planar crystalline catalyst interact through d-band interaction." Claims 1, 13, and 21. Independent claim 1 is illustrative: 1. A catalyst assembly comprising: a planar crystalline catalyst of precious metal atoms and supported on a crystalline substrate, the crystalline substrate including non-precious metal atoms, the planar crystalline catalyst includes one or more inner layers, one or more intermediate layers and one or more outer layers including an exposed surface layer crystallographically oriented according to a ( 111) plane, and the crystalline substrate and planar crystalline catalyst interact through d-band interaction. Appeal Br. (Claims Appendix) Appendix 1. THE REJECTIONS I. Claims 1, 4-7, 10, 12, 13, 16, 18, 21, 26, and 27 stand rejected under 35 U.S.C. § 103 over Debe3 in view of Stamenkovic4 as evidenced by Yushan 5; 3 Debe et al. (US 6,040,077, issued March 21, 2000). 4 Stamenkovic et al. (US 2009/0247400 Al, published October 1, 2009. 5 Yushan et al. (US 2009/0220835 Al, published September 3, 2009). 2 Appeal2015-002897 Application 12/911,862 II. Claims 2, 3, 14, and 15 stand rejected under 35 U.S.C. § 103 over Debe in view of Stamenkovic as evidenced by Yushan in further view of Popov6; III. Claims 11 and 19 stand rejected under 35 U.S.C. § 103 over Debe in view of Stamenkovic as evidenced by Yushan in further view ofNiu7; and IV. Claims 1-7, 10-16, 18, 19, 21, 26, and 27 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claims 1, 2, 4, 7, 9-13, 24-34, and 24-35 of Yang. 8 DISCUSSION9 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 as a group 10 and then rely on the dependency of claims subject to Rejections II and III from claims subject to Rejection I. 6 Popov et al. (US 2008/0161183 Al, published July 3, 2008). 7 Niu et al. (US 2009/0017363 Al, published January 15, 2009). 8 Patent Application No. 12/911,827 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. 9 We refer to the Final Office Action mailed February 21, 2014, the Appeal Brief filed July 29, 2014, and the Examiner's Answer mailed October 22, 2014. 10 While the specific listing of claims subject to Rejection I omits claim 26 and includes cancelled claim 28 (Appeal Br. 2, 4), Appellants accurately set forth the pending claims in stating which claims are on appeal (Appeal Br. 1 ). 3 Appeal2015-002897 Application 12/911,862 Appeal Br. 4-6. Our discussion, accordingly, focuses on the rejection of independent claim 1 over De be in view of Stamenkovic, as evidenced by Yushan. Upon consideration of the evidence, we are unpersuaded of reversible error in the Examiner's decision rejecting the claims as unpatentable for obviousness over the cited prior art. 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 nanocatalyst thin film that can comprise alternating layers of catalyst materials where the catalyst can have crystal structure of Pt (111). Ans. 4 (citing Debe Abstract, col. 3, 11. 1-10, col. 5, 11. 6-59, Fig. 2, col. 10, 1. 66 to col. 15, 1. 39). De be discloses, inter alia, alternating layers of Pt and Ru as the thin film. See, e.g., col. 15, 11. 46--47. The Examiner finds Debe discloses a planar catalyst in its teaching that the substrate can be planar and depositing/coating catalyst on the substrate. Ans. 10 (citing Debe col. 6, 11. 60-61 ). 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 (col. 9, lines 32-33)." Ans. 4. As to the layers of catalysts, 4 Appeal2015-002897 Application 12/911,862 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. 4. The Examiner relies on Stamenkovic for disclosing that the exposed surface layer of catalyst is crystallographically oriented according to a (111) plane. Ans. 4. 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. 4-5 (citing Stamenkovic i-f 6, claims 1-2, 11-15). The Examiner further finds Stamenkovic teaches catalyst of Pt3Ni alloy can have a crystal plane of one or more of (100), (110) and (111) orientation and that the Pt3Ni (111) has a d-band center position. Ans. 5 (citing Stamenkovic i-fi-16, 10-13, 15, 29, Figs. 1-6). 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. 5 (citing Stamenkovic i-f 6), 13-14 (citing Stamenkovic i-fi-135, 38). 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 by replacing the Pt layers with Stamenkovic' s platinum alloy layers for the benefit of the improved catalytic properties. Ans. 5. The Examiner further concludes it would have been obvious to adopt a proper number of layers to produce a catalyst with desired final composition and morphology. Ans. 6 (citing Debe col. 15, 11. 24-39). 5 Appeal2015-002897 Application 12/911,862 As to the claimed d-band interaction, the Examiner relies on both Yushan as evidence that Pt3Ni (111) surface has an unusual electronic structure (Ans. 5, citing Yushan i-f 12) and on the property flowing from the structure which is substantially similar to set forth in the Specification (Ans. 5, citing Spec. 18, 1. 32 to 19, 1. 11 ). The Specification describes, for example, that a relatively high electro-catalytic activities crystal plane ... for platinum nickel alloy Pt3Ni is (111). Spec. 8, 7-10. Appellants proffer four general arguments. Appeal Br. 4-6. First, Appellants contend that the combination does not provide at least three layers with the same planar catalyst of precious metal atoms. Appeal Br. 4-5. As to De be, Appellants' argument focuses its teaching of catalyst particles on acicular microstructured support whiskers having alternating layers of catalyst materials. Appeal Br. 4-5 (citing Debe Abstract). As to Stamenkovic, Appellants' argument focuses on the oscillation in the composition of the first few atomic layers. Appeal Br. 5 (citing Stamenkovic i-f 6). Based on these skeletal arguments, Appellants further argue that "Debe in view of Stamenkovic (as well as Yushan) does not disclose a substantially similar precious metal as that of the claimed invention." Appeal Br. 5. We do not find Appellants' argument persuasive of reversible error. As to the planarity of the catalyst film, De be is not limited to the acicular structure, but includes planar catalysts. Ans. 10 (citing De be col. 6, 11. 60- 61 ). As to the at least three layers being the same catalyst of precious metal atoms, we find no basis in claim 1 for requiring that the at least three layers be adjacent to one another or that each layer is of the same composition. The "name of the game is the claim" and unclaimed features cannot impart 6 Appeal2015-002897 Application 12/911,862 patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self, 671F.2d1344, 1348 (CCPA 1982). Likewise we discern no reversible error grounded on Stamenkovic' s disclosure that its layers are highly oscillatory where the structure is not excluded by the claim and there is no evidence proffered that that the relied on combination does not include d-band interactions as claimed. In regard to the d-band interaction, we further note that claim 1 does not require a particular level of interaction. The lack of persuasive merit in Appellants' conclusory argument that the combination does not disclose a substantially similar precious metal is manifest in that the Specification discloses that the 2-D extensive catalyst can include various listed metals-including platinum and ruthenium-and "alloys and combinations thereof' (Spec. 6, 11. 26-28) where Debe's alternating layers can be, for example, alternating layers of platinum and ruthenium (Debe col. 4, 11. 52-54). Second, Appellants contend that Debe does not disclose or suggest the exposed surface being oriented in a (111) crystal plane. Appeal Br. 5. 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. 5. Appellants' argument is without persuasive merit because the rejection is not grounded on Debe teaching this limitation, but rather on Stamenkovic. Ans. 4-5, 11-12. 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 7 Appeal2015-002897 Application 12/911,862 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."). Third, Appellants argue that Stamenkovic does not disclose d-band interactions between the crystalline substrate and planar crystalline catalyst. Appeal Br. 5. Appellants' argument is without persuasive merit because the rejection is not grounded on Stamenkovic alone teaching this limitation and, accordingly, the argument does not address the basis of the rejection. In re Keller, 642 F .2d at 426. Further, the argument presented-focusing on Stamenkovic disclosing oscillating concentration of Ni and Pt in its layers and that it provides "nanosegregated surface structures with a [ 111] crystallographic orientation"-is insufficient to address the Examiner's detailed position as to the d-band interaction in the relied on combination. Ans. 5, 12-15. Fourth, Appellants contend that the Examiner has erred in relying on impermissible hindsight. Appellants argue De be' 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. 5-6 (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 De be' s catalysts, both De be and Stamenkovic are directed to catalyst used in fuel cells, and there is no 8 Appeal2015-002897 Application 12/911,862 evidence supporting Appellants' contention that De be would be rendered inoperable as a fuel cell catalyst. Ans. 14-15. For the reasons above, Appellants have not shown reversible error in the determination that one of ordinary skill in the art, armed with the knowledge of the cited prior art, would have been led to the subject matter recited in the appealed claims. In re Jung, 637 F.3d at 1365. Accordingly, on this record, we sustain the obviousness rejections over the cited prior art. CONCLUSION The Examiner's rejection of claims 1-7, 10-16, 18, 19, 21, 26, and 27 under 35 U.S.C. § 103 is AFFIRMED. We summarily affirm the Examiner's provisional obviousness-type double patenting rejection of claims 1-7, 10-16, 18, 19, 21, 26, and 27. 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 9 Copy with citationCopy as parenthetical citation