Ex Parte Zhang et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201511954046 (P.T.A.B. Feb. 6, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/954,046 12/11/2007 Junliang Zhang P002301-FCAR-CHE 3273 104102 7590 02/06/2015 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER FRIDAY, STEVEN A ART UNIT PAPER NUMBER 1756 MAIL DATE DELIVERY MODE 02/06/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUNLIANG ZHANG, SUSAN G. YAN, and FREDERICK T. WAGNER __________l Appeal 2013-003569 Application 11/954,046 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1–25. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is directed to a method of electrochemically treating electrically conductive nanoparticles, an electrochemical cell and an electrochemical multi-cell (claims 1, 9 and 20). Claims 1 and 9 are illustrative: Appeal 2013-003569 Application 11/954,046 2 1. A method comprising: supporting electrically conductive nanoparticles to be electrochemically treated over a working electrode, immersing the working electrode with the supported nanoparticles in a liquid electrolyte solution, immersing a counter electrode in the electrolyte solution, and immersing a polymer electrolyte membrane in the electrolyte solution between the working electrode with nanoparticles supported thereon and the counter electrode to define a working electrode compartment and a counter electrode compartment of the cell, applying a potential or a current across the electrodes to treat the nanoparticles. 9. An electrochemical cell comprising: a container and a liquid electrolyte received in the container; a working electrode, and electrically conductive nanoparticles supported by the working electrode for electrochemical treatment; a counter electrode; and a polymer electrolyte membrane separating liquid electrolyte on the counter electrode side from liquid electrolyte on the working electrode side of the cell. Appellants appeal the following rejections: 1. Claims 1, 9–11, 13, 16, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freund (US 2006/0240294 A1 published Oct. 26, 2006 ) in view of Kumar (US 2006/0177660 A1 published Aug. 10, 2006). 2. Claims 2–5, 7, 8, and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freund in view of Kumar and Reipa (US 6,306,280 B1 issued Oct. 23, 2001). Appeal 2013-003569 Application 11/954,046 3 3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Freund in view of Kumar, Reipa and Langer (US 3,248,267 issued April 26, 1966). 4. Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freund in view of Kumar and Langer. 5. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freund in view of Kumar and Ball (WO 00/79628 A1 published Dec. 28, 2000) as evidenced by DeMarinis (US 6,103,077 issued Aug. 15, 2000). 6. Claims 20–22 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freund in view of Kumar and Andrews (US 6,551,490 B2 issued Apr. 22, 2003). 7. Claims 23 and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Freund in view of Kumar, Andrews and Langer. Appellants’ arguments focus solely on independent claims 1, 9, and 20 (App. Br. 15–17, 18). Appellants’ arguments regarding claims 1, 9, and 20 all relate to the same argued deficiencies. Therefore, we select claim 1 as representative. Regarding the dependent claims, Appellants argue that the various additional references do not cure the argued deficiency with regard to the combination of Freund and Kumar (App. Br. 17–18). Accordingly, claims 2–25, will stand or fall with our analysis of claim 1. FINDINGS OF FACT AND ANALYSES The Examiner finds that Freund discloses the method of operating an electrochemical cell recited in claim 1, except for the claimed nanoparticles Appeal 2013-003569 Application 11/954,046 4 (Final Off. Act. 2–3). The Examiner finds that Freud teaches using electrodes impregnated with a catalyst such as platinum (Final Off. Act. 3). The Examiner concludes that it would have been obvious to modify Freund’s method to include platinum-coated nanoparticles as the catalyst as taught by Kumar because this allows a large platinum service area while minimizing cost. Id. The Examiner further finds that carrying out the claimed process as taught by Freund and Kumar would have accomplished the intended result as claimed (i.e., treating the nanoparticles). Id. Appellants argue that Freund does not teach nanoparticles and Freund and Kumar fail to teach electrochemically treating nanoparticles as recited in claim 1 (App. Br. 15–16, 18). Appellants further argue that Kumar uses an electroless displacement reaction in an aqueous solution to form a platinum metal shell on a less precious inner metal nanoparticle core (App. Br. 16). Appellants’ arguments fail to address the Examiner’s rejection, which is based upon including Kumar’s platinum-coated nanoparticles as the catalyst on Freund’s carbon cloth fuel cell electrode impregnated with platinum (Final Off. Act. 3). Appellants’ arguments attack the references individually instead of addressing what the combined teachings would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants further argue that the Examiner’s rejection improperly relies on inherency in the obviousness rejection to establish that the electrochemical cells and method resulting from the teachings of Freund and Kumar would have accomplished the intended result of treating nanoparticles (Reply Br. 7–9). Appellants contend that the Examiner has not provided a basis-in-fact to establish that the treatment of nanoparticles is Appeal 2013-003569 Application 11/954,046 5 necessarily present in the electrochemical cell and method resulting from the combined teachings of Freund and Kumar (Reply Br. 9–10). As we understand the rejection, the Examiner’s rejection is based on the determination that once the teachings of Freund and Kumar are combined in order to provide a large platinum service area while minimizing costs, a method that is identical to the claimed invention would have resulted (Final Off. Act. 3). Accordingly, since the method of Freund as modified by Kumar is identical to the claimed method the intended result of treating nanoparticles must flow naturally from practicing the method of the prior art. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). The Examiner’s finding that the combined teachings of Freund and Kumar teach the claimed process (i.e., the same process) provides a basis-in-fact that supports the determination that the treatment of nanoparticles would have occurred in Freund’s electrochemical cell as modified by Kumar. Appellants argue that combining the teaching of Freund and Kumar would have destroyed the purpose of Freund’s invention and such a combination would have frustrated the purpose of Freund by not maximizing the catalyst surface area (App. Br. 19–22). Appellants contend that Freund’s electrochemical cell generates gas, which would have been frustrated if the electrochemical cell were operated to treat nanoparticles (App. Br. 20–21). Appellants contend that Kumar uses an electroless process to form the platinum coated core and shell catalyst, which would have been modified by the combination of Freund and Kumar proposed by the Examiner (App. Br. 21). The Examiner’s combination is based upon including Kumar’s platinum-coated nanoparticles as a catalyst in Freund’s carbon cloth Appeal 2013-003569 Application 11/954,046 6 electrodes (Final Off. Act. 3). Freund uses platinum as the catalyst in the carbon cloth electrodes. Id. Appellants have not shown that including Kumar’s platinum-coated catalyst would have frustrated Freund’s purpose of generating gas. Freund’s operating of the electrochemical cell to generate gas may reasonably be considered “treating†the nanoparticles. The Specification describes that “treating†“may†include “coating, stripping, oxidation, reduction, cleaning or dealloying the nanoparticles†(Spec. ¶ 14). The Specification’s use of the term “may†does not specifically limit treating solely to those treatments. Moreover, treating the nanoparticles is caused by a potential applied across the electrodes. Id. Appellants have not explained why applying a potential across the electrodes in Freund’s electrochemical cell to generate gas would not also treat the nanoparticles contained in the fuel cell within the meaning of the claims. Although Appellants argue that different reactants are involved with Freund’s process and the electrochemical treatment of nanoparticles, Appellants do not explain what those difference are (App. Br. 20). Appellants argue that combining Kumar’s platinum-coated catalyst particles with Freund’s process would have lessened the surface area of the catalyst because Kumar teaches that the core of the platinum-coated nanoparticle is inaccessible (App. Br. 21). Appellants contend that this lessening of the catalyst surface area would have rendered Freund’s process and electrochemical cell unsuitable for its intended purpose (App. Br. 21– 22). Appellants have not provided any evidence to substantiate their assertion. Furthermore, the Examiner’s rejection is based upon adding Kumar’s platinum-coated catalyst particles to Freund’s platinum impregnated carbon cloth (Final Off. Act. 3). Appellants have not explained Appeal 2013-003569 Application 11/954,046 7 how adding more platinum catalyst to platinum impregnated carbon cloth electrodes would have lessened the catalyst surface area on the electrodes. Appellants argue that use of platinum nanoparticles in Freund’s electrochemical cell is not enabled because the Examiner has not shown how the nanoparticles can be impregnated onto the electrodes to not interfere with the operation of Freund, while treating the nanoparticles at the same time (App. Br. 25, Reply Br. 16). The Examiner responds that the rejection is based upon adding Kumar’s smaller platinum-coated nanoparticles to Freund’s platinum impregnated, carbon cloth electrode (Ans. 4–5). The Examiner finds that there is no evidence that the platinum impregnated electrodes taught by Freund and presumed to be enabled would have required undue experimentation to incorporate the smaller platinum nanoparticles taught by Kumar (Ans. 5). Appellants do not respond specifically to these findings of the Examiner (Reply Br. 16). We agree with the Examiner that Appellants have not shown that undue experimentation would have been required to combine Kumar’s catalyst nanoparticles with Freund’s carbon cloth electrode impregnated with a platinum catalyst. Indeed, Freund is silent regarding how the platinum catalyst is impregnated in the carbon cloth electrode. Nevertheless, the prior art evinces the level of skill in the art and it is within the skill of the ordinary artisan to impregnate platinum catalyst into carbon cloth electrodes. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, there is a reasonable expectation that one of ordinary skill in the art would have been enabled to incorporate the platinum-coated nanoparticles into a carbon cloth electrode. We are unpersuaded by Appellants’ argument. Appeal 2013-003569 Application 11/954,046 8 Appellants argue that the Examiner has engaged in impermissible hindsight and there is no rational underpinning for the Examiner’s reason for combining the teachings of Freund and Kumar (App. Br. 28–32; Reply Br. 17–20). Appellants contend that Kumar’s nanoparticles include a core that is inaccessible to serve as a catalyst and so the combination would not improve the catalytic properties of Freund’s carbon cloth electrode (App. Br. 32). The Examiner’s reason to combine Kumar’s nanoparticle catalyst with Freund’s platinum-impregnated carbon cloth electrode is to allow a large platinum service area while minimizing cost (Ans. 3). The Examiner cites to paragraph 9 of Freund and paragraph 32 of Kumar as a basis for the reason to combine. Id. Appellants have not shown error with the teachings contained in these paragraphs forming the Examiner’s basis for the combination. On this record, we affirm the Examiner’s § 103 rejections. DECISION The Examiner’s decision 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). ORDER AFFIRMED kmm Copy with citationCopy as parenthetical citation