JOHNSON MATTHEY FUEL CELLS LIMITED et al.Download PDFPatent Trials and Appeals BoardAug 9, 20212021000648 (P.T.A.B. Aug. 9, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/757,171 03/02/2018 Marie Josephe Vanessa ARMEL 032891.000233 6240 148994 7590 08/09/2021 BakerHostetler / Johnson Matthey Cira Centre 12th Floor 2929 Arch Street Philadelphia, PA 19104-2891 EXAMINER LI, JUN ART UNIT PAPER NUMBER 1796 NOTIFICATION DATE DELIVERY MODE 08/09/2021 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): eofficemonitor@bakerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARIE JOSEPHE VANESSA ARMEL, STEPHEN CHARLES BENNETT, FREDERIC CHRISTOPHE JAQUEN, DEBORAH JONES, SHEENA HINDOCHA, and FABRICE SALLES Appeal 2021-000648 Application 15/757,171 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–12 and 17. See Final Act. 1. We 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Johnson Matthey Fuel Cells Limited, and Centre National De La Recherche Scientifique. Appeal Br. 1. Appeal 2021-000648 Application 15/757,171 2 have jurisdiction under 35 U.S.C. § 6(b). A telephonic hearing was held on July 19, 2021.2 We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to an oxygen reduction reaction catalyst. Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added to highlight key limitation in dispute): 1. A method for the manufacture of an Fe-N-C, Co-N-C, or Co/Fe- N-C oxygen reduction reaction (ORR) catalyst, the method comprising: pyrolysing in the presence of nitrogen a metal organic framework (MOF) material having a specific internal pore volume of 0.7 cm3g-1 or greater together with a source of iron, cobalt, or both iron and cobalt to form the catalyst, wherein (i) the MOF material comprises nitrogen, (ii) the MOF material is pyrolysed together with a source of nitrogen and the source of iron, cobalt, or both iron and cobalt, or, (iii) the MOF material comprises nitrogen and the MOF material is pyrolised together with a source of nitrogen and the source of iron, cobalt, or both iron and cobalt, and, wherein the MOF material is a Zeolitic Imidazolate Framework (ZIF) material. 2 The record will include a transcript of the hearing when it becomes available. Appeal 2021-000648 Application 15/757,171 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lefevre US 2011/0294658 A1 Dec. 1, 2011 Proietti WO 2012/107838 A1 Aug. 16, 2021 Proietti3 US 2014/0099571 A1 Apr. 10, 2014 Khan, Porous Carbon as Electrode Material in Direct Fuel Cells (DEFCs) Synthesized by the Direct Carbonization of MOF-5, J. Solid State Electrochem, (2014), 18: 1545–1555) Armel, Effect of ZIF-8 Crystal Size on the 02 Electro-Reduction Performance of Pyrolyzed Fe–N–C Catalysts, Catalysts (2015), 5, pages 1333–1351 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–3, 5–10, 17 103 Proietti, Khan 11 103 Proietti, Khan, Armel 12 103 Proietti, Khan, Lefevre OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. 3 This English equivalent of WO 2012/107838 has been used for citations. Appeal 2021-000648 Application 15/757,171 4 We add the following primarily for emphasis. Appellant argues the claims as a group, and does not argue any of the dependent claims, even those that were separately rejected (i.e. claims 11 and 12) (Appeal Br. generally). Thus, we select claim 1 as representative and all the claims stand or fall with claim 1. The Supreme Court has established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). The sole issue in dispute is whether one of ordinary skill in the art would have used “a specific internal pore volume of 0.7 cm3g-1 or greater” in the ZIF MOF (metal organic framework) of Proietti. There is no dispute that Proietti teaches all the limitations of claim 1 except for this range. The Examiner relies upon Proietti to further establish that high porosity in a MOF is desirable and thus concludes that internal pore volume of a MOF is a result effective variable (e.g., Ans. 10; Final Act. 4). The Examiner relies upon Khan to exemplify that internal pore volume within this range exist in MOFs used to prepare oxygen reduction catalysts (e.g., Final Act. 4). Appellant contends that Proietti and Khan pertain to “different catalyst technologies” and different classes of MOF materials that would not have been combined by one of ordinary skill (Appeal Br. 5, 6). Appellant further contends that Proietti does not explicitly identify internal pore Appeal 2021-000648 Application 15/757,171 5 volume as a result effective variable and that one would not have recognized such as a result effective variable from the applied prior art teachings (Appeal Br. 6–8). Finally, Appellant urges that the claimed process “gives rise to unexpectedly beneficial results” (Appeal Br. 9; emphasis omitted). These arguments are reiterated in the Reply Brief. These arguments are not persuasive of reversible error in the Examiner’s obviousness determination for reasons explained by the Examiner in the Answer (Ans. 9–16). These arguments do not take into account the applied prior art as a whole and the inferences one of ordinary skill in the art would have made therefrom. The law is replete with cases in which the difference between the claimed invention and the prior art is the claimed range or other variable within the claims. These cases have also consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to establish (1) that the alleged unexpected results are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Moreover, it is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d at 1577; In re Boesch, Appeal 2021-000648 Application 15/757,171 6 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). One of ordinary skill in the art would have readily inferred from the overall teachings of the applied prior art that an internal pore volume may be useful in a range such as that recited in claim 1. Furthermore, “[a] recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As pointed out by the Examiner, Proietti explicitly teaches that porosity of the MOF is a result effective variable (Ans. 10) as higher porosity results in better catalytic activity (e.g., Proietti ¶¶ 57, 63, 65–67). Contrary to Appellant’s arguments, one of ordinary skill in the art would have readily inferred from Proietti that internal pore volume would have also been a result effective variable, as it is a subset of the overall porosity. Accordingly, substantial evidence supports the Examiner’s obviousness determination of the recited range amount of internal pore volume in the MOF of claim 1 based on Proietti (even without relying upon Khan). We also note that Appellant admits that MOFs with such internal porosities were known, albeit not previously “investigated” for the recited process (Spec. 5:1–5).4 4 The use of a known MOF of the recited porosity range for the method taught in Proietti would have been prima facie obvious, requiring the use of no more than ordinary creativity. An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (a Appeal 2021-000648 Application 15/757,171 7 Having determined that the Examiner has established a prima facie case of obviousness, the issue becomes whether Appellant has established any criticality to the claimed range. Appellant, however, does not rely upon sufficient objective evidence of criticality or unexpected results from the claimed range. Comparison to only one ZIF MOF of Proietti when Proietti teaches many other possible (ZIF) MOFs is not adequate (Appeal Br. 10; Ans. 15, 16; Proietti ¶¶ 66, 67). The mere statement that better catalytic activity was “surprising” in the Specification is insufficient to establish criticality absent further objective evidence (Spec. 7:19–25; Appeal Br. 9). Furthermore, claim 1 is open-ended to many other materials, steps and/or conditions such that Appellant has not met the burden of showing and/or explaining how the objective evidence relied upon is commensurate in scope with the claim. Indeed, the Specification indicates that pore size and pyrolysis temperature (neither of which are recited in claim 1) as well as internal pore volume are important for achieving optimal results (Spec. Figs. 3, 4; Spec. 10:20–25; Spec. 17:1–9). In any event, as discussed above, one of ordinary skill in the art would have reasonably expected higher pore volumes, including higher internal pore volumes, to provide better catalytic activity from the express teachings of Proietti. statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (As the Supreme Court has noted, “[t]he combination of familiar elements [or steps] according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appeal 2021-000648 Application 15/757,171 8 In light of these circumstances, we affirm the Examiner’s § 103 rejections of all the claims on appeal, noting again that Appellant does not separately argue any claims dependent on claim 1. CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–10, 17 103 Proietti, Khan 1–3, 5–10, 17 11 103 Proietti, Khan, Armel 11 12 103 Proietti, Khan, Lefevre 12 Overall Outcome 1–3, 5–12, 17 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation