Peter Wilde et al.

Patent Trials and Appeals Board

Dec 17, 2019

14221525 - (D) (P.T.A.B. Dec. 17, 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.
14/221,525 03/21/2014 PETER WILDE SGL 2011/058 3925
24131 7590 12/17/2019
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
DIGNAN, MICHAEL L
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER WILDE,
RUEDIGER SCHWEISS, STEFAN FORERO,
MELANIE HABERKORN, and TIM SCHUBERT
____________

Appeal 2019-001861
Application 14/221,525
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1–4, 6–12, and 14 of
Application 14/221,525 under 35 U.S.C. § 103(a) as obvious. Final Act. 2
(March 29, 2018). Appellant1 seeks reversal of the rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as SGL Carbon
SE and Future Carbon GmbH. Appeal Br. 1.
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I. BACKGROUND
The ’525 Application describes a method of producing a gas diffusion
layer, which can be used in fuel cells, electrolytic cells, and batteries. Spec.
¶¶ 2, 3.
Claim 1 is representative of the ’525 Application’s claims and is
reproduced below from the claims listing in the Claims Appendix to the
Appeal Brief:
1. A process for forming a gas diffusion layer having a
substrate of a carbon-containing material and a micro porous
layer, which comprises the steps of:
i) dispersing carbon black with a BET surface area of 20
to 100 m2/g, carbon nanotubes with a BET surface area of at
least 200 m2/g and an average outer diameter of at most 25 nm
and only water as a dispersion medium at a shearing rate of at
least 1,000 rps and/or such that in a mixture produced of the
carbon black, the carbon nanotubes and the dispersion
medium, at least 90% of the carbon nanotubes have a mean
agglomerate size of at most 25 μm, during the dispersing step a
binding agent is not provided until after a shearing speed is
obtained;
ii) applying the mixture produced in step i) to at least a
portion of at least one side of the substrate; and
iii) drying the mixture applied in step ii).
Appeal Br. (Claims App.) 13 (emphasis added).
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:2
1. Claims 1–4, 6–11, and 14 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Gharibi,3 Heo,4
Konno,5 and Lee.6 Final Act. 2; Answer 3.
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Gharibi, Heo, Konno, Lee, and Haas.7
Final Act. 10; Answer 10.
III. DISCUSSION
Appellant argues for reversal of all of the rejections at issue based
upon the limitations in independent claim 1. Appeal Br. 4–17. We, therefore,
select claim 1 as representative of the claims subject to this ground of
rejection and limit our discussion to this claim. 37 C.F.R. § 41.37(c)(1)(iv).

2 Claims 13 and 15–20 are withdrawn from consideration by the Examiner
pursuant to 37 C.F.R. § 1.142(b) as drawn to a non-elected invention. Final
Act. 2. Claim 5 has been canceled. Id.
3 Hussein Gharibi et al., The synergy between multi-wall carbon nanotubes
and Vulcan XC72R in microporous layers, 35 Int’l J. Hydrogen Energy
9241–51 (2010) (hereinafter “Gharibi”).
4 US 2010/0255402 A1, published Oct. 7, 2010.
5 US 2010/0092840 A1, published Apr. 15, 2010.
6 US 2009/0011308 A1, published Jan. 8, 2009.
7 WO 2005/124908 A2, published Dec. 29, 2005.
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A. Rejection of claims 1–4, 6–11, and 14 as unpatentable over the
combination of Gharibi, Heo, Konno, and Lee.
According to Appellant, the combination of Gharibi, Heo, Konno, and
Lee does not describe or suggest the following elements of claim 1: (1)
“carbon black with a BET surface area of 20 to 100 m2/g,” (2) “carbon
nanotubes with a BET surface area of at least 200 m2/g and an average outer
diameter of at most 25 nm,” (3) “at least 90% of the carbon nanotubes have
a mean agglomerate size of at most 25 μm,” (4) “only water as a dispersion
medium,” and (5) PTFE’s use in the sonification process. Appeal Br. 8–10.
First, Appellant argues that the Examiner’s relied-upon primary
reference of Gharibi discloses the dispersion of “carbon particles like carbon
black having a BET surface area of more than 100 m2/g.” Id. (emphasis
added).
The Examiner, however, found that Konno’s gas diffusion layer for a
fuel cell preferably uses carbon black with a surface area of 10 m2/g or more.
Answer 5 (citing Konno ¶ 74).
Second, Appellant argues that, in the applied prior art, “nothing is said
with respect to the average outer diameter being at most 25 nm of the carbon
nanotubes.” Appeal Br. 10.
The Examiner, however, found Gharibi discloses that a gas diffusion
layer for a fuel cell can be manufactured by dispersing carbon black and
carbon nanotubes having diameters between 20–30 nm. Answer 3 (citing
Gharibi 9242). The Examiner, furthermore, found that Heo discloses fuel
cell catalysts comprising a carbon nanotubes having a surface area greater
than 200 m2/g. Answer 5 (citing Heo Table 1; claim 5).
Thus, the Examiner has made findings that the applied prior art
discloses overlapping ranges for the claimed properties of the carbon black
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and carbon nanotube components. Answer 3, 5. This is sufficient to create a
prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (a prima facie case of obviousness typically exists when the
ranges of a claimed composition overlap the ranges disclosed in the prior
art).
This prima facie case of obviousness can be overcome if Appellant
shows either (i) that the prior art teaches away from the claimed invention or
(ii) that there are new and unexpected results relative to the closest prior art.
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) (citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)). An applicant must show
that whatever property they are asserting is unexpected throughout the
claimed range, but not outside that critical range. See Peterson, 315 F.3d at
1330.
Here, Appellant does not argue that any of the references relied upon
by the Examiner teaches away from the claimed subject matter. Rather,
Appellant asserts that the specific combination of ingredients with properties
in the claimed ranges unexpectedly provides “a synergistic effect.” Appeal
Br. 5; see also id. at 7 (contending that the Specification’s description of “an
increase in both the electrical conductivity and the gas permeability is an
unexpected result”).
Appellant’s argument, however, is not persuasive because
for a showing of “unexpected results” to be probative evidence
of non-obviousness, it falls upon the applicant to at least
establish: (1) that there actually is a difference between the
results obtained through the claimed invention and those of the
prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972);
and (2) that the difference actually obtained would not have
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been expected by one skilled in the art at the time of invention,
Id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971).
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). In this instance,
Appellant has not compared the claimed composition with the closest prior
art method of Gharibi. Appellant, furthermore, does not point to any
disclosure in the Specification that supports the assertion that these
properties were unexpected. See Appeal Br. 7; Spec. ¶ 53. We, therefore,
agree with the Examiner that Appellant has not made a persuasive showing
of unexpected or synergistic results. See Answer 13, 16, 18.
Third, Appellant argues that, in the applied prior art, “nothing is said
about the advantage of having a mean agglomerate size of at most 25
micrometer of the carbon nanotubes in the final mixture.” Appeal Br. 10.
For the reasons set forth above, the Examiner found that the prior art
discloses carbon nanotubes having surface areas and average outer diameter
ranges that overlap those recited in claim 1. We, therefore, agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
at the time of the invention that the claimed dispersing step would have
resulted in at least 90% of the carbon nanotubes having a mean agglomerate
size of at most 25 μm. See Answer 15; see also id. at 5–6.
Fourth, Appellant argues that “Gharibi teaches . . . the use of a
mixture of alcohols (2-propanol and glycerol) and water in order to disperse
the carbon particles.” Appeal Br. 8 (citing Gharibi 9242). According to
Appellant, “[n]o hint is given that water may be used as the only dispersion
medium.” Appeal Br. 8.
Appellant’s arguments, however, ignore Lee’s specific disclosure that
“[a] solvent[, which] may be water, n-propanol, isopropanol, or a mixed
solvent thereof” may be used to disperse carbon powder for gas diffusion
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layer manufacturing. See Lee ¶¶ 34, 35 (emphasis added); 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). As
the Examiner found, it would have been obvious to one of ordinary skill in
the art at the time of the invention that Gharibi’s solvent “could have
comprised any known solvent in the art, including only [Lee’s] ultrapure
water, . . . with the motivation to simplify the process or reduce cost, as [Lee
teaches that] water is a known substitute solvent for aqueous alcohol
mixtures.” Answer 4–5 (citing Lee Example 1).
Appellant, therefore, has not persuaded us that the Examiner
reversibly erred in finding that Lee describes the claimed use of water, by
itself, as a dispersion medium.
Fifth, Appellant argues that Gharibi fails to teach “[t]he use of PTFE
in the sonification process.” Appeal Br. 8. Specifically, Appellant argues
that the PTFE amount is important for Gharibi’s microporous layer
performance, whereas the Specification “recites that no PTFE is added to the
mixture before the shearing process is performed.” Id. at 9.
The Examiner responds that, inter alia, Appellant’s argument is
“irrelevant to the claims as written.” Answer 17. The Examiner further
responds that “Lee . . . from the same field of invention, regarding
production of a [gas diffusion layer] with carbon and binder, teaches adding
the PTFE binder after dispersing and shearing the carbon components.” Id.
at 17–18 (citing Lee Example 1).
We note that claim 1, when read in light of the Specification, requires
that a PTFE binder is provided only after a shearing rate is obtained in step
i), “but before . . . step ii) is carried out.” Spec. ¶ 19; see also Answer 4. In
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other words, claim 1 does not require use of PTFE during sonification. Thus,
Appellant’s argument that Gharibi fails to teach using PTFE during the
sonification process is irrelevant.
As the Examiner found, Lee teaches that the PTFE binder is added
after the carbon components are dispersed and sheared. Answer 17–18
(citing Lee Example 1). Thereafter, Lee applies the carbon slurry onto a
carbon substrate. Compare Lee ¶ 73, 74 with claim 1, steps “i)” and “ii).”
We, therefore, are not persuaded that Appellant has established the existence
of reversible error regarding the Examiner’s finding that Lee describes or
suggests the claimed step of providing a PTFE binder after a shearing rate is
obtained.
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 1 as unpatentable over the combination of
Gharibi, Heo, Konno, and Lee. Accordingly, we also affirm the rejection of
claims 2–4, 6–11, and 14, which depend from claim 1.
B. Rejection of claim 12 as unpatentable over the combination of
Gharibi, Heo, Konno, Lee, and Haas.
Appellant argues that the rejection of claim 12 as unpatentable over
the combination of Gharibi, Heo, Konno, Lee, and Haas should be reversed
for the reasons set forth in arguing for reversal of the rejection over the
combination of Gharibi, Heo, Konno, and Lee. See Appeal Br. 12 (“Claim[]
. . . 12 stand[s] or fall[s] with claim 1.”).
For the reasons set forth above, we have affirmed the rejection of
independent claim 1 as unpatentable over the combination of Gharibi, Heo,
Konno, and Lee. We, therefore, also affirm the rejection of claim 12 as
unpatentable over the combination of Gharibi, Heo, Konno, Lee, and Haas.
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IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–11, 14 103(a) Gharibi, Heo, Konno, Lee 1–4, 6–11, 14
12 103(a) Gharibi, Heo, Konno, Lee, Haas 12
Overall
Outcome 1–4, 6–12, 14
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED