Ex Parte Morimitsu

Patent Trial and Appeal BoardJan 9, 2019

14007488 (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/007,488 10/11/2013 Masatsugu Morimitsu 22850 7590 01/11/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 420899US99PCT 1022 EXAMINER JAIN, SAUL ART UNIT PAPER NUMBER 1795 NOTIFICATION DATE DELIVERY MODE 01/11/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASATSUGU MORIMITSU Appeal2018-002484 Application 14/007,488 Technology Center 1700 Before BRADLEY R. GARRIS, TERRY J. OWENS, and JANEE. INGLESE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (The Doshisha) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 2, 4, 9, 11, 21, 22, 26, and 3 6. We have jurisdiction under 35 U.S.C. Â§ 6(b ). The Invention The claims are to an anode and a method for electrowinning using the anode. Claim 1 is illustrative: 1. An anode comprising: a conductive substrate, and a catalytic layer comprising amorphous ruthenium oxide and amorphous tantalum oxide disposed on the conductive substrate. Appeal2018-002484 Application 14/007,488 Morimitsu The References US 2011/0079518 Al Apr. 7, 2011 Josimar Ribeiro & Adalgisa R. De Andrade, Characterization of Ru02- Ta20s Coated Titanium Electrode Microstructure, Morphology, and Electrochemical Investigation, 151 J. Electrochem. Soc. DI06-Dl 12 (2004) (hereinafter Ribeiro). The Rejections The claims stand rejected under 35 U.S.C. Â§ I03(a) as follows: claims 1, 2, 9, 21, 22, 26, and 3 6 over Morimitsu, and claims 4 and 11 over Morimitsu in view of Ribeiro. OPINION We affirm the rejections. The Appellant argues the claims in the following groups: 1) claims 1, 9, 21, 22, and 26, 2) claim 2, 3) claims 4 and 11, and 4) claim 36 (Reply Br. 1-7). We therefore limit our discussion to one claim in each of the first and third groups, i.e., claims 1 and 4, and claims 2 and 36. Claims 9, 21, 22, and 26 stand or fall with claim 1, and claim 11 stands or falls with claim 4. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2012). Claim 1 Morimitsu discloses 1) a cobalt electrowinning anode having on a conductive substrate a catalytic layer containing amorphous iridium oxide and amorphous tantalum oxide, the functions of the amorphous tantalum oxide including promoting amorphization of the iridium oxide, inhibiting iridium oxide wearing and peeling from the conductive substrate, thereby preventing embrittlement of the catalytic layer, and binding to enhance compactibility of the catalytic layer, thereby reducing overpotential for 2 Appeal2018-002484 Application 14/007,488 oxygen evolution while enhancing durability (i1i1 32, 45), and 2) a cobalt electrowinning anode having on a conductive substrate a catalytic layer containing amorphous ruthenium oxide and titanium oxide, the functions of the titanium oxide including promoting amorphization of ruthenium oxide and binding to inhibit the catalytic layer from wearing, peeling, flaking, and cracking, thereby reducing overpotential for chlorine evolution while enhancing durability (i1i132, 46). The Examiner concludes that because amorphous iridium oxide and amorphous ruthenium oxide are noble metal oxides and the effects of Morimitsu's amorphous tantalum oxide on the amorphous iridium oxide are similar to the effects of Morimitsu's titanium oxide on the amorphous ruthenium oxide, it would have been prima facie obvious to one of ordinary skill in the art to substitute amorphous tantalum oxide for the titanium oxide in Morimitsu's catalytic layer containing amorphous ruthenium oxide (Ans. 4). The Appellant asserts that "Morimitsu clearly teaches that the catalytic layer comprising amorphous iridium oxide should be combined with tantalum oxide, while the catalytic layer comprising amorphous ruthenium oxide should be combined with titanium oxide" (Reply Br. 4). Morimitsu discloses a combination of amorphous iridium oxide and amorphous tantalum oxide and a combination of amorphous ruthenium oxide and titanium oxide, but does not disclose that the amorphous iridium oxide and amorphous ruthenium oxide should be used in those combinations (i1i1 45, 46). The Appellant asserts that "Morimitsu does not teach or suggest that the use of amorphous tantalum oxide with amorphous ruthenium oxide 3 Appeal2018-002484 Application 14/007,488 would have the same or similar effect, and only teaches the use of tantalum oxide with amorphous iridium oxide" (Reply Br. 4). The Examiner finds that because amorphous iridium oxide and amorphous ruthenium oxide are noble metal oxides, one of ordinary skill in the art would have expected the effect of amorphous tantalum oxide on amorphous ruthenium oxide to be similar to its effect on amorphous iridium oxide (Ans. 4). Because that finding is reasonable and the Appellant has not specifically challenged it, we accept it as fact. See In re Kunzmann, 326 F.2d 424,425 n.3 (CCPA 1964). The Appellant argues that a comparison of the Appellant's Specification's Example 1 and 2 and Comparative Example 2 shows an unexpected decrease in electrolytic voltage when a catalytic layer contains amorphous ruthenium oxide and amorphous tantalum oxide instead of amorphous iridium oxide and amorphous tantalum oxide (Reply Br. 5-6). We have begun anew and determined that for the following reasons the totality of the evidence supports a conclusion of obviousness of the Appellant's claimed anode. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). First, it is not enough for the Appellant to show that the results for the Appellant's anode and the comparative examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 4 7 4 F .2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The Appellant does not provide evidence that the results would have been unexpected by one of ordinary skill in the art but, rather, merely provides attorney argument, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re 4 Appeal2018-002484 Application 14/007,488 Payne, 606 F.2d 303,315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Second, the evidence is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The comparison uses only a ruthenium:tantalum molar ratio of 30:70 and a total amount of ruthenium and tantalum of 50 g/L (Spec. ,r 33), but claim 1 encompasses any ruthenium:tantalum molar ratio and any total amount of ruthenium and tantalum. We find in the evidence of record no reasonable basis for concluding that the ruthenium:tantalum molar ratio and total amount of ruthenium and tantalum in Example 1 provide results representative of results which would be obtained using the full range of ruthenium:tantalum molar ratios and total amounts of ruthenium and tantalum encompassed by the claim. See In re Lindner, 457 F .2d 506, 508 (CCP A 1972); In re Susi, 440 F.2d 442, 445--46 (CCPA 1971). Third, the cause-and-effect relationship between use of amorphous ruthenium oxide and amorphous tantalum oxide versus use of amorphous iridium oxide and amorphous tantalum oxide is lost in multiple unfixed variables. See In re Heyna, 360 F.2d 222,228 (CCPA 1966); In re Dunn, 349 F.2d 433, 439 (CCPA 1965). Examples 1 and 2 and Comparative Example 2 differ not only in amorphous ruthenium oxide and amorphous tantalum oxide being used in Examples 1 and 2 versus amorphous iridium oxide and amorphous tantalum oxide being used in Comparative Example 2, but also differ in that in Examples 1 and 2 the ruthenium:tantalum molar ratio is 30:70 and the total amount of ruthenium and tantalum is 50 g/L, 5 Appeal2018-002484 Application 14/007,488 whereas in Comparative Example 2 the iridium:tantalum molar ratio is 80:20 and the total amount of iridium and tantalum is 70 g/L (Spec. ,r,r 33, 40). Claims 2 and 4 The Appellant asserts that the anode suitability in claim 2 and the 30:70 molar ratio of ruthenium to tantalum in claim 4 are "representative of specific Examples (i.e. Examples 1-6) in the specification, which unquestionably show unexpected results compared to the cited references (Comparative Examples 1-6)" (Reply Br. 7-8). The Appellant does not provide a substantive argument in support of that assertion. Claim 36 The Appellant asserts that "[b ]y requiring that the catalytic layer consists of amorphous ruthenium oxide and amorphous tantalum oxide, the catalytic layer of Claim 3 6 excludes the essential components of the catalytic layers of Morimitsu" (Reply Br. 7). As indicated above regarding the rejection of claim 1, Morimitsu would have suggested a catalytic layer containing amorphous ruthenium oxide and amorphous tantalum oxide. The Appellant does not identify any other catalytic layer component Morimitsu discloses as being essential. For the above reasons we are not persuaded of reversible error in the rejections. DECISION The rejections under 35 U.S.C. Â§ 103(a) of claims 1, 2, 9, 21, 22, 26, and 36 over Morimitsu and claims 4 and 11 over Morimitsu in view of Ribeiro are affirmed. The Examiner's decision is affirmed. 6 Appeal2018-002484 Application 14/007,488 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). AFFIRMED 7