ZEON CORPORATIONDownload PDFPatent Trials and Appeals BoardDec 2, 20212021000074 (P.T.A.B. Dec. 2, 2021) Copy Citation 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. Appeal 2021-000074 Application 15/316,536 2 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 Appeal 2021-000074 Application 15/316,536 3 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 Appeal 2021-000074 Application 15/316,536 4 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 Appeal 2021-000074 Application 15/316,536 5 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, Appeal 2021-000074 Application 15/316,536 6 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 7 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 8 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 Copy with citationCopy as parenthetical citation