Volkswagen AG

Patent Trials and Appeals Board

Aug 3, 2021

2020005059 (P.T.A.B. Aug. 3, 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.
15/126,527 09/15/2016 Dustin Banham 1901.1015 9466
23280 7590 08/03/2021
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
OHARA, BRIAN R
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
08/03/2021 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUSTIN BANHAM, VOLKSWAGEN AG, BROOKS FRIESS,
and SIYU YE
Appeal 2020-005059
Application 15/126,527
Technology Center 1700
Before MICHELLE N. ANKENBRAND, JEFFREY SNAY, and
LILAN REN, Administrative Patent Judges.
REN, 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 9–16 and 19–28. See Final Act. 2, 7.
We have jurisdiction under 35 U.S.C. § 6(b).
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 “Audi AG.” Appeal
Br. 2.
Appeal 2020-005059
Application 15/126,527

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CLAIMED SUBJECT MATTER
“The object of the present invention . . . is to provide a catalyst layer
of an electrode for a broad spectrum of fuel cells, which ensures improved
water management and, therefore more stable performance parameters.”
Spec. ¶ 9. Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A catalyst layer for a cathode of a fuel cell, the catalyst
layer comprising:
a catalyst material containing a catalytic material; and
hydrophobic carbon-based mesoporous particles, the
catalyst material and the hydrophobic carbon-based mesoporous
particles being on a cathode side of a polymer electrolyte
membrane.
Claims Appendix (Appeal Br. 11) (emphasis added).
REFERENCES
The Examiner’s rejections rely on the following prior art references:

Name Reference Date
Atanassova US 2008/0206616 A1 Aug. 28, 2008
Schüth US 2015/0017555 A1 Jan. 15, 2015
Hong KR 20150068193 Dec. 11, 2013
Hübner DE 102007031280 A1 Jan. 8, 2009
Ji Bong Joo et al., Preparation of mesoporous carbon templated by silica
particles for use as a catalyst support in polymer electrolyte membrane fuel
cells, 111 Catalyst Today 171–175 (2006).
REJECTIONS
The Examiner maintains the following rejections:
Claim(s) Rejected 35 U.S.C. § References/Basis
9–13, 15, 16, 19, 20,
26–28
103 Schüth, Atanassova
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Claim(s) Rejected 35 U.S.C. § References/Basis
14, 21, 22 103 Schüth, Atanassova, Hong
23–25 103 Schüth, Atanassova, Huebner
12 103 Schüth, Atanassova, Joo
(alternative ground)
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies and in light of the arguments and evidence produced
thereon. Cf. 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 having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant has identified reversible
error, and we affirm the Examiner’s rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Claim 92
In rejecting claim 9 over Schüth and Atanassova, the Examiner
acknowledges that “[Schüth] is silent to the hydrophobic carbon based
mesoporous particle being within the catalyst layer” and cites Atanassova
for the teaching. Final Act. 3, 13 (finding that “[Schüth] discloses the

2 Appellant argues against the obviousness rejection of claims 9, 10, 12, 16,
19, 20, and 26–28 based on Schüth and Atanassova as a group, with claim 9
as the representative claim. See Appeal Br. 3–8. Claims 10, 12, 16, 19, 20,
and 26–28 stand or fall together with claim 9 with respect to the obviousness
rejection based on Schüth and Atanassova. See id.; see 37 C.F.R.
§ 41.37(c)(1)(iv).
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required hydrophobic carbon-based mesoporous particles (which is an
HPO). However, [Schüth] is silent to the required location. Atanassova
discloses using HPOs within the desired location with motivation for doing
so.”). Appellant’s argument that paragraph 34 of “[Schüth] specifically
teaches that its hydrophobic mesoporous particles are not used in the
catalyst layer” and “in fact are used for efficient water transport” (Appeal
Br. 6)3, therefore, is unpersuasive because it does not address the Examiner’s
findings based on the combined prior art teachings for the rejection.
Appellant’s argument that a skilled artisan “would clearly understand
that [Schüth] does not desire ‘a catalyst layer’ comprising hydrophobic
carbon-based mesoporous particles” (Appeal Br. 7) is unpersuasive because
it lacks evidentiary support. “Attorneys’ argument is no substitute for
evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Appellant defines “mesoporous material . . . as a solid material
containing pores with an average diameter between 2 and 50 nm” with
certain hydrophicity and argues that the mesoporous particles of Schüth
must be coated with a binder to be hydrophobic “at which point it is not
clear they would be mesoporous any more.” Appeal Br. 7 (citing various
portions of the Specification). Appellant’s argument that “it is not clear”
(id.) that the prior art particle is mesoporous is unpersuasive because it does

3 Appellant does not argue that Schüth teaches away from the recited
catalyst. See Appeal Br. 6–7. In any event, Appellant’s argument with regard
to the wettability of Schüth’s catalyst (id.) “does not criticize, discredit, or
otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Moreover, Appellant does not dispute the Examiner’s
finding that “the wettability is with a polymer electrolyte ([0037], [Schüth]).
Not water as the partial citation of the applicant would make it appear.”
Compare Final Act. 12, with Appeal Br. 6–7.
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not adequately explain why the recited “mesoporous particles” exclude the
prior art particles, which may include a binder or a coating. In any event,
Schüth does not require that the mesoporous particles be coated – only that
“[i]f a coating or a binder having hydrophobic properties is appropriately
selected, the use in the MPLs [microporous layers] of only an additive
which, both in the interior of the spheres and also outside around them, can
serve as agent for hydrophobicizing the surface, is therefore possible.”
Schüth ¶ 34. Appellant also does not address the Examiner’s finding that
paragraphs 2, 6, as well as 34, of Schüth teach or suggest the recited
“hydrophobic carbon-based mesoporous particles.” Compare Appeal Br. 7,
with Final Act. 3, 10 (citing Schüth ¶¶ 2, 6, 34).
Appellant does not argue that the Examiner reversibly erred in finding
that “Atanassova discloses a catalyst coated membrane for use in a fuel cell”
and Atanassova’s “membrane is a polymer electrolyte membrane ([0020])
and hydrophobic materials (HPOs) are used within the cathode catalyst layer
to facilitate the removal of water from the cathode and prevent liquids such
as water from reaching and staying in certain area.” Compare Appeal Br. 7,
with Final Act. 3. Rather, Appellant takes issue with the Examiner’s
determination that it would have been obvious to use Schüth’s mesoporous
particles. Appeal Br. 7. Appellant’s arguments that the mesoporous particles
of Schüth’s paragraph 29 “are hydrophilic and used for water transport” and
that coated particles might not be mesoporous mirror previous arguments
which we find unpersuasive supra.
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Claim 11
Claim 11 depends from claim 9 and additionally recites “wherein the
hydrophobic carbon-based mesoporous particles have an average pore
diameter in the range of 2 nm to 20 nm.”
In rejecting claim 11, the Examiner finds that Schüth discloses that the
“particles used here generally have mesopores having a size from 2 to 50 nm
. . . .” Schüth ¶ 13 (cited in Final Act. 4). Appellant does not dispute this
finding. Compare Appeal Br. 8, with Final Act. 4. Appellant’s argument that
“such limited pore sizes can prevent accumulation of water within the pores”
(Appeal Br. 8) is unsupported with evidence and does not identify reversible
error in the Examiner’s fact findings in support of the rejection.
Claim 15
Claim 15 depends from claim 9 and additionally recites “wherein the
catalyst layer has an average content of the hydrophobic carbon-based
mesoporous particles of 0.5 g to 5 g per square meter (g/m2).”
In rejecting claim 15, the Examiner finds that a skilled artisan would
have arrived at the limitation at issue based on the combined teachings of
Schüth and paragraphs 111 and 112 of Atanassova. Final Act. 4. Appellant
does not dispute this finding. Compare Appeal Br. 8, with Final Act. 4.
Appellant’s argument that the prior art does not recognize the same
advantages as the inventor of this application (Appeal Br. 8) does not
identify reversible error in the Examiner’s fact findings in support of the
rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
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What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103.”).
Claims 14, 21, & 224
Claim 14 depends from claim 9 and additionally recites “further
comprising water-retaining particles made of silicon dioxide or carbon.”
In rejecting claim 14, the Examiner finds that a skilled artisan would
have found it obvious “to add the water retaining mesoporous particles of
Hong to the catalyst layer of [Schüth] as modified by Atanassova in order to
ensure the membrane electrode assembly is capable of obtaining a high
output at a low temperature humidification and the skilled artisan would
have a reasonable expectation of success in doing so.” Final Act. 4 (citing
various paragraphs of Hong).
Appellant argues that the Examiner’s reason to combine Hong with
Schüth and Atanassova contradicts that of combining Schüth and
Atanassova because the former requires adding water, whereas the latter
requires preventing liquids from reaching and staying in certain areas.
Appeal Br. 9. Appellant, however, does not address the Examiner’s
reasoning that “the water retaining particle[s] and the hydrophobic
mesoporous carbon particles both are contributing to keeping water away
from the catalytic material” based on the combined prior art teachings.
Compare Final Act. 14–15, with Appeal Br. 9. Appellant’s argument,

4 Appellant argues against the obviousness rejection of claims 14, 21, and 22
as a group, with claim 14 as the representative claim. See Appeal Br. 8–9.
Claims 21 and 22 stand or fall together with claim 14. See id.; see
37 C.F.R. § 41.37(c)(1)(iv).
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therefore, does not identify reversible error in the Examiner’s reasoning in
support of the rejection of claim 14.
Claims 23–25
Appellant does not present separate arguments for the rejection of
claims 23–25. Appeal Br. 9. The rejection of claims 23–25 is sustained. See
In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir. 1983) (“Since the claims are
not separately argued, they all stand or fall together.”).
Claim 12 (Alternative Rejection Based On Schüth, Atanassova, & Joo)
Appellant does not present separate arguments for the alternative
rejection of claim 12 based on Schüth, Atanassova, and Joo. Appeal Br. 10.
The rejection of claim 12 based on Schüth, Atanassova, and Joo is sustained.
See Kaslow, 707 F.2d at 1376 (“Since the claims are not separately argued,
they all stand or fall together.”).
CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
9–13, 15, 16,
19, 20, 26–
28
103 Schüth,
Atanassova
9–13, 15, 16,
19, 20, 26–
28

14, 21, 22 103 Schüth,
Atanassova,
Hong
14, 21, 22
23–25 103 Schüth,
Atanassova,
Huebner
23–25
12 103 Schüth,
Atanassova, Joo
(alternative
ground)
12
Overall
Outcome
9–16, 19–28

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