Merck Patent GmbH

Patent Trials and Appeals Board

Aug 2, 2021

2020004455 (P.T.A.B. Aug. 2, 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.
15/120,233 08/19/2016 Onur KAS MERCK-4516 6374
23599 7590 08/02/2021
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
HASKE, WOJCIECH
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
08/02/2021 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________
Ex parte ONUR KAS,
ASHLEY MOORE, RYAN SYLVIA,
and GABRIEL TKACIK
______________
Appeal 2020-004455
Application 15/120,233
Technology Center 1700
______________
Before JEFFREY T. SMITH, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 15–21 of Application 15/120,233. Final
Act. (May 13, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Merck Patent GmbH as the real party in interest. Appeal Br. 1.
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I. BACKGROUND
The ’233 Application describes “stable catalyst ink formulations
comprising an electrospinning polymer selected from halogen-comprising
polymers.” Spec. 1. The ink formulations are used to electrospinning a
nanostructured fibrous mat the can be used as part of a proton exchange
membrane assembly in a fuel cell. Id. Such nanostructured fibrous mats are
known to have higher performance with lower loadings of the platinum
catalyst than is commonly used. Id.
The ink formulations described in the ’233 Application are also said
to be stable. Id. at 2. According to the Specification, prior art inks show a
decrease in viscosity over time. Id. Unstable inks are undesirable in
commercial production processes because they make it difficult to achieve
reproducible results and would necessitate constant adjustment of the
electrospinning apparatus’s parameters. Id.
Claim 15 is representative of the ’233 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
15. An electrospun fibrous matte comprising
(i) metal supported on a carrier,
(ii) an ionomer, and
(iii) an electrospinning polymer selected from the
group of halogen-comprising polymers.
Appeal Br. 34.
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 15, 17, and 18 are rejected under 35 U.S.C. § 102(a)(2)
as anticipated by Pintauro ’213.2 Final Act. 2.
2. Claims 15–21 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Pintauro ’425,3 Thiam,4 and Kidai.5
Final Act. 3.
3. Claims 15–18 are rejected for obviousness-type double
patenting (“OTDP”) over the combination of claim 1 of Kas ’9726 and
Thiam. Final Act. 5.
III. DISCUSSION
A. Rejection of claims 15, 17, and 18 as anticipated by Pintauro ’213
Appellant argues for the reversal of the anticipation rejection of
independent claim 15. Appeal Br. 2–13. Appellant does not expressly
request reversal of the rejection of dependent claims 17 and 18. Id. We
assume that Appellant believes that the rejection of these claims also should
be reversed by virtue of their dependence from claim 15. In view of the
foregoing, we limit our discussion to claim 15.

2 US 2014/0349213 A1, published November 27, 2014.
3 WO 2012/058425 A2, published May 3, 2012.
4 H.S. Thiam et al., Nafion/Pd-SiO2 nanofiber composite membranes for
direct methanol fuel cell applications, 38 Int’l J. of Hydrogen Energy 9474
(2013).
5 JP 2000-353528, published December 19, 2000.
6 US 9,994,972 B2, issued June 12, 2018.
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Appellant argues that the rejection should be reverse because the
Examiner made “clear legal errors in the approach taken in this rejection.”
Id. at 2. In particular, Appellant argues that the Examiner erred by
(1) construing the claim term “mat” too broadly and failing to consider the
’233 Application’s Specification in interpreting this term, id. at 2–7, 9–13,
and (2) finding that Pintauro ’213 describes each element of claim 15
arranged as they are in the claim, id. at 7–9. We address each of these
arguments in turn.
1. Claim construction
In rejecting claim 15, the Examiner stated that “[o]ne of ordinary skill
in the art would reasonably understood [sic] a mat to be a form of a sheet,
which can be formed of a single layer or plurality of layers, for example
some formats have rubber layer and fabric layer.” Final Act. 6. The
Examiner further stated that “[t]he meaning of the term ‘mat’ is known to be
interpreted as a flat sheet, therefore one would not go to the specification to
find the narrower meaning, for example whether it is single layer or
multilayer, or whether it is decorated or not.” Id. (emphasis added).
Appellant argues that the Examiner has failed to interpret this claim in
light of the ’233 Application’s Specification. Appeal Br. 2–4 (citing MPEP
§§ 2111, 2111.01). According to Appellant, if the Examiner had taken the
Specification into account, the Examiner would have construed the term
“mat” in a manner that did not encompass the apparatus described in
Pintauro ’213. Appellant, however, never states what it believes to be the
proper interpretation of its own claim.
Before we can consider whether Pintauro ’213 anticipates claim 15,
we must construe the claim terms in dispute. In re Paulsen, 30 F.3d 1475,
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1479 (Fed. Cir. 1994); see also Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d
1331, 1339 (Fed. Cir. 2003) (explaining that anticipation and obviousness
require comparison of the properly construed claims to the available prior
art); Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351
(Fed. Cir. 2001) (“Only when a claim is properly understood can a
determination be made . . . whether the prior art anticipates and/or renders
obvious the claimed invention.”).
During prosecution, the PTO gives the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account any definitions or other enlightenment provided by the written
description contained in the applicant’s specification. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997). As the Federal Circuit has explained,
[t]he correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is consistent with the
specification.
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal
quotation omitted).
We begin by considering the ordinary meaning of the term “mat.” One
dictionary provides eight principal definitions of the term “mat”—several of
which have multiple sub-definitions—when it is used as a noun. See 1
Shorter Oxford English Dictionary 1721–22 (6th ed. 2007). To choose the
definition that a person having ordinary skill in the art would have
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understood the term to have, we must consider the context provided by the
’233 Application’s Specification. See Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[The specification] is the single best
guide to the meaning of the disputed term.”). After reviewing the
Specification, we determine that a person having ordinary skill in the art
would have understood the word “mat” to mean “[a] thick tangled mass of
hair, vegetation, etc., esp. forming a layer.” 1 Shorter OED 1722; accord
Mat | Definition of Mat by Merriam-Webster, Merriam-Webster.com,
https://www.merriam-webster.com/dictionary/mat (“something made up of
densely tangled or during filaments or strands especially of organic matter”).
We note that the term “mat” appears in the claims as part of the phrase
“electrospun fibrous mat.” Thus, we also have to construe the words
“electrospun” and “fibrous.” We determine that, to a person of ordinary skill
in the art at the time of filing, the term “electrospun” refers to a material
made by the process of the electrospinning. See Spec. 17 (“The so-obtained
electrospinning ink is electrospun in electrospinning equipment to obtain the
electrospun fibrous mat.”). We further determine that a person having
ordinary skill in the art would understand the term “fibrous” to have its
ordinary meaning. The ordinary meaning of the term fibrous is “[f]ormed
from or full of fibres.” 1 Shorter OED 955.
Finally, we note that the Specification repeatedly distinguishes
between a single layer structure, which it calls a mat, and multilayered
structures. Once an additional layer is attached to the electrospun fibrous
mat, the Specification calls the resultant structure by a different name.
Appeal Br. 13. For example, the Specification explains that “any of a variety
of porous single or multilayered substrates or supports can be arranged on
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the moving collecting belt and combined with the electrospun fibrous mat,
thereby forming a composite.” Spec. 18; see also claim 17.
In view of the foregoing, we determine that the ordinary meaning of
the phrase “electrospun fibrous mat” is “a tangled mass of fibers formed by
electrospinning that forms a layer.”
Next, we examine the Specification to determine whether it uses the
term “electrospun fibrous mat” in a manner consistent with the ordinary
meaning or gives it some special meaning. In this case, we determine that
the Specification’s use of the term “electrospun fibrous mat” is consistent
with its ordinary meaning. Accordingly, we construe the term “electrospun
fibrous mat” to mean “a tangled mass of fibers formed by electrospinning
that forms a layer.”
2. Anticipation by Pintauro ’213
The Examiner found that claim 15 was anticipated by Pintauro ’213.
Final Act. 2–3. The cited portion of Pintauro ’213 states: “In one
embodiment, two or more polyelectrolytes, polyelectrolyte precursors, or a
combination thereof and two or more uncharged (or minimally charged)
polymers are electrospun into a multi-fiber mat.” Pintauro ’213 ¶ 22.
At this point in Pintauro ’213’s manufacturing process, the multi-fiber
mat does not anticipate claim 15 because the mat does not include carrier-
supported metal.
After production, Pintauro ’213’s multi-fiber mat is processed to
produce either a nanofiber-based cation-exchange membrane (a PEM) or a
nanofiber-based anion-exchange membrane (an AEM). Id. Pintauro ’213
exemplifies this process as follows:
For example, one can electrospin perfluorosuslfonic acid
nanofibers simultaneously with uncharged polyphenylsulfone
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(PPSU) and uncharged polyvinylidene fluoride (PVDF)
nanofibers. During the mat processing, the PVDF is allowed to
soften and flow around the Nafion and PPSU fibers. Thus, the
mechanically weak but chemically inert PVDF polymer matrix
is strengthen [sic] by the present [sic] of the high-strength
PPSU nanofibers, which improve the overall mechanically [sic]
properties of the membrane.
Id. During this process, the voids between the Nafion and PPSU fibers are
filled by the PVDF to create a membrane. See id. ¶ 61, Figs. 1, 3.
Pintauro ’213 describes the subsequent addition of carbon-supported
platinum to the membrane using a “standard decal method” to create a
membrane-electrode assembly (MEA). Id. ¶ 200. In this method, a catalyst-
containing ink was painted onto a Kapton film and then transferred to the
membrane by hot-pressing. Id.
Thus, the question before us is whether Pintauro ’213’s MEA is an
electrospun fibrous mat as that term is used in claim 15. We find that it is
not.
For the reasons set forth above, we have construed the phrase
“electrospun fibrous mat” to mean “a tangled mass of fibers formed by
electrospinning that forms a layer.” As found by the Examiner, Pintauro
’213’s MEA is a two-layered structure. The first layer is the processed
electrospun fibrous mat, which does not contain a supported metal, and the
second layer is the electrode, which includes a carbon-supported metal
catalyst.
Because Pintauro ’213 describes a two-layer structure, it does not
anticipate claim 15, which only encompasses a single layer mat.
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B. Rejection of claims 15–21 as obvious over the combination of
Pintauro ’425, Thiam, and Kidai
Appellant presents separate arguments for reversal of the rejection of
independent claims 15 and 16 and does not separately argue any of the
dependent claims. See Appeal Br. 13–24. Accordingly, each dependent
claim will stand or fall with its parent independent claim.
1. Claim 15
Appellant advances two arguments for reversal of this rejection. See
Appeal Br. 13–23. We address these arguments separately.
First, Appellant argues that a person having ordinary skill in the art
would not have selected Thiam for combination with Pintauro ’425 and
Kidai. Id. at 16–17. We interpret this as an argument that Thiam is non-
analogous art.
This argument is not persuasive of reversible error.
For a reference to be used as a basis for an obviousness rejection of
Appellant’s claims, the reference must either be (1) in the field of the
inventor’s endeavor or (2) reasonably pertinent to the particular problem
with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992). The scope of analogous art is to be construed broadly.
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
In this case, we have reviewed the ’233 Application’s Specification
and have determined that the inventors’ field of endeavor is the development
of fuel cells. See Spec. 1–3. As evidenced by its title—Nafion/Pd-SiO2
nanofiber composite membranes for direct methanol fuel cell applications—
Thiam also is concerned with the development of fuel cells.
Appellant argues that this does not matter because the Examiner relied
upon a paragraph in Thiam that “has nothing to do with the
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work/experiments taught by Thiam. The cited paragraph in Thiam is
provided as background information in the Introduction section of Thiam.”
Appeal Br. 16–17. This argument is irrelevant because a reference is
available for all that it teaches. See In re Young, 927 F.2d 580, 591 (Fed. Cir.
1991) (“Patents are part of the literature of the art and are relevant for all
they contain.”); In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The
use of patents is references is not limited to what the patentees describe as
their own inventions or to the problems with which they are concerned. They
are part of the literature of the art, relevant for all they contain.”).
Second, Appellant argues that a person having ordinary skill in the art
would not have combined Pintauro ’425 and Thiam in the manner used by
the Examiner in this rejection. See Appeal Br. 18–23.
In rejecting claim 15, the Examiner found that Pintauro ’425 describes
an electrospun fibrous mat comprising a carrier-supported metal, and
ionomer (Nafion) and the second polymer (polyacrylic acid (PAA)). Final
Act. 3. The Examiner further found that Pintauro ’425 does not describe the
use of an electrical spinning polymer selected from the group of halogen-
containing polymers. Id.
The Examiner found that Thiam reports that electrospun fibrous
membranes comprising Nafion/PVDF have been used in prior art fuel cells.
Id. (citing Thiam 9475).
The Examiner found that
[i]t would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to
substitute the second polymer PAA of [Pintauro ’425] with
poly(vinylidene fluoride), because Thiam discloses that both
ionomer/polymer compositions of Nafion/PAA and
Nafion/poly(vinylidene fluoride) have been successfully used in
fuel cell membranes. . . . Thus[,] the substitution of known
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membrane compositions, this case Nafion/PAA for
Nafion/PVDF[,] would have been an obvious substitution of
functionally equivalent composition for the same purpose of an
conduction they can be formed into fibers by electrospinning
with reasonable expectation of success . . . .
Id. at 4.
Appellant argues that the “[t]here is no good reason provided by the
prior art to pursue the combination” relied upon by the Examiner. Appeal
Br. 19.
The Examiner’s position is that the proposed modification would have
been obvious to try to a person having ordinary skill in the art. The Supreme
Court has said that “the fact that a combination was obvious to try might
show that it was obvious under § 103.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). The Court, however, prefaced this observation with
the statement that it is true when “there is a design need or market pressure
to solve a problem and there are a finite number of identified, predictable
solutions.” Id. The Federal Circuit has explained that “a combination is only
obvious to try if a person of ordinary skill has ‘a good reason to pursue the
known options.’” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1361
(Fed. Cir. 2011) (quoting KSR, 550 U.S. at 421).
Here, we agree with Appellant that the Examiner has not identified
any particular reason for a person having ordinary skill in the art to have
wanted to modify Pintauro ’425’s Nafion/PAA membrane. The Examiner,
therefore, has not established a necessary predicate to find that the proposed
modification would have been obvious to try.
For the reasons set forth above, we reverse the rejection of claim 15 as
obvious over the combination of Pintauro ’425, Thiam, and Kidai. Thus, we
also reverse the rejection of dependent claims 17–21.
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2. Claim 16
Appellant argues that the rejection of independent claim 16 should be
reversed for the same reasons that the rejection of claim 15 was reversed.
Appeal Br. 23.
As discussed above, we have reversed the rejection of independent
claim 15. Thus, we also reverse the rejection of independent claim 16.
C. Rejection of claims 15–18 for OTDP over claim 1 of Kas ’972 and
Thiam
Appellant presents separate arguments for reversal of this rejection
with respect to independent claims 15 and 16 and does not separately argue
any of the dependent claims. See Appeal Br. 24–33. Each dependent claim,
therefore, will stand or fall with its parent independent claim.
1. Claim 15
Appellant argues that the OTDP rejection of claim 15 should be
reversed for either of two reasons. Appeal Br. 24–32. We address these
arguments separately.
First, Appellant argues that “the selection of [Thiam] in support of the
rejection would not have been made by one of ordinary skill in the art.” Id.
at 27. As discussed above, we take this to be an argument that Thiam is non-
analogous art. We are not persuaded by this argument for the reasons we set
forth above.
Second, Appellant argues that a person having ordinary skill in the art
would not have had any reason to combine Kas ’972’s claim 1 and Thiam.
Id. at 27–33.
In rejecting claim 15 for obviousness-type double patenting, the
Examiner found that Kas ’972’s claim 1 recites all of the limitations of claim
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15 except for the requirement of a halogenated polymer. Final Act. 5. The
Examiner also found that Thiam teaches that it is known to have a
Nafion/PVDF fuel cell membrane “because Nafion with another polymer
such as poly(vinylidene fluoride) prevents excess swelling and provides high
specific area, good interconnectivity of pores, flexibility and superior
mechanical strength, which makes such fibrous membranes preferred
materials for many applications.” Id. (citing Thiam at 9475). Based on these
findings, the Examiner concluded that it would have been obvious to a
person having ordinary skill in the art to use PVDF in combination with an
ionomer such as Nafion to obtain the benefits described in Thiam. Id.
Appellant argues that we should look beyond Thiam in evaluating this
rejection because “the paragraph relied on in Thiam has nothing to do with
the work/experiments taught by Thiam.” Appeal Br. 26. According to
Appellant, we should look to the references cited in the portion of Thiam
relied upon by the Examiner. Id. at 26–27. In particular, Appellant argues:
[I]n sum, the Office Action uses as a secondary reference
Thiam, which reference’s actual teachings have nothing to do
with the claims herein, whose background section teaches that a
further reference (Choi) discloses the existence of
Nafion/poly(vinylidene fluoride), and whose background
section teaches that yet another reference (Shabani) teaches
certain advantages (which have nothing to do with the
advantages of any halogen containing polymer).
This approach is simply not in accord with the standard
set out as legal precedent for establishing obviousness. One can
readily see that the Office Action merely pieced together the
various disclosures not in view of anything taught by the prior
art, but in view of the applicant’s claims.
Id. at 27.
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We need not look beyond Thiam to discern reversible error in the
Examiner’s findings. The relevant portion of Thiam says that studies have
shown that Nafion-impregnated nonconducting fiber webs have promise as a
strong barrier against methanol penetration due to the impregnated
membrane’s mechanical properties. Thiam at 9475. This teaching, however,
does not explain why a person having ordinary skill in the art would have
modified Kas ’972 in the manner suggested by the Examiner in the rejection.
Kas ’972 already has a Nafion-impregnated nonconducting fiber web. A
person having ordinary skill in the art, therefore, would have understood that
Kas ’972’s web already possessed the properties described in Thiam and
would not have had motivation to make the Examiner’s suggested
substitution of PVDF for the nonconducting polymer used in Kas ’972.
Because the Examiner erred in finding that a person having ordinary
skill in the art would have been motivated to use PVDF in place of the
nonconducting polymer used in Kas ’972, we reverse the rejection of claim
15 for OTDP. Thus, we also reverse the rejection of dependent claims 17
and 18.
2. Claim 16
The Examiner rejected claim 16 on the basis of the same findings and
reasoning used to reject claim 15. We, therefore, also reverse the rejection of
claim 16 for the reasons we set forth in reversing the OTDP rejection of
claim 15.
IV. CONCLUSION
The Examiner’s decision rejecting claims 15–21 is reversed.
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V. DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 17, 18 102(a)(2) Pintauro ’213 15, 17, 18
15–21 103 Pintauro ’425, Thiam, Kidai 15–21
15–18 Nonstatutory Double Patenting, Kas ’972, Thiam 15–18
Overall
Outcome 15–21
REVERSED