Covestro Deutschland AG

Patent Trials and Appeals BoardDec 16, 2021

2021000388 (P.T.A.B. Dec. 16, 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. 15/510,259 03/10/2017 Andreas BULAN 074023-0735-US-556850 1042 123223 7590 12/16/2021 Faegre Drinker Biddle & Reath LLP (WM) Attn: Intellectual Property Group One Logan Square, Suite 2000 Philadelphia, PA 19103-6996 EXAMINER OHARA, BRIAN R ART UNIT PAPER NUMBER 1724 NOTIFICATION DATE DELIVERY MODE 12/16/2021 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): DBRIPDocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREAS BULAN and JÜRGEN KINTRUP Appeal 2021-000388 Application 15/510,259 Technology Center 1700 Before TERRY J. OWENS, N. WHITNEY WILSON, and SHELDON M. McGEE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s September 26, 2019 decision to finally reject claims 22 and 24–32 (“Final Act.”). 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 Covestro Deutschland AG (Appeal Br. 2). Appeal 2021-000388 Application 15/510,259 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is, in part, directed to a process for producing a gas diffusion electrode for the reduction of oxygen (Abstract). The method produces a gas diffusion electrode with a sheet-like electrically conductive support element and a gas diffusion layer formed from a mixture of carbon nanotubes and fluoropolymer (Appeal Br. 3). Appellant states that use of the claimed process provides electrodes having good long-term stability (Appeal Br. 4). Claim 22, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 22. A process for producing a gas diffusion electrode for the reduction of oxygen, where the gas diffusion electrode has at least one sheet-like electrically conductive support element and a gas diffusion layer applied to the support element and an electrocatalyst, wherein the gas diffusion layer is formed by a mixture of carbon nanotubes and a fluoropolymer, and wherein a mixture of carbon nanotubes and fluoropolymer is applied in powder form to the support element and compacted, with the carbon nanotubes forming the electrocatalyst, wherein a proportion of nitrogen chemically bound to the carbon nanotubes is less than 0.5% by weight and wherein the carbon nanotubes are in form of an agglomerate, where at least 95% by volume of the agglomerate particles have an external diameter in the range from 30 μm to 5000 μm. Appeal 2021-000388 Application 15/510,259 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bulan US 2006/0263232 A1 November 23, 2006 Hocke et al. US 2012/0149824 A1 June 14, 2012 Thomas (“AFC Energy”) GB 2487836 A August 8, 2012 REJECTION Claims 22 and 24–32 are rejected under 35 U.S.C. § 103 as unpatentable over AFC Energy in view of Bulan and Hocke. OPINION The Examiner finds that AFC Energy discloses a process for producing a gas diffusion electrode for the reduction of oxygen, where the gas diffusion electrode has at least one sheet like electrically conductive support element (Final Act. 2–3, citing AFC Energy, Figures 1-4, #11; p. 2, lines 4-8; p. 3, lines 27–36; p. 4 lines 1–16; p. 7, lines 5–11, figures 1-4 #16 and 18). The Examiner further finds that AFC Energy’s electrode has a gas diffusion layer formed by a mixture of carbon nanotubes and fluoropolymer, and this layer is applied to the support element and compacted (Final Act. 3, citing AFC Energy, p. 4 lines 1–16; p. 5, lines 37–38; p. 6, lines 19, 34; p. 7 lines 5–11). The Examiner finds that AFC Energy does not disclose that the portion of nitrogen chemically bonded to the carbon nanotubes is less than 0.5% by weight because it does not disclose any nitrogen constituents. The Examiner also finds that AFC Energy does not disclose that the carbon nanotubes and the fluoropolymer are applied on powder form to the Appeal 2021-000388 Application 15/510,259 4 supporting element, but relies on Bulan as teaching this step (Final Act. 3– 4). Finally, the Examiner finds that AFC Energy as modified by Bulan is silent as to whether the carbon nanotubes are in the form of an agglomerate, wherein at least 95 percent by volume of the agglomeration particles have an external diameter in the range from 30 microns to 5000 microns. The Examiner finds that Hocke teaches carbon nanotubes meeting these requirements, and determines that using them in AFC Energy’s system would have been obvious because Hocke teaches that they have increased efficiency (Final Act. 4–5, citing Hocke, ¶ 20). Appellant does not make separate arguments in support of any one claim. Accordingly, we select claim 22 as representative and decide the appeal based on that claim. 37 C.F.R. § 41.37(c)(1)(iv). We have reviewed the evidence and arguments set forth in the Appeal Brief2, the Final Action, and the Examiner’s Answer, and determine that Appellant has not demonstrated reversible error in the rejection, essentially for the reasons set forth by the Examiner. We add the following for emphasis. Appellant first suggests that because AFC Energy does not disclose any nitrogen constituents in connection with the carbon nanotubes, it would not have been obvious to use carbon nanotubes having a proportion of nitrogen chemically bound to the carbon nanotubes is less than 0.5% by weight (Appeal Br. 6). This argument is not persuasive. As both Appellant and the Examiner agree, AFC Energy is silent as to any nitrogen being 2 Appellant does not appear to have filed a Reply Brief. Appeal 2021-000388 Application 15/510,259 5 chemically bound to the carbon nanotubes (id.). Appellant has not provided any technical reasoning or explanation why a person of ordinary skill in the art would have understood AFC Energy’s carbon nanotubes to have more than 0.5% by weight of nitrogen chemically bound thereto, nor disputed the Examiner’s finding that AFC Energy suggests the use of a carbon-only material (Ans. 13). Accordingly, AFC Energy’s disclosure of carbon nanotubes would have suggested carbon nanotubes meeting the limitation of no more than 0.5% nitrogen. Next, Appellant contends that, for reasons set forth at pages 6–7 of the Appeal Brief, “the skilled artisan reviewing AFC Energy will not identify [its] ‘carbon nanotubes’ [] as a reliable electrocatalyst to be used according to the teaching of Bulan” and that, therefore, a person of skill in the art would not have “use[d] the process of Bulan for the production of electrodes for the reduction of oxygen according to AFC Energy” (Appeal Br. 7). Appellant makes the same argument as to why a person of skill in the art would not have combined the teachings of Hocke with those of AFC Energy and Bulan (id.). These arguments are not persuasive. As explained by the Examiner (Ans. 10–11), AFC Energy discloses the use of carbon nanotubes with a fluoropolymer. Bulan is simply relied on as supporting the Examiner’s finding that use of those materials in powder form was known to simplify the manufacturing process for multilayered electrodes (Ans. 10). This is the Examiner’s rationale for why a person of skill in the art would have used powders in preparing AFC Energy’s electrodes. Appellant does not challenge this finding, and therefore does not show error in it. Similarly, Appellant does not challenge or show error in Appeal 2021-000388 Application 15/510,259 6 the Examiner’s explanation of why a person of skill in the art would have used Hocke’s agglomerated carbon nanotubes in AFC Energy’s electrodes. Appellant also argues that they have shown that the claimed invention provides unexpectedly advantageous properties as compared to the prior art. It is well settled that Appellant has the burden of showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by the claim on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied upon by Appellant must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). In this instance, Appellant points to data in the Specification which is said to show that the claimed process produces electrodes having long-term stability compared to a process which uses carbon nanotubes which do not meet the limitations of claim 22 (Appeal Br. 8). Appellant’s argument is not persuasive at least because, as explained by the Examiner, while Appellant demonstrates good results achieved by using 0.18 and 0.15 weight percent nitrogen in Examples 1 and 3, comparative Example 3 contains 5.1 wt% nitrogen, which is more than 10 times higher than the claimed limit of 0.5 wt% nitrogen (see Spec. 12–13). Thus, Appellant has not demonstrated the criticality of the claimed range of nitrogen in the carbon nanotubes. Accordingly, we affirm the rejection. Appeal 2021-000388 Application 15/510,259 7 CONCLUSION The Examiner’s rejection is affirmed. More specifically, DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 22, 24–32 103 AFC Energy, Bulan, Hocke 22, 24–32 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