Ex Parte Urgeghe et al

Patent Trial and Appeal Board

Mar 30, 2018

13877942 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/877,942 04/05/2013 Christian Urgeghe
20311 7590 04/03/2018
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
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.
267-154 6935
EXAMINER
KEELING, ALEXANDER W
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN URGEGHE,
CHIARA PEZZONI,
and ANTONIO LORENZO ANTOZZI
Appeal2017-007837
Application 13/877 ,942
Technology Center 1700
Before MICHAEL P. COLAIANNI, RAEL YNN P. GUEST, and
GEORGE C. BEST, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the non-final rejections of
claims 1-6 and 10.2 Claims 7-9, the other claims pending in this
application, stand withdrawn from consideration by the Examiner. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as "INDUSTRIE DE NORA
S.P.A." (Br. 2).
2 The Examiner stated that claims 1-6, 9, and 10 are rejected and pending
(Non-Final Act. 1, 2 (Mar. 9, 2016)). The Examiner, however,
acknowledged that "[ c ]laims 7-9 have been withdrawn as non-elected"
Appeal2017-007837
Application 13/877,942
Appellants' invention is directed to an electrode suitable for use as an
anode for chlorine evolution in chlor-alkali cells (Spec. 1 ).
Claim 1 is illustrative (emphasis added):
1. Electrode for evolution of gaseous products in
electrolytic cells consisting of a metal substrate coated with at
least one first catalytic composition and at least a second
catalytic composition, said first catalytic composition
comprising a mixture of oxides of iridium, of ruthenium and of
at least one valve metal and being free of tin, said second
catalytic composition comprising a mixture of oxides of iridium,
of ruthenium, of tin, and at least one noble metal, said first and
second catalytic composition applied in a plurality of
alternating layers,
wherein
the innermost of said alternating layers corresponds to
said first catalytic composition,
and
the electrode reduces chlorine overvoltage without
reduction in oxygen overvoltage.
Br. 11 (Claims App.).
Appellants appeal the following rejections:
1. Claims 1-3, 5, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cairns et al. (EP 0479423 Al, published Apr. 8,
1992, "Cairns") in view of Carlson et al. (EP 437178 Al, published
July 1 7, 1991, "Carlson") and further in view of Ohe et al. (EP
0153586 Al, published Sept. 4, 1985, "Ohe").
(Non-Final Act. 8 (May 27, 2015)). Therefore, we view the Examiner's
inclusion of claim 9 in the list of rejected claims as a harmless clerical error.
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Application 13/877,942
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cairns in view of Carlson and Ohe and further in view of Hardee
(US 2004/0031692 Al, published Feb. 19, 2004, "Hardee").
3. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cairns in view of Carlson and Ohe and further in view of
Urgeghe et al. (WO 2010/055065 Al, published May 20, 2010,
"Urgeghe").
Appellants' arguments focus solely on independent claim 1 (Br. 3-9).
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Accord-
ingly, claims 2---6 and 10 will stand or fall with our analysis of claim 1.
FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejections under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and add the
following for emphasis.
The Examiner's findings and conclusions regarding Cairns, Carlson,
and Ohe are located on pages 2---6 of the Answer (filed Oct. 21, 2016
("Ans.")). The Examiner found, inter alia, that the claimed electrode
consisting of a metal substrate coated with an innermost first catalytic
composition and a second catalytic composition, applied in a plurality of
alternating layers, is disclosed by Cairns (Ans. 2-3).
Although Cairns does not disclose that the first catalytic composition
also comprises iridium, the Examiner found that Cairns teaches: (i) an
electrode used in chlor-alkali cells and (ii) that the first catalytic composition
of the electrode has a Ru: Ti ratio of 20:80-80:20 mol%. Id. at 3. Likewise,
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Application 13/877,942
the Examiner further found that Carlson discloses an electrode for chlor-
alkali cells, but the coating composition includes titanium oxide, ruthenium
oxide, and iridium oxide in a ratio of 6:3:2---6:3:1. Id.
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to modify Cairns' first catalytic composition to be
the composition taught in Carlson because Carlson's catalytic composition
satisfies Cairns' ruthenium-titanium molar ratio requirements. Id.
Appellants argue, inter alia, that "a person skilled in the art wishing to
improve the selectivity (and thus the chlorine purity) of the catalytic
formulation of Cairns would not expect, on the basis of the disclosure, that
modifying the 'first catalytic composition' according to the teaching of
Carlson would be of any help" (Br. 5). Appellants further argue that the
ordinary skilled artisan would not have modified "the first catalytic
composition of Cairns to be the composition taught in Carlson because the
coating of Cairns comprises only 2 elements (Ru02 and a non-noble metal
oxide) while the coating of Carlson comprises 3 elements (Ir, Ru, Ti)." Id.
We are unpersuaded by these arguments and agree with the
Examiner's determination of obviousness (Ans. 3--4, 11 ). The Examiner's
proposed modification of Cairns provides the same first and second catalytic
compositions, each with the requisite mixtures, and arranged as the presently
claimed electrode. See id. at 3--4, 8-10. As found by the Examiner,
Carlsons' electrode, comprising Ru02, Ti02, and Ir02, is proven to work
well in chlorine environments with the benefits of providing a reduced
oxygen evolution, retarded weight loss in a caustic environment, and ease of
use, without sacrificing chlorine evolution potential. Id. at 3--4. Thus,
modifying Cairns' electrode to incorporate the known iridium oxide in the
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Application 13/877,942
first catalytic composition mixture would have achieved the desired chlorine
evolution and concomitant reduced oxygen evolution with predictable
results and a reasonable expectation of success. See KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results."); id. at 417 ("[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill."). Appellants have not adequately explained why one skilled in the
art, using no more than ordinary creativity, would not have been capable of
adapting Carlsons' electrode, comprising Ru02, Ti02, and Ir02, as a first
catalytic composition in Cairns' electrode, while satisfying Cairns'
ruthenium-titanium molar ratio requirements. See In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary
skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Appellants argue that
a person skilled in the art would not expect to combine a tin-
based highly active formulation with another (less active one)
having a reduced oxygen evolution in order to improve the
selectivity of the original (tin-based) catalytic system, because
the coexistence of two different catalytic systems usually makes
the kinetics of the process to be governed by the more active
(and less selective) of the two.
(Br. 6). Appellants further argue that the ordinary skilled artisan would not
have found any "motivation to modify Cairns' invention[,] which clearly
demonstrated that the layers of its electrocatalytically-active material[,]
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Application 13/877,942
which form the coating of the electrode[,] have a surprising synergistic
effect." Id. at 7.
Appellants' arguments are not persuasive for the reasons set forth in
the Examiner's Answer (Ans. 10-11; 14). Furthermore, we note that
Appellants' arguments are not persuasive because attorney argument cannot
take the place of evidence in the record. In re Schulze, 346 F .2d 600, 602
( CCP A 1965). In this instance, the record evidence is silent as to any
evidence supporting Appellants' position. As noted above, the Examiner
has provided sufficient reasoning for making the proposed combination of
Cairns and Carlson.
Appellants argue that "[ n ]one of the cited references teach the
presently claimed invention[,] which provides a catalyst formulation for an
electrode suitable for functioning as chlorine evolving anode[,] which
addresses the known problem of simultaneously decreasing also the
overvoltage of the concurrent oxygen evolution reaction" (Br. 7).
Appellants distinguish the prior art by asserting that "Carlson's aim is to
provide an electrocatalytic coating[,] which in electrolysis of halogen
containing solutions will achieve reduced oxygen evolution." Id.
Appellants' arguments are not persuasive because the Examiner has
provided a well-reasoned analysis of how and why Cairns' electrode,
modified in view of Carlson and Ohe, would have the same structure as the
electrode recited in claim 1. Thus, Appellants have the burden of showing
that Cairns' modified electrode does not possess the claimed capability of
reducing chlorine overvoltage without reduction of oxygen overvoltage. See
Ans. 2-5; see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(explaining that "[ w ]here ... the claimed and prior art products are identical
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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 met this burden. The record evidence is silent as
to any persuasive technical reasoning or evidence that the limitation reciting
"the electrode reduces chlorine overvoltage without reduction in oxygen
overvoltage" would not have occured in Cairns' modified electrode.
Appellants argue that the Examiner's reliance upon Ohe, Hardee, and
Urgeghe fail to cure the deficiencies of Cairns and Carlson (Br. 7-8). We,
however, agree with the Examiner that Appellants have not identified any
such deficiencies.
CONCLUSION
Accordingly, on this record and for the above reasons, we sustain the
35 U.S.C. § 103(a) rejections of 1---6 and 10 over the cited prior art.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
ORDER
AFFIRMED
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