JOHNSON MATTHEY FUEL CELLS LIMITED et al.

Patent Trials and Appeals Board

Aug 9, 2021

2021000648 (P.T.A.B. Aug. 9, 2021)

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.
15/757,171 03/02/2018 Marie Josephe Vanessa ARMEL 032891.000233 6240
148994 7590 08/09/2021
BakerHostetler / Johnson Matthey
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
LI, JUN
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
08/09/2021 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIE JOSEPHE VANESSA ARMEL,
STEPHEN CHARLES BENNETT, FREDERIC CHRISTOPHE JAQUEN,
DEBORAH JONES, SHEENA HINDOCHA, and FABRICE SALLES
Appeal 2021-000648
Application 15/757,171
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–12 and 17. See Final Act. 1. We

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Johnson Matthey
Fuel Cells Limited, and Centre National De La Recherche Scientifique.
Appeal Br. 1.
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have jurisdiction under 35 U.S.C. § 6(b). A telephonic hearing was held on
July 19, 2021.2
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an oxygen reduction reaction catalyst.
Claim 1, reproduced below, is illustrative of the claimed subject matter
(emphasis added to highlight key limitation in dispute):
1. A method for the manufacture of an Fe-N-C, Co-N-C, or
Co/Fe- N-C oxygen reduction reaction (ORR) catalyst, the
method comprising:
pyrolysing in the presence of nitrogen a metal organic
framework (MOF) material having a specific internal pore
volume of 0.7 cm3g-1 or greater together with a source of iron,
cobalt, or both iron and cobalt to form the catalyst, wherein
(i) the MOF material comprises nitrogen,
(ii) the MOF material is pyrolysed together with a
source of nitrogen and the source of iron, cobalt, or
both iron and cobalt, or,
(iii) the MOF material comprises nitrogen and the MOF
material is pyrolised together with a source of
nitrogen and the source of iron, cobalt, or both iron
and cobalt, and,
wherein the MOF material is a Zeolitic Imidazolate
Framework (ZIF) material.

2 The record will include a transcript of the hearing when it becomes
available.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lefevre US 2011/0294658 A1 Dec. 1, 2011
Proietti WO 2012/107838 A1 Aug. 16, 2021
Proietti3 US 2014/0099571 A1 Apr. 10, 2014
Khan, Porous Carbon as Electrode Material in Direct Fuel Cells
(DEFCs) Synthesized by the Direct Carbonization of MOF-5, J. Solid State
Electrochem, (2014), 18: 1545–1555)
Armel, Effect of ZIF-8 Crystal Size on the 02 Electro-Reduction
Performance of Pyrolyzed Fe–N–C Catalysts, Catalysts (2015), 5, pages
1333–1351
REJECTIONS

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–3, 5–10, 17 103 Proietti, Khan
11 103 Proietti, Khan, Armel
12 103 Proietti, Khan, Lefevre

OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.

3 This English equivalent of WO 2012/107838 has been used for citations.
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We add the following primarily for emphasis.
Appellant argues the claims as a group, and does not argue any of the
dependent claims, even those that were separately rejected (i.e. claims 11
and 12) (Appeal Br. generally). Thus, we select claim 1 as representative
and all the claims stand or fall with claim 1.
The Supreme Court has established that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972
F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the
specific teachings thereof as well as the inferences one of ordinary skill in
the art would have reasonably been expected to draw therefrom).
The sole issue in dispute is whether one of ordinary skill in the art
would have used “a specific internal pore volume of 0.7 cm3g-1 or greater”
in the ZIF MOF (metal organic framework) of Proietti. There is no dispute
that Proietti teaches all the limitations of claim 1 except for this range. The
Examiner relies upon Proietti to further establish that high porosity in a
MOF is desirable and thus concludes that internal pore volume of a MOF is
a result effective variable (e.g., Ans. 10; Final Act. 4). The Examiner relies
upon Khan to exemplify that internal pore volume within this range exist in
MOFs used to prepare oxygen reduction catalysts (e.g., Final Act. 4).
Appellant contends that Proietti and Khan pertain to “different
catalyst technologies” and different classes of MOF materials that would not
have been combined by one of ordinary skill (Appeal Br. 5, 6). Appellant
further contends that Proietti does not explicitly identify internal pore
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volume as a result effective variable and that one would not have recognized
such as a result effective variable from the applied prior art teachings
(Appeal Br. 6–8). Finally, Appellant urges that the claimed process “gives
rise to unexpectedly beneficial results” (Appeal Br. 9; emphasis omitted).
These arguments are reiterated in the Reply Brief. These arguments are not
persuasive of reversible error in the Examiner’s obviousness determination
for reasons explained by the Examiner in the Answer (Ans. 9–16). These
arguments do not take into account the applied prior art as a whole and the
inferences one of ordinary skill in the art would have made therefrom.
The law is replete with cases in which the difference between the
claimed invention and the prior art is the claimed range or other variable
within the claims. These cases have also consistently held that the Appellant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range. See,
e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990). The burden rests with Appellant to establish (1) that the alleged
unexpected results are, in fact, unexpected, (2) that the comparisons are to
the disclosure of closest prior art, and (3) that the supplied evidentiary
showing is commensurate in scope with the claimed subject matter. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Moreover, it is well settled that it would have been obvious for an
artisan with ordinary skill to develop workable or even optimum ranges for
result-effective parameters. In re Woodruff, 919 F.2d at 1577; In re Boesch,
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617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA
1955).
One of ordinary skill in the art would have readily inferred from the
overall teachings of the applied prior art that an internal pore volume may be
useful in a range such as that recited in claim 1.
Furthermore, “[a] recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.” In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As pointed
out by the Examiner, Proietti explicitly teaches that porosity of the MOF is a
result effective variable (Ans. 10) as higher porosity results in better
catalytic activity (e.g., Proietti ¶¶ 57, 63, 65–67). Contrary to Appellant’s
arguments, one of ordinary skill in the art would have readily inferred from
Proietti that internal pore volume would have also been a result effective
variable, as it is a subset of the overall porosity. Accordingly, substantial
evidence supports the Examiner’s obviousness determination of the recited
range amount of internal pore volume in the MOF of claim 1 based on
Proietti (even without relying upon Khan). We also note that Appellant
admits that MOFs with such internal porosities were known, albeit not
previously “investigated” for the recited process (Spec. 5:1–5).4

4 The use of a known MOF of the recited porosity range for the method
taught in Proietti would have been prima facie obvious, requiring the use of
no more than ordinary creativity. An applicant cannot defeat an obviousness
rejection by asserting that the cited references fail to teach or suggest
elements which the applicant has acknowledged are taught by the prior art.
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
1988) (“A statement in a patent that something is in the prior art is binding
on the applicant and patentee for determinations of anticipation and
obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (a
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Having determined that the Examiner has established a prima facie
case of obviousness, the issue becomes whether Appellant has established
any criticality to the claimed range. Appellant, however, does not rely upon
sufficient objective evidence of criticality or unexpected results from the
claimed range. Comparison to only one ZIF MOF of Proietti when Proietti
teaches many other possible (ZIF) MOFs is not adequate (Appeal Br. 10;
Ans. 15, 16; Proietti ¶¶ 66, 67). The mere statement that better catalytic
activity was “surprising” in the Specification is insufficient to establish
criticality absent further objective evidence (Spec. 7:19–25; Appeal Br. 9).
Furthermore, claim 1 is open-ended to many other materials, steps and/or
conditions such that Appellant has not met the burden of showing and/or
explaining how the objective evidence relied upon is commensurate in scope
with the claim. Indeed, the Specification indicates that pore size and
pyrolysis temperature (neither of which are recited in claim 1) as well as
internal pore volume are important for achieving optimal results (Spec. Figs.
3, 4; Spec. 10:20–25; Spec. 17:1–9).
In any event, as discussed above, one of ordinary skill in the art would
have reasonably expected higher pore volumes, including higher internal
pore volumes, to provide better catalytic activity from the express teachings
of Proietti.

statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes). KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) (As the Supreme Court has noted, “[t]he combination
of familiar elements [or steps] according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
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In light of these circumstances, we affirm the Examiner’s § 103
rejections of all the claims on appeal, noting again that Appellant does not
separately argue any claims dependent on claim 1.

CONCLUSION
The Examiner’s rejections are AFFIRMED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–10,
17
103 Proietti, Khan 1–3, 5–10,
17

11 103 Proietti, Khan,
Armel
11
12 103 Proietti, Khan,
Lefevre
12
Overall
Outcome
1–3, 5–12,
17

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED