ZEON CORPORATION

Patent Trials and Appeals Board

Dec 2, 2021

2021000074 (P.T.A.B. Dec. 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.
15/316,536 12/06/2016 Akihiko YOSHIWARA 16P0145 6436
128976 7590 12/02/2021
KENJA IP LAW PC
4 North Second Street, Suite 598
San Jose, CA 95113
EXAMINER
MEKHLIN, ELI S
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
admin@kenjaip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AKIHIKO YOSHIWARA

Appeal 2021-000074
Application 15/316,536
Technology Center 1700
____________

Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
DEBRA M. DENNETT, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–9, 11, 12, 21, and 22, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Dec. 6, 2016 (“Spec.”),
the Final Office Action dated Dec. 16, 2019 (“Final Act.”), the Appeal Brief
filed July 14, 2020 (“Appeal Br.”), the Examiner’s Answer dated Aug. 5,
2020 (“Ans.”), and the Reply Brief filed Oct. 2, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies ZEON CORPORATION as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The invention relates to a counter electrode for a dye-sensitized solar
cell. Spec. ¶ 1. The Specification discloses a counter electrode embodiment
having a support, a conductive film optionally formed on the support, and a
catalyst layer that contains carbon nanotubes and is free of metal. Id. ¶ 68.
Independent claim 1, reproduced below from the Claims Appendix of the
Appeal Brief, is illustrative of the subject matter on appeal (emphasis
added).
1. A counter electrode for a dye-sensitized solar cell,
comprising:
a support; and
a catalyst layer formed on or over the support,
wherein the catalyst layer contains at least carbon
nanotubes capable of desorbing carbon monoxide and carbon
dioxide in amounts of a carbon monoxide desorption of 400
μmol/g to 900 μmol/g and a carbon dioxide desorption of 200
μmol/g to 600 μmol/g, as measured by a temperature
programmed desorption method within a range from 150°C to
950°C, and wherein
metal is not supported on surfaces of the carbon
nanotubes.
Appeal Br. 18 (Claims Appendix).
ANALYSIS
The Examiner maintains the rejection of claims 1–9, 11, 12, 21, and
22 as follows for the reasons provided in the Final Office Action. Final Act.
5–22.
Claim(s) 35 U.S.C. § Basis/Reference(s)
21 112(b) Indefiniteness
22 112(b) Indefiniteness
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Application 15/316,536

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Claim(s) 35 U.S.C. § Basis/Reference(s)
1, 5, 8, 11, 12,
21 103 Park, Harutyunyan, Fukui
1, 3, 5, 8, 11,
12, 21, 22 103 Park, Kishida, Fukui
2 103 Park, Harutyunyan, Fukui, White
2 103 Park, Kishida, Fukui, White
3 103 Park, Harutyunyan, Fukui, Mohamed
4, 9 103 Park, Harutyunyan, Fukui, Lee
4, 9 103 Park, Kishida, Fukui, Lee
6, 7 103 Park, Harutyunyan, Fukui, Ko
6, 7 103 Park, Kishida, Fukui, Ko
22 103 Park, Harutyunyan, Fukui, Irvin
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. 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 considering the
argued claims in light of each of Appellant’s arguments, we are not
persuaded Appellant has identified reversible error in the Examiner’s
rejections.
Rejections of Claims 21 and 22 under 35 U.S.C. 112(b)
Appellant does not challenge the indefiniteness rejections of claims 21
and 22 in the Appeal Brief. Accordingly, we summarily affirm the rejections
without considering Appellant’s arguments presented for the first time in the
Reply Brief. Reply Br. 6–8; see 37 C.F.R. § 41.37(c)(1)(iv) (2019) (“[A]ny
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.”). “[I]t is
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Application 15/316,536

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inappropriate for appellants to discuss in their reply brief matters not raised
in . . . the principal brief[ ]. Reply briefs are to be used to reply to matter[s]
raised in the brief of the appellee.” Kaufman Company, Inc. v. Lantech, Inc.,
807 F.2d 970, 973 n.* (Fed. Cir. 1986).

Rejection of Claims 1, 5, 8, 11, 12, and 21 under 35 U.S.C. § 103
The Examiner finds Park discloses a dye-sensitized solar cell
comprising a counter electrode having a support and a catalyst layer
containing carbon nanotubes. Final Act. 6. The Examiner modifies Park’s
carbon nanotubes with Harutyunyan’s teaching to remove carbon impurities
from carbon nanotubes for the purpose of increasing surface activity. Id. at
6–7. The Examiner finds Park as modified by Harutyunyan is “silent as to
whether the catalyst layer does not include metal” as required by claim 1. Id.
at 7. The Examiner turns to Fukui’s disclosure of a porous carbon catalyst
layer that can be formed without metal and determines it would have been
obvious to a person having ordinary skill in the art to use a catalyst layer that
does not include metal because Fukui teaches this is an effective type of
carbon catalyst layer. Id.
Appellant argues the rejection of claim 1 and relies on those same
arguments for the rejection of claims 5, 8, 11, 12, and 21. Appeal Br. 12–15.
Therefore, we confine our discussion to claim 1, which we select as
representative. Claims 5, 8, 11, 12, and 21 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv) (2019).
Appellant argues that the Examiner erred because Park and
Harutyunyan are not silent with respect to whether the catalyst layer includes
metal. Appeal Br. 15. Appellant directs us to Park’s disclosure of a cathode
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using a metal catalyst-supported carbon nanotube and Harutyunyan’s
disclosure to remove a substantial amount of metal impurities from a carbon
nanotube. Id. at 12–14. Appellant’s position is the rejection is in error
because Park teaches away from all non-metal catalyst embodiments and
Park’s teachings conflict with Harutyunyan’s disclosure of removing metal
impurities. Id. at 14–15.
We do not find Appellant’s argument persuasive of error because
Appellant does not argue the rejection made by the Examiner. The
Examiner’s rejection relies on the teachings of three prior art references,
including Fukui, which the Examiner relies upon for the teaching that
Appellant argues is missing from Park and Harutyunyan. Namely, the
Examiner finds Fukui teaches non-metal catalysts, specifically porous
carbon catalyst layers, are effective catalysts for dye-sensitized solar cells of
the type taught by Park. Ans. 24; Final Act. 7. The record supports the
Examiner’s finding that Park does not teach away from the use of non-metal
carbon catalysts, but, rather, discloses non-metal carbon catalysts are
operable though not preferred. Ans. 22; Park ¶ 7. In the Reply Brief,
Appellant highlights it does not assert Park’s non-metal embodiments would
be inoperable. Reply Br. 9. The record also supports the Examiner’s finding
that Harutyunyan relates to metal impurities present during the synthesis of
carbon nanotubes rather than in the various applications of carbon
nanotubes. Ans. 23–24; Harutyunyan ¶¶ 7, 19.
In sum, Appellant’s arguments are not persuasive of error in the
Examiner’s conclusion of obviousness. Accordingly, we affirm the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103 over Park,
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Harutyunyan, and Fukui. We, likewise, affirm the rejection of claims 5, 8,
11, 12, and 21, which depend from claim 1.
Rejection of Claims 1, 3, 5, 8, 11, 12, 21, and 22 under 35 U.S.C. 103
Appellant argues the rejection of claims 1, 3, 5, 8, 11, 12, 21, and 22
over Park, Kishida, and Fukui as a group and relies upon the same
arguments presented with respect to the rejection of claim 1 over Park,
Harutyunyan, and Fukui. Appeal Br. 15–16. Because we do not find
Appellant’s arguments persuasive of error in the Examiner’s rejection of
claim 1 over the cited prior art, we likewise affirm the Examiner’s rejection
of claims 1, 3, 5, 8, 11, 12, 21, and 22 under 35 U.S.C. § 103 over Park,
Kishida, and Fukui for the same reasons discussed above to the extent they
are applicable to the rejection.
Remaining Rejections under 35 U.S.C. 103
Appellant does not provide separate arguments directed to the
remaining prior art rejections in the Appeal Brief which each include Park
and Fukui together with either Harutyunyan or Kishida and various
additional prior art references. Accordingly, to the extent Appellant’s
arguments over claim 1 are applicable, we affirm these rejections under 35
U.S.C. § 103 over Park, Harutyunyan, and Fukui for the same reasons
discussed above.

CONCLUSION
For the above reasons and those provided in the Final Office Action
and Examiner’s Answer, we uphold the Examiner’s decision to reject claims
1–9, 11, 12, 21, and 22.
Appeal 2021-000074
Application 15/316,536

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
21 112(b) Indefiniteness 21
22 112(b) Indefiniteness 22
1, 5, 8, 11,
12, 21 103
Park, Harutyunyan,
Fukui
1, 5, 8, 11,
12, 21
1, 3, 5, 8,
11, 12, 21,
22
103 Park, Kishida, Fukui
1, 3, 5, 8,
11, 12, 21,
22

2 103 Park, Harutyunyan, Fukui, White 2
2 103 Park, Kishida, Fukui, White 2
3 103 Park, Harutyunyan, Fukui, Mohamed 3
4, 9 103 Park, Harutyunyan, Fukui, Lee 4, 9
4, 9 103 Park, Kishida, Fukui, Lee 4, 9
6, 7 103 Park, Harutyunyan, Fukui, Ko 6, 7
6, 7 103 Park, Kishida, Fukui, Ko 6, 7
22 103 Park, Harutyunyan, Fukui, Irvin 22
Overall
Outcome
1–9, 11, 12,
21, 22

Appeal 2021-000074
Application 15/316,536

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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)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED