In Chul. Hwang et al.

Patent Trials and Appeals Board

Aug 13, 2019

12769119 - (D) (P.T.A.B. Aug. 13, 2019)

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.
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Application 12/769,119

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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.”).
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Application 12/769,119

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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.
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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.
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[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)).
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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.
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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