In Chul. Hwang et al.Download PDFPatent Trials and Appeals BoardAug 13, 201912769119 - (D) (P.T.A.B. Aug. 13, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/769,119 04/28/2010 In Chul Hwang 48268-288001US 6953 100807 7590 08/13/2019 Mintz Levin/Special Group One Financial Center Boston, MA 02111 EXAMINER CHERNOW, FRANK A ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 08/13/2019 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): IPDocketingBOS@mintz.com IPFileroombos@mintz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte IN CHUL HWANG, NAK HYUN KWON, and JAE SEUNG LEE ____________________ Appeal 2018-007646 Application 12/769,119 Technology Center 1700 ____________________ Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4, 5, 11, and 12. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Hyundai Motor Company. Appeal Br. 1. Appeal 2018-007646 Application 12/769,119 2 STATEMENT OF THE CASE2 Appellants describe the invention as relating to a membrane-electrode assembly for a fuel cell and, more particularly, an electrode for a polymer electrolyte membrane fuel cell (“PEMFC”). Spec. 1:8–13. The Specification explains that the invention adds carbon nanofibers to a catalyst layer to increase strength and maintain thickness over time in order to increase durability. Spec. 7:7–17. Claim 1, reproduced below with emphases added to certain key recitations, is illustrative of the claimed subject matter: 1. An electrode for a polymer electrolyte membrane fuel cell, the electrode comprising: 100 parts by weight of a carbon-supported catalyst; 20 to 80 parts by weight of a hydrogen ion conductive polymer electrolyte binder with respect to 100 parts by weight of the carbon-supported catalyst; 1 to 60 parts by weight of carbon nanofibers with respect to 100 parts by weight of the carbon-supported catalyst; and 1 to 20 parts by weight of a radical inhibitor with respect to 100 parts by weight of the carbon-supported catalyst, wherein the carbon nanofibers are added to a layer of the carbon-supported catalyst of the electrode such that the carbon nanofibers suitably bind particles of the carbon-supported catalyst contained in the electrode, thus maintaining the strength of the catalyst layer and preventing the occurrence of cracks, wherein the carbon nanofibers comprise at least one selected from the group consisting of carbon nanotubes, carbon nanowires, carbon nanohorns, and carbon nanorings, which have a diameter of about 5 to 100 nm and a length of more 2 In this Decision, we refer to the Final Office Action dated April 28, 2017 (“Final Act.”), the Appeal Brief filed October 5, 2017 (“Appeal Br.”), and the Examiner’s Answer dated May 25, 2018 (“Ans.”). Appeal 2018-007646 Application 12/769,119 3 than several hundred nanometers, and wherein the radical inhibitor has an average particle size of 2 to 60 nm and comprises at least one selected from the group consisting of cerium oxide, zirconium oxide, manganese oxide, aluminum oxide, vanadium oxide, and mixtures thereof. Appeal Br. 12 (Claims App.). REJECTION On appeal, the Examiner maintains (Ans. 3–5) the rejection of claims 1, 4, 5, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over Terasono et al., JP 2007-200762, published Aug. 9, 2007 (“Terasono,” referred to as “Terasuno” by the Appellants and the Examiner; machine translation of record) in view of Sato et al., US 2009/0068546 A1, published Mar. 12, 2009 (“Sato”). Final Act. 3–5.3 ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal and each of Appellants’ arguments, we are not persuaded that Appellants identify reversible error. Thus, we affirm the 3 Claims 4 and 5 appear to have been omitted inadvertently from the paragraph five statement of the rejection. Final Act. 3. This error is harmless because the rejection addresses these claims at paragraphs 6 and 8. Appeal 2018-007646 Application 12/769,119 4 Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellants argue all claims as a group. See Appeal Br. 5. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claim 1, and all other claims on appeal stand or fall together with claim 1. The Examiner finds that Terasono teaches an electrode for a polymer electrolyte membrane fuel cell meeting most of the recitations of claim 1. Final Act. 3–4 (citing Terasono Abstract and ¶¶ 10, 15–21, 25, 27). Most relevant to the issues on appeal, the Examiner finds that Terasono teaches ranges for parts by weight of carbon nanofibers and for nanofiber diameter that overlap with claim 1’s recitations. Id.; see also Terasono Abstract. The Examiner finds that Terasono4 does not disclose the recited parts by weight of the recited radical inhibitor. Final Act. 4. The Examiner finds, however, that Sato teaches use of a radical inhibitor as claim 1 recites, and the Examiner provides a rationale as to why a person of skill in the art would have combined the teachings of Sato with the Terasono membrane. Id. (citing Sato). Appellants’ arguments focus on claim 1’s recited parts by weight of carbon nanofibers and nanofiber diameter. Appellants do not dispute, however, that Terasono teaches overlapping ranges. Our reviewing court has explained that overlapping ranges create a rebuttal presumption of obviousness: 4 At page 4 of the Final Office Action, the Examiner mistakenly refers to Terasono as “Koyama.” Because the Examiner’s intended meaning is clear in context, this error is harmless. Appeal 2018-007646 Application 12/769,119 5 [W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption will be rebutted if it can be shown: (1) That the prior art taught away from the claimed invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); or (2) that there are new and unexpected results relative to the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004); see also In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003) (“Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range.”). To dispute obviousness, Appellants argue unexpected results. Appeal Br. 5–10. An applicant asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected and not merely superior. In re Geisler, 116 F.3d at 1469–70; Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected to be considered as evidence of non- obviousness.” (emphasis in original)). That burden requires, for example, Appellants to proffer factual evidence that shows unexpected results relative to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The evidence of unexpected results also must also be reasonably commensurate with the scope of the claims. In re Peterson, 315 F.3d at 1330–31 (explaining that applicant may overcome a prima facie case of obviousness by showing unexpected results but the showing of unexpected results “must be commensurate in scope with the claims which the evidence is offered to support” (internal quotes and citation omitted)). Appeal 2018-007646 Application 12/769,119 6 We have carefully considered Appellants’ evidence and arguments, but the proffered evidence is ultimately unpersuasive. Appellants first argue criticality of 1 to 60 parts per weight carbon nanofibers. Appeal Br. 5. For evidence, Appellants cite only the Specification’s “Comparative Example” illustrated by Figure 7. Appeal Br. 5. This “Comparative Example” contained no carbon nanofibers and no radical inhibitor. Spec. 23:7–14. Accordingly, this example does not establish superiority to the closest prior art because the closest art, Terasono, includes carbon nanofibers. Ans. 6; see also Terasono ¶¶ 45, 53 (providing specific examples that Appellants do not address). Appellants also present no evidence that the cited results are unexpected rather than merely superior. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“The 32–43% increase in stress-rupture life . . . does not represent a ‘difference in kind’ that is required to show unexpected results.”). Appellants, therefore, do not persuasively establish unexpected results based on carbon nanofiber content. Appellants also argue “unexpected results” from the claimed diameter of the carbon nanofibers. Appeal Br. 9. Appellants provide evidence for diameters of 10 nm, 40 nm, and 80 nm (invention) and 200 nm (comparative). We agree with the Examiner (Ans. 7), however, that these data points are insufficient to show superior results at 100 nm or inferior results at ranges above 100 nanometers. Id. Moreover, Appellants again present no evidence that the cited results are unexpected rather than merely superior. Appellants do not persuasively establish unexpected results based on fiber diameter. Because Appellants’ arguments do not establish reversible error, we sustain the Examiner’s rejection. Appeal 2018-007646 Application 12/769,119 7 DECISION For the above reasons, we affirm the Examiner’s rejections of claims 1, 4, 5, 11, and 12. 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 Copy with citationCopy as parenthetical citation