Ex Parte NAKADA et al

Patent Trials and Appeals BoardJan 30, 2019

13591568 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/591,568 08/22/2012 Satoshi NAKADA 66143 7590 01/30/2019 Capitol City TechLaw, PLLC 1602 Belle View Blvd. PMB 530 Alexandria, VA 22307 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. 079-0005R 4969 EXAMINER AUER, LAURA A ART UNIT PAPER NUMBER 1783 MAIL DATE DELIVERY MODE 01/30/2019 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 SATOSHI NAKADA and MASAYUKI SUGAWARA Appeal2018-002731 Application 13/591,568 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1, 2, and 12. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed August 22, 2012 ("Spec."), the Final Office Action dated April 26, 2017 ("Final Act."), the Advisory Action dated July 12, 2017 ("Adv. Act."), the Appeal Brief filed September 25, 2017 ("Appeal Br."), the Examiner's Answer dated November 20, 2017 ("Ans."), and the Reply Brief filed January 14, 2018 ("Reply Br."). 2 Appellants identify the real party in interest as Honda Motor Co., Ltd. Appeal Br. 3. 3 Claims 4, 6, 7, and 10 are withdrawn from consideration by the Examiner as directed to a non-elected invention. Appeal2018-002731 Application 13/591,568 The subject matter of the appealed claims relates to a composite oxide film. Spec. ,r 2. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief with emphasis added to highlight the key disputed limitation, is illustrative of the claims on appeal. 1. A composite oxide film comprising a composite oxide represented by the composition formula of AxB601.sx+12 (6 :S X :S 30) containing a trivalent element A, a tetravalent element B, and an oxygen 0, wherein the composite oxide film is directly formed on a substrate, the composite oxide comprises an apatite-type compound in the form of a polycrystal and a c-axis of each crystal grain in the polycrystal is parallel to a thickness direction of the composite oxide film, the composite oxide film having a thickness of 50 to 500 nm, and the substrate is a Si(l 00) substrate. Appeal Br. 11 (Claims App.) ( emphasis added). DISCUSSION The Examiner maintains the rejection of claims 1, 2, and 12 under pre-AIA 35 U.S.C. Â§ I03(a) as unpatenable over Higuchi et al. (US 2010/0285391 Al, published November 11, 2010) ("Higuchi") in view of Huang et al. (US 2009/0087712 Al, published April 2, 2009) ("Huang"). Final Act. 2; Ans. 3. After review of the cited evidence in light of the Appellants' and the Examiner's opposing positions, we determine that Appellants have not identified reversible error in the Examiner's rejection. Accordingly, we 2 Appeal2018-002731 Application 13/591,568 affirm the rejection for the reasons set forth below, in the Final Office Action, and in the Examiner's Answer. Appellants argue the claims subject to the rejection together. We thus select claim 1 as representative, and dependent claim 2, and independent claim 12 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds, and Appellants do not dispute, that Higuchi discloses an electrolyte-electrode assembly for a fuel cell having all the limitations of claim 1 's composite oxide film except for "the composite oxide film is directly formed on a silicon substrate." Compare Final Act. 2- 3 (citing Higuchi ,r,r 34, 77, 79, 81, 82, 142), with Appeal Br. 6-10. The Examiner finds that Huang discloses an electrolyte-electrode assembly for a fuel cell that includes a silicon (100) wafer substrate. Final Act. 3 (citing Huang, Abstract, claim 5); Adv. Act. 2 (citing Huang ,r,r 9, 44, claim 1 ). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to use a silicon (100) wafer, as disclosed in Huang, as the substrate in Higuchi's electrolyte- electrode assembly because a silicon (100) wafer is a known substrate suitable for use in fuel cell electrolyte-electrode assemblies, as taught by Huang, and to provide for a high surface area density to increase the absolute electrochemically active area. Final Act. 3 ( citing Huang ,r 8). Appellants contend that Huang's electrolyte-electrode assembly requires a silicon nitride mask between the substrate and the electrolyte layer. Appeal Br. 8-10. Thus, Appellants argue that Huang fails to disclose an electrolyte layer "directly formed on" the substrate surface. Id. at 6. 3 Appeal2018-002731 Application 13/591,568 Appellants' argument is not persuasive of reversible error. Although Appellants are correct that Huang discloses an electrolyte-electrode assembly that includes an intervening silicon nitride mask between the substrate and the electrolyte layer, Huang also discloses an electrolyte- electrode assembly where its electrolyte layer is directly formed on the substrate. Huang ,r,r 9, 25, 44, claims 1, 5, 20. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,750 (CCPA 1976) ("' [T]he fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered."'). Accordingly, we sustain the rejection of claims 1, 2, and 12. DECISION The rejection of claims 1, 2, and 12 under pre-AIA 35 U.S.C. Â§ 103(a) over Higuchi and Huang 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). AFFIRMED 4