Ex Parte Cai et alDownload PDFPatent Trial and Appeal BoardJan 30, 201712116388 (P.T.A.B. Jan. 30, 2017) 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. 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 3 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 5 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 Copy with citationCopy as parenthetical citation