Ex Parte Cai et al

Patent Trial and Appeal Board

Jan 30, 2017

12116388 (P.T.A.B. Jan. 30, 2017)

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.
12/116,388 05/07/2008 Mei Cai GP-309249-RD-JMC 6988
104102 7590 01/30/2017
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
BARCENA, CARLOS
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
01/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
——————
BEFORE THE PATENT TRIAL AND APPEAL BOARD
——————
Ex parte MEI CAI, SURESH K. DONTHU,
MARTIN S. RUTHKOSKY, and ION C. HALALAY
——————
Appeal 2015-007587
Application 12/116,3881
Technology Center 1700
——————
Before MARK NAGUMO, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1–5 and 13–15 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellants identify General Motors LLC as the real party in interest.
Appeal Br. 4, Mar. 9, 2015.
2 Office Action, Sept. 10, 2014 [hereinafter Action]; Examiner’s Answer,
June 17, 2015 [hereinafter Answer].
Appeal 2015-007587
Application 12/116,388
2
BACKGROUND
Appellants’ invention relates to “catalyst support materials for use in
electrodes of polymer electrolyte membrane (PEM) fuel cells.” Spec. ¶ 2.
Claim 1 is the sole independent claim on appeal:
1. A method comprising:
forming a dispersion of a carbonizable polymer, a
surfactant, and titanium alkoxide in a liquid medium, the
proportions of carbonizable polymer and titanium alkoxide
being determined to provide a desired carbon to titanium ratio
in the carbon and titanium oxide containing particles;
evaporating the liquid medium to leave a material
characterized by inter-dispersed clusters of carbon based
polymer, surfactant, and titanium oxide;
heating the material to progressively decompose and
volatilize the surfactant and alkoxide residue;
further heating the material to carbonize the carbonizable
polymer, and to yield a porous composite comprising inter-
dispersed carbon and titanium oxide, processing the composites
to produce catalyst support particles comprising inter-dispersed
carbon and titanium oxide and depositing platinum on the
catalyst support particles.
Appeal Br. 49 (emphasis added).
Appeal 2015-007587
Application 12/116,388
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The Examiner maintains the following grounds of rejection:
I. Claims 1–5, 13, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsuo3 in view of Choi 2004,4 Choi 2006,5 and
Fung.6 See Action 2–5.
II. Claims 1–5, 13, and 15 are alternatively rejected under
35 U.S.C. § 103(a) as being unpatentable over Matsuo in view of Soler-Illia7
and Fung. See Action 5–7.
III. Claim 14 is rejected on ground of nonstatutory double patenting
as being unpatentable over claim 1 of Cai.8 See Action 8.
DISCUSSION
The Examiner’s rejections of claim 1 rely on Matsuo as teaching a
process that leads to the production of catalyst support particles comprising
TiO2. See Action 3, 5. Although Matsuo does not disclose the use of a
surfactant in forming the dispersion according to the first step of claim 1, the

3 Matsuo, Patent Application No. JP 2004115352 A (published Apr. 15,
2004). All citations are to an English machine translation provided by the
Examiner, dated Mar. 27, 2010.
4 Hyeok Choi & Dionysios D. Dionysiou, Preparation of Anatase
Nanostructured TiO2 Particles Using Surfactant-Assisted Sol–Gel Method,
ABSTRACTS OF PAPERS, 228TH ACS NAT’L MEETING (2004).
5 Hyeok Choi et al., Synthesis of Nanocrystalline Photocatalytic TiO2 Thin
Films and Particles Using Sol–Gel Method Modified with Nonionic
Surfactants, 510 THIN SOLID FILMS 107 (2006).
6 Fung et al., Patent No. US 3,964,933 (issued June 22, 1976).
7 Galo J. de A. A. Soler-Illia & Clément Sanchez, Interactions Between
Poly(ethylene oxide)-Based Surfactants and Transition Metal Alkoxides:
Their Role in the Templated Construction of Mesostructured Hybrid
Organic–Inorganic Composites, 24 NEW J. CHEMISTRY 493 (2000).
8 Cai et al., Patent No. US 8,524,415 B2 (issued Sept. 3, 2013).
Appeal 2015-007587
Application 12/116,388
4
Examiner finds that the Choi references and Soler-Illia both teach that
surfactants may be used to facilitate the formation of pore structures in
alkoxide gels. See Action 3, 5. Thus, the Examiner concludes that it would
have been obvious to modify the method of Matsuo by using a surfactant as
in either the Choi references or Soler-Illia, in order to improve the pore
structure and stability. See id. at 3, 6.
Appellants argue that it would not have been obvious to use a
surfactant in the process disclosed by Matsuo because Matsuo teaches a
mechanism of pore creation that reduces TiO2 to Ti metal. In light of this,
Appellants argue that it would not have been obvious to use a surfactant in
the dispersion to enhance the creation of pores in the TiO2 material, only to
have that enhanced pore structure destroyed when the Matsuo method
purportedly consumes the TiO2. See Appeal Br. 30–33.
The “Examiner agrees with Appellant that it would not make sense to
create a better structural titanium oxide (per Choi and Soler-Illia) only to
have the oxide destroyed in Matsuo.” Answer 8. However, the Examiner
finds that Matsuo is incorrect as to the mechanism by which pores are
formed in Matsuo’s invention. See Answer 6. According to Matsuo, when
the temperature rises above about 600 °C, the TiO2 emits oxygen with “very
high” efficiency, and this oxygen etches the already carbonized resole resin,
producing pores and increasing the specific surface area. See Matsuo ¶¶ 11,
23. However, the Examiner cites Kominami9 as evidence that this
mechanism is incorrect. See Answer 6. According to the Examiner,

9 Hiroshi Kominami et al., Hydrolysis of Titanium Alkoxide in Organic
Solvent at High Temperatures: A New Synthetic Method for Nanosized,
Thermally Stable Titanium(IV) Oxide, 38 INDUS. & ENGINEERING CHEMISTRY
RES. 3925 (1999).
Appeal 2015-007587
Application 12/116,388
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Kominami “teaches hydrolysis of titanium alkoxide (the same basic
chemistry as in Matsuo) yields nanosized, thermally stable titanium oxide,”
and shows that this oxide is stable up to 1000 °C. See id. at 6–7 (citing
Kominami 3928, fig. 4). According to the Examiner, these results would
have been impossible if TiO2 were emitting oxygen at temperatures above
600 °C. See id. at 7.
By a preponderance of the evidence on this record, the Examiner has
not established a prima facie case of obviousness. Appellants suggest, see
Reply Br. 6, that the Examiner has not shown that a person having ordinary
skill in the art would have recognized, based on Kominami, that Matsuo
mischaracterizes the product and its formation. Matsuo, without regard to its
technical accuracy, is prior art for all it teaches. Cf. Beckman Instruments v.
LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Although
Kominami describes conditions in which TiO2 remains stable up to 1000 °C,
see Kominami 3929, the Examiner has not shown that the stability of
titanium oxide up to 1000 °C under the conditions described by Kominami
would have indicated to a person of ordinary skill in the art that Matsuo’s
mechanism was wrong, and that the TiO2 remains intact. Without such
recognition, there would have been no reason for a skilled artisan to
introduce surfactants to increase the surface area of TiO2, as taught by Choi
or Soller-Illia.
For the above reasons, the Examiner reversibly erred in rejecting
claim 1. Because the rejections of dependent claims 2–5, 13, and 15 do not
cure this error, we reverse the Examiner’s decision to reject claims 1–5, 13,
and 15.
Appeal 2015-007587
Application 12/116,388
6
Appellants present no argument that the Examiner erred in rejecting
claim 14 on grounds of obviousness-type double patenting over Patent No.
US 8,524,415 B2. See Appeal Br. 5–6. Therefore, we summarily affirm the
Examiner’s decision to reject claim 14. See Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir. 2008) (holding that the Board need not consider the merits of
an uncontested ground of rejection).
DECISION
The Examiner’s decision to reject claims 1–5, 13, and 15 under
35 U.S.C. § 103(a) is reversed.
The Examiner’s decision to reject claim 14 on the ground of
nonstatutory double patenting is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv) (2016).
AFFIRMED-IN-PART