Ex Parte LIU et al

Patent Trial and Appeal Board

Oct 17, 2018

13444550 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/444,550 04/11/2012 Di-JiaLIU
27433 7590 10/19/2018
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
051583-0544 2058
EXAMINER
LI, TIJN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DI-JIA LIU and DAN ZHAO
Appeal2018-000263
Application 13/444,550
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREYR. SNAY, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to reject claims 1-13 and 21-28. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Appellants claim a method of synthesizing a non-platinum group
metal catalyst for use in an oxygen reduction reaction process. Claims 1 and
1 Appellants identify UChicago Argonne, LLC as the real party in interest.
Appeal Brief filed May 10, 2017 ("App. Br."), 2.
Appeal2018-000263
Application 13/444,550
21 illustrate the subject matter on appeal and are reproduced below with
contested language italicized:
1. A method of synthesis of a non-platinum group metal
(PGM) catalyst for use in an oxygen reduction reaction (ORR)
process, said method comprising the steps of
combining at least one organic ligand, a secondary
building unit, and at least one transition metal compound into a
solid mixture;
heating the solid mixture to a temperature and for a
duration sufficient to form a metal-organic framework (MOF)
through a solid-state reaction; and
forming MOP crystallites;
wherein the step of combining takes place in a single
vessel.
21. A method of synthesis of a non-platinum group metal
(PGM) catalyst for use in an oxygen reduction reaction (ORR)
process, said method comprising the steps of
combining at least one organic ligand, a secondary
building unit, and at least one transition metal compound into a
solid mixture substantially solvent-free;
continuously heating the solid mixture at a ramp rate;
during the continuous heating, prior to a carbonization
temperature, forming metal organic framework microcrystals;
holding the solid mixture at a dwell temperature above
the carbonization temperature for a dwell duration sufficient to
convert the organic ligand into a carbonaceous materialforming
a catalytic metal-organic framework (MOF) through a solid-
state reaction.
App. Br. 13, 15 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Non-
Final Office Action entered October 27, 2016 ("Office Act."), and
maintains the rejection in the Examiner's Answer entered August 7,
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Application 13/444,550
2017 ("Ans."): 2
I. Claims 21-27 under 35 U.S.C. § 112, second paragraph as
being indefinite;
II. Claims 21-25 under 35 U.S.C. § 102(a) an anticipated by, or
alternatively, under 35 U.S.C. § 103(a) as unpatentable over, Proietti, et al.,
Iron-based Cathode Catalyst with Enhanced Power Density in Polymer
Electrolyte Membrane Fuel Cells, Nature Communications 2:416 (2011)
(hereinafter "Proietti") as evidenced by Jaouen et al., Heat-Treated Fe/N/C
Catalysts for 02 Electro reduction: Are Active Sites Hosted in Micro pores?,
110 J. Phys. Chem. B 5553 (2006) (hereinafter "Jaouen");
III. Claims 1-8, 11, 13, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Proietti as evidenced by Jaouen;
IV. Claims 1-9, 11, and 13 under 35 U.S.C. § 103(a) as
unpatentable over Proietti as evidenced by Jaouen in view of Janiak et al.,
MOFs, M!Ls and More: Concepts, Properties and Applications for Porous
Coordination Networks (PCNs), 34 New Journal of Chemistry 2337 (2010)
(hereinafter "Janiak");
V. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Proietti
as evidenced by Jaouen in view of Janiak and Park et al., Exceptional
Chemical and Thermal stability of Zeolitic Imidazolate Frameworks, 103
PNAS 10196 (2006) (hereinafter "Park");
2 The Notice of Panel Decision from Pre-Brief Appeal Brief Review entered
March 10, 2017 indicates that the rejection of claims 1-12 and 21-28 under
35 U.S.C. § 112, second paragraph for recitation of "secondary building
unit" was withdrawn. We read this withdrawal as also applying to claim 13,
given that the§ 112 rejection of that claim was based solely on its
dependence from claim 1.
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Application 13/444,550
VI. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Proietti
as evidenced by Jaouen in view of Janiak, Park, and Lefevre et al. (US
2011/0294658 Al, published December 1, 2011) (hereinafter "Lefeyre");
VII. Claims 21-25 under 35 U.S.C. § 103(a) as unpatentable over
Proietti as evidenced by Jaouen in view of Janiak; and
VIII. Claims 26 and 27 under 35 U.S.C. § 103(a) as unpatentable
over Proietti as evidenced by Jaouen in view of Janiak and Lefevre.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we reverse the Examiner's rejection of
claims 21-25 under 35 U.S.C. § 102(a), and the rejections of claims 1-13
and 21-28 under 35 U.S.C. § 103(a), for the reasons set forth in the Appeal
Brief and below. We summarily affirm the Examiner's rejection of claims
21-27 under 35 U.S.C. § 112, second paragraph as being indefinite because
Appellants do not contest this rejection.
Rejection I
We summarily affirm the Examiner's rejection of claims 21-2 7 under
35 U.S.C. § 112, second paragraph as being indefinite for recitation of
"substantially solvent-free" because Appellants do not contest this rejection.
App. Br. 5-11; 37 C.F.R. § 4I.37(c)(l)(iv) (requiring that "arguments shall
explain why the examiner erred as to each ground of rejection ... [and that]
any arguments or authorities not included in the appeal brief will be refused
consideration by the Board"); see also Manual of Patent Examining
Procedure (MPEP) § 1205.02 (9th ed. Mar. 2014) ("If a ground of rejection
stated by the examiner is not addressed in the appellant's brief, appellant has
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Application 13/444,550
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner's answer.").
Rejections II-VIII
Claims 1 and 21 recite a method of synthesizing a non-platinum group
metal catalyst that comprises combining at least one organic ligand, a
secondary building unit, and at least one transition metal compound into a
solid mixture.
The Examiner finds that Proietti discloses a method of making a non-
platinum group metal catalyst by mixing iron (II) acetate (FeAc), 1,10-
phenanthroline (Phen) (an organic ligand), and a Zn(II) zeolitic imidazolate
framework (ZIF-8 or Z8), drying the mixture to form a powder, ball milling
the powder to form a catalyst precursor, and pyrolyzing the catalyst
precursor at high temperature (950QC or 1050QC) under an argon or ammonia
atmosphere. Office Act. 4.
The Examiner finds that the "instant disclosure's description defines
SBU ["secondary building unit"] contrary to its well-known meaning for one
of ordinary skill in the art, specifically, instant specification only requires a
transition metal compound being instantly claimed SBU." Ans. 14--15
( citing Spec. ,r,r 13, 17). The Examiner determines that, "based on such
description, one of ordinary skill in the art can reasonably broadly interpret
the instantly claimed SBU as any compound (including transition metal)
used for forming MOP." Ans. 15. The Examiner consequently finds that
the Zn(II) zeolitic imidazolate framework (ZIF-8 or Z8) and iron acetate
disclosed in Prioetti "both can read onto the instantly claimed SBU." Ans.
15.
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However, Appellants' Specification does not support the Examiner's
interpretation of the "secondary building unit" recited in claims 1 and 21.
Rather, the paragraphs of the Specification cited by the Examiner indicate
that a transition metal compound can serve as a secondary building unit.
Spec. ,r,r 13, 17. The Specification further explains that the secondary
building unit "serves as the node in the construction of the [metal-organic]
framework" and an organic ligand "serves as the linker connecting the node
in the MOF."3 Spec. ,r 53.
Therefore, although the Examiner interprets the phrase "secondary
building unit" as any compound used for forming a metal-organic
framework, Appellants' Specification makes clear that a "secondary building
unit" serves as a node or connecting point to which organic ligands are
linked in the construction of a metal-organic framework. The Specification
thus distinguishes a secondary building unit from an organic ligand, both of
which form a metal-organic framework. The Examiner's interpretation of
"secondary building unit" as any compound used for forming a metal-
organic framework is inconsistent with this description provided in
Appellants' Specification, and is therefore unduly broad. In re Morris, 127
3 As Appellants correctly argue, the description of a "secondary building
unit" in Appellants' Specification is consistent with how this phrase is used
in the art. App. Br. 6; Reply Br. 8-9 (citing Eddaoudi, et al., Modular
Chemistry: Secondary Building Units as a Basis for the Design of Highly
Porous and Robust Metal-Organic Carboxylate Frameworks, 34 Acc.
Chem. Res. 319, Abstract (2001) ( stating that "[ s ]econdary building units
(SBU s) are molecular complexes and cluster entities in which ligand
coordination modes and metal coordination environments can be utilized in
the transformation of these fragments into extended porous networks using
polytopic linkers ... ").
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Application 13/444,550
F.3d 1048, 1054--55 (Fed. Cir. 1997) ("While the Board nmst give the terms
their broadest reasonable construction, the construction cannot be divorced
from the specification and the record evidence."); In re Smith Int'!, Inc., 871
F.3d 1375, 1382-83 (Fed. Cir. 2017) ("The correct inquiry in giving a claim
term its broadest reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an interpretation
that is not inconsistent with the specification. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is 'consistent with the
specification."' (quoting Morris, 127 F.3d at 1054)).
As Appellants correctly argue (App. Br. 6-7), the Zn(II) zeolitic
imidazolate framework (ZIF-8 or Z8) disclosed in Proietti does not
reasonably correspond to a "secondary building unit" as recited in claims 1
and 21 because ZIF8 is itself a metal-organic framework, and the Examiner
does not provide a sufficient factual basis to establish that ZIF8 serves as a
node that links 1,10-phenanthroline (an organic ligand) to construct a metal-
organic framework.
Moreover, although the Examiner asserts that the iron acetate
disclosed in Proietti also "reads on" the "secondary building unit" recited in
claims 1 and 21, the Examiner does not provide a sufficient factual basis to
establish that the iron acetate disclosed in Proietti serves as a node that links
1, 10-phenanthroline ( an organic ligand) to construct a metal-organic
framework, particularly in view of Proietti' s disclosure of mixing iron
acetate with an existing, fully formed metal-organic framework (ZIF8), and
disclosure that the electrocatalyst described in the reference is an "iron-
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based catalyst," which one of ordinary skill in the art would have understood
to indicate that iron is the catalytic moiety of the electrocatalyst.
Accordingly, the Examiner does not establish that Proietti discloses
combining at least one organic ligand, a secondary building unit, and at least
one transition metal compound into a solid mixture from which a metal-
organic framework is formed, as required by claims 1 and 21. It follows that
the Examiner does not show that Proietti alone, or in combination with the
remaining applied prior art references, discloses, or would have suggested,
the method for synthesizing a non-platinum group metal catalyst recited in
claims 1 and 21.
We accordingly do not sustain the Examiner's rejections of claims 1-
13 and 21-28 under 35 U.S.C. § 103(a), and rejection of claims 21-25 under
35 U.S.C. § 102(a).
DECISION
We affirm the Examiner's rejection of claims 21-27 under 35 U.S.C.
§ 112, second paragraph, and reverse the Examiner's rejection of claims 21-
25 under 35 U.S.C. § 102(a) and rejections of claims 1-13 and 21-28 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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