VOLKSWAGEN AG

Patent Trials and Appeals Board

May 24, 2021

2020002394 (P.T.A.B. May. 24, 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.
15/026,549 03/31/2016 Peter Strasser 1901.1005 3569
23280 7590 05/24/2021
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
PARSONS, THOMAS H
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
05/24/2021 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 PETER STRASSER, M.S. RANJBAR, and
GEROLD HUEBNER1
____________

Appeal 2020-002394
Application 15/026,549
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MICHELLE N. ANKENBRAND, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 9, 10, and 12–24. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to fuel-cell catalyst systems
comprising a polyaniline-metal catalyst that includes iron and manganese.
E.g., Spec. ¶ 1; Claim 9. The Specification states that “[t]he invention is

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Audi
Aktiengesellschaft. Appeal Br. 2.
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based on the realization that a polyaniline-metal catalyst containing iron as
well as manganese displays a higher stability than the prior art polyaniline-
metal catalysts.” Spec. ¶ 8. Claim 9 is reproduced below from page 8
(Appendix A) of the Appeal Brief:
9. A catalyst system comprising:
a carbon-based support material; and
a polyaniline-metal catalyst bound to the support material, the
polyaniline-metal catalyst including iron (Fe) and manganese
(Mn); wherein a molar ratio of Mn to Fe is in the range from
1:100 to 100:1.
ANALYSIS
Claims 9, 10, and 12–24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Serov (WO 2012/174344 A1, published Dec. 20, 2012)
and Calabrese Barton (US 2011/0287174 A1, published Nov. 24, 2011)
(hereafter “Barton” for brevity).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action dated March 20, 2019, and in the Examiner’s Answer.
The Appellant presents arguments for claims 9 and 24. We address
those claims below. The remaining claims on appeal will stand or fall with
claim 9. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 9. The Examiner finds that Serov teaches a catalyst system
comprising each element of claim 9, including the use of iron and
manganese, except that Serov’s system uses a phenylenediamine-metal
catalyst rather than a polyaniline-metal catalyst as recited by claim 9. Final
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Act. 3. The Examiner finds that Barton teaches similar catalyst systems2 in
which either a phenylenediamine-metal catalyst or a polyaniline-metal
catalyst is used, indicating the interchangeability of phenylenediamine and
polyaniline. See id. The Examiner determines that it would have been
obvious to substitute Barton’s polyaniline for Serov’s phenylenediamine. Id.
at 3–4.
In the Appeal Brief, the Appellant argues that Serov does not teach a
catalyst that is “bound to the [carbon-based] support material,” as required
by claim 9. Appeal Br. 4. The Appellant argues that Serov’s M-N-C (metal-
nitrogen-carbon) catalyst is manufactured using a non-carbon sacrificial
support, and that Serov’s M-N-C catalyst is subsequently “deposited on a
new support [that may be carbon], without any apparent chemical reaction or
other process that could result in binding.” Id. at 4–5.
In the Answer, the Examiner relies on ¶¶ 6 and 104 of Serov and
responds that Serov prepares its “M-N-C catalyst utilizing a [non-carbon]
sacrificial support approach,” that the sacrificial support is removed, and that
Serov teaches that the resulting M-N-C catalyst “can be deposited onto
conductive dispersed supports (both carbon and non-carbon).” Ans. 3–4
(citing Serov ¶ 104). The Examiner does not expressly find that Serov ¶ 104
teaches that the M-N-C catalyst is “bound” to a carbon support as recited by
claim 9. Id. Instead, the Examiner relies on Serov ¶ 6, which discloses that
“[g]enerally, known non-platinum electrocatalysts are supported on high
surface area carbon blacks,” and that “[t]he synthesis procedure usually
includes precipitation of the precursor molecules onto the supporting

2 Barton also discloses the use of iron and manganese. E.g., Barton ¶ 52.
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substrate and pyrolyzation of the supported precursor.” Serov ¶ 6; see also
Ans. 4. The Examiner finds that, because Serov ¶ 104 states that the M-N-C
catalyst is “deposited” onto a support without specifying how the deposition
occurs, and Serov ¶ 6 teaches a typical method by which non-platinum
catalysts are deposited onto carbon supports, it would have been obvious to
perform the “deposit[ing]” described by ¶ 104 using the known technique
involving pyrolyzation described by ¶ 6. See Ans. 3–5. There is no dispute
that the technique described by ¶ 6 results in a catalyst that is “bound to the
support material,” as recited by claim 9.
In the Reply Brief, the Appellant argues that a person of ordinary skill
in the art would not have used the technique of Serov ¶ 6 to perform the
“deposit[ing]” of Serov ¶ 104 because Serov ¶ 7 allegedly teaches
downsides of that technique that a person of ordinary skill in the art
practicing Serov would have sought to avoid. Reply Br. 2.
The Appellant’s arguments are not persuasive of reversible error in
the Examiner’s rejection. As an initial matter, we observe that Serov ¶ 104
does not merely teach “deposit[ing]” the M-N-C catalyst onto the support; it
expressly teaches “deposit[ing] . . . in a fashion that facilitates the charge
transfer of the heteroatom atom and the support.” Serov ¶ 104 (emphasis
added). The Appellant does not persuasively address that disclosure or
otherwise provide an explanation of why a catalyst interacting with a support
via “charge transfer,” as disclosed by Serov ¶ 104, falls beyond the scope of
the term “bound to the support material.”
Moreover, and as set forth above, Serov teaches that, after
manufacture of the M-N-C catalyst and removal of the sacrificial support
with which the M-N-C catalyst is manufactured, “the M-N-C catalysts
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described herein can be deposited onto conductive dispersed supports (both
carbon and non-carbon).” Serov ¶ 104 (emphasis added). Serov ¶ 104 does
not specifically indicate how the “deposit[ing]” takes place beyond, as noted
above, stating that the depositing facilitates charge transfer. Serov ¶ 6 states
that, “[g]enerally, known non-platinum electrocatalysts are supported on
high surface area carbon blacks,” and that “[t]he synthesis procedure usually
includes precipitation of the precursor molecules onto the supporting
substrate and pyrolyzation of the supported precursor.” The Examiner’s
finding that a person of ordinary skill in the art would have looked to known
methods of depositing a catalyst onto a support for guidance as to how to
perform the “deposit[ing]” of Serov ¶ 104 is reasonable and is consistent
with the record. See Serov ¶¶ 6, 104. The Appellant does not offer an
alternative explanation as to how a person of ordinary skill in the art might
have understood that the “deposit[ing]” step of Serov ¶ 104 should be
performed.
We do not agree with the Appellant that ¶ 7 of Serov would have
taught a person of ordinary skill in the art “to avoid” what the Examiner has
proposed. See Reply Br. 2. Although ¶ 7 does describe “significant
drawbacks” of prior art M-N-C catalysts, Serov indicates that those
drawbacks are reduced or resolved by its “method of preparation of M-N-C
catalysts utilizing a sacrificial support,” not by eliminating carbon-catalyst
bonding in the final product. See Serov ¶ 9. Serov even acknowledges in
¶ 104 some of the same drawbacks described in ¶ 7 (durability and stability),
but nevertheless expressly teaches the use of carbon supports as an
alternative to non-carbon supports. Id. ¶ 104. Although Serov ¶ 7
speculates that “low activity is possibly due low metal loading, and as a
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result in low concentration of active sites in such catalysts due to using
external carbon source,” as described above, Serov then goes on to explicitly
teach that its M-N-C catalysts can be deposited onto carbon supports, and
does not disparage known methods such as precipitation/pyrolyzation, see
Serov ¶¶ 6, 104. Accordingly, we are not persuaded that a person of
ordinary skill reading Serov would have attempted to avoid the method
identified by the Examiner.
The Appellant also argues that a person of ordinary skill in the art
would not have used Barton’s polyaniline as a substitute for Serov’s
phenylenediamine because Barton does not teach “that the use of polyaniline
would in any way provide an improvement to [Serov].” Appeal Br. 6. That
argument is not persuasive because the record establishes, e.g., Barton ¶ 57,
and the Appellant does not dispute, that phenylenediamine and polyaniline
were known alternatives to each other in fuel cell catalysts such as those of
Serov and Barton. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) (“[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”).
We have carefully considered the Appellant’s arguments, but we are
not persuaded of reversible error in the Examiner’s rejection of claim 9.3

3 In the event of further examination of the application on appeal, the
Examiner may wish to consider whether it would be appropriate to
alternatively state the rejection as relying on Barton for its disclosure of a
polyaniline-metal catalyst bound to a carbon-based support material, e.g.,
Barton ¶ 45 (carbon support), ¶ 52 (metal precursor comprising Fe and Mn),
¶ 57 (polyaniline nitrogen precursor), and on Serov for its disclosure of a
suitable Mn:Fe ratio, e.g., Serov ¶ 129.
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Claim 24. Claim 24 depends from claim 9 and recites that the
carbon-based support material “includes a carbon black.” Appeal Br. 9.
The Examiner finds that Barton discloses a carbon-based support
material that includes a carbon black. Final Act. 8 (citing Barton ¶ 46).
The Appellant relies on the argument discussed above that Serov
teaches avoidance of the use of carbons. Appeal Br. 6.
That argument is not persuasive for reasons set forth above. We are
not persuaded that Serov teaches avoidance of the use of carbons given
Serov’s disclosure that its M-N-C catalyst “can be deposited onto conductive
dispersed supports (both carbon and non-carbon).” Serov ¶ 104. Both
Barton (¶ 46) and Serov itself (¶ 6) establish that it was well known that
dispersed carbon catalyst supports may include carbon black. The
Examiner’s proposal is simply the use of a known element (carbon black)
according to an established function (fuel cell catalyst support) with
predictable results. Such combinations typically do not result in nonobvious
subject matter. See KSR, 550 U.S. at 416 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
We are not persuaded of reversible error in the Examiner’s rejection
of claim 24.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
9, 10, 12–24 103 Serov, Calabrese Barton 9, 10, 12–24
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