Ex Parte Kurozumi et al

Patent Trial and Appeal BoardMar 29, 2016

12675711 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/675,711 02/26/2010 23373 7590 03/31/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Tadatoshi Kurozumi 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Ql 17665 6155 EXAMINER MCDERMOTT, HELENM ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 03/31/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte T ADATOSHI KUROZUMI, TOSHIKAZU SHISHIKURA, and RYUJI MONDEN 1 Appeal2014-003390 Application 12/675,711 Technology Center 1700 Before MARK NAGUMO, KAREN M. HASTINGS, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1, 3-8, and 10-14 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. Â§ 6. We AFFIRM. 1 According to Appellants, the real party in interest is SHOW A DENKO K. K. Appeal Br. 2. Appeal2014-003390 Application 12/675,711 BACKGROUND Appellants' invention relates to "electrocatalyst layers containing an electrocatalyst with high oxygen reduction activity," and related membrane electrode assemblies and fuel cells. Spec. i-f 7. Claim 1, the sole independent claim, is representative: 1. An electrocatalyst layer comprising an electrocatalyst, the electrocatalyst comprising a metal oxide obtained by thermally decomposing a metal organic compound, wherein the metal element forming the metal organic compound is one selected from the group consisting of niobium, titanium, tantalum and zirconium and the electrocatalyst has an ionization potential in the range of 4.9 to 5.5 eV. Appeal Br. 10 (emphasis added). The Examiner rejects claims 1, 3-8, and 10-14 under 35 U.S.C. Â§ 102(b) as anticipated by US 2002/0107140 Al [hereinafter Hampden- Smith] (published August 8, 2002), or alternatively, under 35 U.S.C. Â§ 103(a) as obvious over Hampden-Smith. Final Action 3-5. Appellants argue claims 1, 3-8, and 10-14 as a group. See Appeal Br. 5-9. Therefore, consistent with the provisions of 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1. All the claims stand or fall together. DISCUSSION The Examiner finds that Hampden-Smith teaches each of the limitations of claim 1, including the use of either niobium, titanium, tantalum, or zirconium as the metal element, except that it is "silent as to the ionization potential of the electrocatalyst." Final Action 3. The Examiner also finds that "the electrocatalyst in Hampden-Smith is structurally identical 2 Appeal2014-003390 Application 12/675,711 to and formed by the identical process as the electrocatalyst of claim 1." Id. Therefore, the Examiner concludes that "a prima facie case of either anticipation or obviousness has been established." Id. (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977)). Appellants argue that in Hampden-Smith, none of the working examples employ any of Ni, Ti, Ta or Zr. Thus, it cannot be said that the electrocatalyst in Hampden-Smith is structurally identical to the claimed electrocatalyst since the law requires that all of the elements arranged or combined in the same way as recited in the claim, within the four comers of the document. Appeal Br. 6 (citing Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008)). Appellants also argue that "one skilled in the art would have to pick and choose from the list of listed suitable metal oxides and it is well established that such 'picking and choosing' has no place in a rejection under 35 U.S.C. Â§ 102." Id. Regarding the alternativeÂ§ 103 rejection, Appellants argue that the Examiner has not articulated a reason, or any "motivation or teaching to specifically choose one of Ni, Ti, Ta or Zr from the list of suitable metal oxides taught by the reference." Id. at 8 (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)). Hampden-Smith provides a list of metal elements that may be used in the metal oxide precursor. See Hampden-Smith i-f 209. This list includes niobium, titanium, tantalum, and zirconium, among 17 other elements. See id. The disclosure in Hampden-Smith is more than the description of a genus; it is the description of a number of specific embodiments, which includes the four metal elements of claim 1. That these metal elements were not also disclosed as part of Hampden-Smith's working examples does not negate the fact that the each of the elements was specifically disclosed. 3 Appeal2014-003390 Application 12/675,711 Therefore, there is no need for "picking and choosing" among metal elements in order for the Examiner to find that Hampden-Smith anticipates claim 12. Ans. 11, 12. Other than the ionization potential, which is discussed below, Appellants have not pointed to any limitation of claim 1 that is not specifically set forth within the four comers of Hampden-Smith. Nor have Appellants pointed to any rebuttal evidence sufficient to show that selecting one of the four chemical elements recited by claim 1 would have been nonobvious despite the specific mention of those elements in Hampden-Smith. Appellants also argue that "the Examiner has not provided a technical basis for asserting that the materials of the reference would inherently possess ... an ionization potential within the claimed range." Appeal Br. 7. Appellants argue that to establish inherency, "the evidence must make it clear that the characteristic or property is necessarily present in the prior art." Id. (citing MPEP Â§ 2112(IV)). Regarding the alternativeÂ§ 103 rejection, Appellants argue that not all of the listed suitable metal oxides have an ionization potential within the claimed range and there is no other teaching or suggestion within the reference that would lead one of ordinary skill in the art specifically to one of the claimed metal oxides amongst all listed metal oxides which do and do not have the required ionization potential as presently claimed. 2 It has been established that specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, to anticipate, one skilled in the art must be able to "at once envisage" the claimed subject matter in the prior art disclosure. In re Petering, 301F.2d676, 681(CCPA1962). One of ordinary skill would have immediately envisaged each metal element of Hamden-Smith's explicit list for use in its metal oxide precursor. 4 Appeal2014-003390 Application 12/675,711 Id. at 8-9. The Examiner's technical basis for asserting that the claimed electrocatalyst layer would have an ionization potential in the range of claim 1 is that "the electrocatalyst in Hampden-Smith is structurally identical to and formed by the identical process as the electrocatalyst of claim 1." Final Action 3. The finding of substantial identity with the prior art, either in terms of its structure or the process by which it is made, is sufficient to support the Examiner's prima facie determination of anticipation and obviousness. See In re Best, 562 F.2d 1252, 1255 (Fed. Cir. 1997) ("Where ... the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product."). Appellants have not directed our attention to any evidence that the Examiner materially erred in determining that when niobium, titanium, tantalum, or zirconium is selected, Hampden-Smith specifically describes substantially the same structure, and the substantially same process of production, as that defined by claim 1. Appellants have the burden to rebut the Examiner's prima facie case. However, Appellants have not pointed to any evidence sufficient to meet that burden. For example, Appellants have not shown that an electrocatalyst with the structure of that disclosed in Hampden-Smith, or made by the same process, will not necessarily have an ionization potential in the range of claim 1 when niobium, titanium, tantalum, or zirconium is selected as the metal element in the metal oxide precursor. 5 Appeal2014-003390 Application 12/675,711 For the above reasons, we affirm the Examiner's decision to reject claims 1, 3-8, and 10-14 as being anticipated under 35 U.S.C. Â§ 102(b) and as being obvious under 35 U.S.C. Â§ 103(a) in view of Hampden-Smith. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6