Ex Parte Urgeghe et alDownload PDFPatent Trial and Appeal BoardMar 30, 201813877942 (P.T.A.B. Mar. 30, 2018) Copy Citation 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§ 134 the non-final rejections of claims 1-6 and 10.2 Claims 7-9, the other claims pending in this application, stand withdrawn from consideration by the Examiner.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 The Examiner, however, acknowledged that "[ c ]laims 7-9 have been withdrawn as non-elected" Appeal2017-007837 Application 13/877,942 Appellants' invention is directed to an electrode suitable for use as an anode for chlorine evolution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. 2 Appeal2017-007837 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, 3 Appeal2017-007837 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 4 Appeal2017-007837 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[,] 5 Appeal2017-007837 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 6 Appeal2017-007837 Application 13/877,942 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 7 Copy with citationCopy as parenthetical citation