Jonathan David Sharman et al.

Patent Trials and Appeals Board

Nov 4, 2020

13390821 - (D) (P.T.A.B. Nov. 4, 2020)

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.
13/390,821 05/07/2012 Jonathan David Brereton Sharman 032891.000017 5715
148994 7590 11/04/2020
BakerHostetler / Johnson Matthey
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
CHUO, TONY SHENG HSIANG
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
11/04/2020 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 JONATHAN DAVID BRERETON SHARMAN,
BRIAN RONALD THEOBALD, DAVID THOMPSETT, and
EDWARD ANTHONY WRIGHT

Appeal 2020-001569
Application 13/390,821
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2020-001569
Application 13/390,821

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–10, 15–20, and 22–35, which
constitute all the claims pending in this application. An oral hearing was
held on October 20, 2020, and a copy of the transcript will be made of
record when available. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to electrochemical fuel
cells and a “catalyst layer comprising alternative water electrolysis
catalysts.” 1:3–4; 6:23–27. Appellant explains that prior electrocatalysts for
a water electrolysis reaction at the anode of a fuel cell were generally based
on ruthenium oxide, but such catalysts have poor stability under some
conditions. Appeal Br. 4 (citing Spec. 6). Appellant states that water
electrolysis catalysts comprising iridium and tantalum, as in the present
claims, provide comparable activity and better durability. Id. at 4–5.
Appellant further emphasizes that the iridium and tantalum of the present
claims is present in a single oxide phase. Id. at 5. Claim 1 is illustrative, and
we reproduce it below while adding emphasis to a key recitation on appeal:

1 We use the word “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. Appeal Br. 1.
2 In this Decision, we refer to the Final Office Action dated December 26,
2018 (“Final Act.”), the Appeal Brief filed August 21, 2019 (“Appeal Br.”),
the Examiner’s Answer dated October 28, 2019 (“Ans.”), and the Reply
Brief filed December 19, 2019 (“Reply Br.”).
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Application 13/390,821

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1. A catalyzed membrane comprising a solid
polymeric membrane, a first catalyst layer, and a second catalyst
layer, wherein at least one of the first catalyst layer or the second
catalyst layer comprises:
(i) an electrocatalyst, and
(ii) a water electrolysis catalyst, wherein the water
electrolysis catalyst comprises a single oxide structure
comprising iridium and tantalum, wherein said catalyzed
membrane is configured for use in a proton exchange membrane
fuel cell.
Appeal Br. 15 (Claims App.) (emphasis added).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Ashizawa et al.
(“Ashizawa”)
US 5,665,218 Sept. 9, 1997
Cisar et al.
(“Cisar”)
US 2003/0068544 A1 Apr. 10, 2003
Atanassova et al.
(“Atanassova”)
US 2007/0160899 A1 July 12, 2007
Ye et al.
(“Ye”)
US 2009/0042078 A1 Feb. 12, 2009
Knights et al.
(“Knights”)
WO 01/15247 A2 March 1, 2001
Morimitsu et al., Stability of Iridium Oxide-Tantalum Oxide Coated
Titanium Electrodes for Oxygen Evolution in Alkaline Solutions, J. of New
Mats. For Electrochem. Sys. 7, 323–27 (2004) (“Morimitsu”)

Appeal 2020-001569
Application 13/390,821

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REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1, 4–10, 15–20, 22–32, 34, and 35 under 35 U.S.C. § 103 as
obvious over Knights in view of Ashizawa and Atanassova. Ans. 3.
B. Claim 33 under 35 U.S.C. § 103 as obvious over Knights in view of
Ashizawa and Atanassova in further view of Ye. Id. at 6.
C. Claims 1, 4, 5, 8–10, 15–20, 22, 23, and 26–30 under 35 U.S.C. § 103
as obvious over Cisar in view of Ashizawa and Atanassova. Id. at 7.
D. Claim 33 under 35 U.S.C. § 103 as obvious over Cisar in view of
Ashizawa and Atanassova in further view of Ye. Id. at 9.
E. Claims 1, 4–10, 15–20, 22–32, 34, and 35 under 35 U.S.C. § 103 as
obvious over Knights in view of Morimitsu and Atanassova. Id. at 10.
F. Claim 33 under 35 U.S.C. § 103 as obvious over Knights in view of
Morimitsu and Atanassova in further view of Ye. Id. at 13.
G. Claims 1, 4, 5, 8–10, 15–20, 22, 23, and 26–30 under 35 U.S.C. § 103
as obvious over Cisar in view of Morimitsu and Atanassova. Id. at 14.
H. Claim 33 under 35 U.S.C. § 103 as obvious over Cisar in view of
Morimitsu and Atanassova in further view of Ye. Id. at 16.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
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presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Examiner rejects claims 1, 4 10, 15–20, 22–32, 34, and 35 under
35 U.S.C. § 103 as obvious over Knights in view of Ashizawa and
Atanassova. Ans. 3. The Examiner also rejects claims 1, 4, 5, 8–10, 15–20,
22, 23, and 26–30 under 35 U.S.C. § 103 as obvious over Cisar in view of
Ashizawa and Atanassova. Id. at 7. For the rejections of claim 33, the
Examiner additionally relies upon the Ye reference. Id. at 6, 9. The Examiner
also provides rejections similar to the first four rejections except that the
Examiner relies on Morimitsu instead of Ashizawa. Ans. 10–16.
Appellant does not present distinct arguments as to the various claims
subject to these rejections. See Appeal Br. 4–14. Therefore, consistent with
the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion
to claim 1, and all other claims stand or fall together with claim 1.
The Examiner finds that Knights teaches a fuel cell with a membrane
electrode assembly having a catalyzed membrane and meeting most
recitations of claim 1. Ans. 3–4 (citing Knights). The Examiner finds that
Knights does not expressly teach an electrolysis catalyst comprising an
oxide comprising iridium and tantalum. Id. at 4. Similarly, the Examiner
finds that Cisar teaches a fuel cell with a membrane electrode assembly
having a catalyzed membrane and meeting most recitations of claim 1. Id. at
7–8 (citing Cisar). The Examiner finds that Cisar does not expressly teach an
electrolysis catalyst comprising an oxide comprising iridium and tantalum.
Id.
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The Examiner finds, for the first four rejections, that Ashizawa
teaches such a catalyst. Id. at 4, 7–8 (citing Ashizawa). The Examiner states
a reason for modifying Knights and Cisar based on this teaching of
Ashizawa. Id. Similarly, for the fifth through eighth rejections, the Examiner
finds that Morimitsu discloses an oxygen evolution catalyst that is IrO2-
Ta2O5. Id. at 11 (citing Morimitsu). The Examiner determines that it would
have been obvious to modify Knights or Cisar to choose the iridium oxide
and tantalum oxide catalyst of Morimitsu because it “has high durability for
oxygen evolution” and is a known material suitable for the intended use. Id.
The Examiner finds that Knights and Cisar as modified by Ashizawa or
Morimitsu does not expressly teach a single oxide structure comprising
iridium and tantalum. See, e.g., id. at 7–8, 11–12.
The Examiner finds, however, that Atanassova teaches spray drying to
intimately mix metal oxide precursors to former an electrocatalyst. Id. at 4,
8–9 (citing Atanassova). The Examiner determines that it would have been
obvious to modify the Knights/Ashizawa, Cisar/Ashizawa,
Knights/Morimitsu, or Cisar/Morimitsu catalyst to include a single oxide
structure formed by spray drying because spray drying has the advantage of
high throughput, which allows large amounts of particles to be produced and
provides uniformity. Id. at 5, 8–9, 11–12, 15 (citing Atanassova).
Appellant’s primary argument is that Atanassova—the one reference
relied on for all rejections—does not teach or suggest use of metal oxides as
part of a catalyzed membrane. Appeal Br. 5–12; Reply Br. 1–5. In particular,
Appellant argues that the metal oxides of Atanassova are intermediates
largely removed by alloying and that Atanassova views metal oxides as
contaminants that, at least preferably, are absent from Atanassova’s final
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product. See, e.g., Appeal Br. 7–10. Appellant also argues that the Examiner
improperly relies on hindsight when citing Atanassova and that Atanassova
is concerned with forming the oxygen reduction reaction component of a
catalyst layer rather than water electrolysis catalysts of concern to the other
cited references. Id. at 10–12.
Appellant’s arguments are not persuasive of reversible error. We
agree with Appellant that, read as a whole, Atanassova generally does not
prefer oxides on its final membranes. See, e.g., Atanassova ¶¶ 7 (indicating
that Atanassova addresses a need for metal alloy catalysts), 279 (indicating
that acid treatment may be used to remove some metal oxide species). The
Examiner, however, relies on Ashizawa or Morimitsu rather than
Atanassova as teaching the desirability of a catalyst layer comprising iridium
and tantalum oxides. Ans. 4. Meanwhile, Atanassova suggests that spray
drying can be used to form metal oxide species on a membrane. See, e.g.,
Atanassova ¶¶ 9 (indicating spray drying can be used to deposit the
precursor medium), 81 (“the metals and/or metal oxides formed from the
metal precursors are intimately mixed on the surface of the substrate
particles prior to alloying”). Appellant’s argument does not persuasively
identify error in the Examiner’s position that a person of ordinary skill in the
art would have had reason to form the Knights/Ashizawa, Cisar/Ashizawa,
Knights/Morimitsu, or Cisar/Morimitsu catalysts by use of spray drying in
order to achieve high throughput and uniformity. Ans. 5 (citing Atanassova).
Appellant also argues that the resulting product of spray drying (as
taught by Atanassova) to achieve a membrane (as taught by Knights or
Cisar) having an IrTa oxide catalyst (as taught by Ashizawa or Morimitsu)
will not necessarily result in claim 1’s recited “single oxide structure
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comprising iridium and tantalum.” Appeal Br. 13; Reply Br. 5–6. The
Examiner, however, finds that the Atanassova process is the same spray
drying process as disclosed by the present application and reasonably
determines that this same process necessarily results in Appellant’s same
claimed structure. See, e.g., Final Act. 8–9 (citing Spec. 12:11–18).3
Appellant does not present evidence to the contrary. See, e.g., In re Best, 562
F.2d 1252, 1256 (CCPA 1977) (explaining that where “the claimed and prior
art products are identical 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”); see also In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”).
Appellant further argues that inherency cannot be alleged based on the
result of combining teachings of two or more references. Appeal Br. 13.
Appellant’s legal proposition is incorrect; inherency applies “when the
limitation at issue is the ‘natural result’ of the combination of prior art
elements.” See, e.g., Par Pharm., Inc. v. TWI Parm., Inc., 773 F.3d 1186,
1195 (Fed. Cir. 2014). Here, as explained above, Appellant does not

3 We note that Appellant’s Specification never explicitly refers to a “single
oxide structure.” Rather, the Specification refers to spray drying resulting in
a “mixed oxide catalyst.” Spec. 12:14–18. In the event of further
prosecution, the Examiner may wish to consider whether recitation of a
“single oxide structure” has adequate written description support pursuant to
35 U.S.C. § 112.
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persuasively dispute that a single oxide structure would be the natural result
of the references’ combined teachings as the Examiner proposes.
Appellant also argues that the oxides of Ashizawa or Morimitsu are
deposited on titanium materials and contain leached titanium and are,
therefore, not compatible with the Knights or Cisar assembly. Appeal Br.
12–13. Appellant supports this argument by referring to the April 25, 2018,
Declaration of Dr. Jonathan Sharman (“Sharman Decl.”). Id.4 This argument
is unpersuasive because the Examiner only relies on Ashizawa or Morimitsu
as teaching a catalyst layer consisting of iridium and tantalum oxides. Ans.
21. The Examiner relies on Knights or Cisar as teaching appropriate
substrates and finds that Knights or Cisar teaches that titanium substrates are
not necessary for fuel cell applications. Id. Appellant does not persuasively
dispute this finding. The Examiner’s rejection need not bodily incorporate
the substrate of Ashizawa or Morimitsu into Knights or Cisar. In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“the test [for obviousness] is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art”); In re Mouttet, 686 F.35 1322, 1332 (Fed. Cir.
2012) (“a determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements”).

4 Appellant provides citations to Appellant’s prior reply to an Examiner
office action. Incorporation of arguments by reference is not permitted on
Appeal. 37 C.F.R. § 41.37(iv) (“any arguments or authorities not included in
the appeal brief will be refused consideration by the Board for purposes of
the present appeal”). Our decision considers arguments in the Appeal Brief
and the Reply Brief. Our decision also considers, along with other evidence,
the Sharman Declaration.
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Appellant also argues that Ashizawa and Morimitsu do not provide
guidance concerning the stability of their disclosed oxides in an acidic PEM
fuel cell environment. Appeal Br. 12–13. The preponderance of the
evidence, however, indicates that a person of skill in the art would have
understood that the catalysts of Ashizawa and Morimitsu are compatible
with acidic environments. See, e.g., Ashizawa 8:15–24; 9:42–52; Morimitsu
Abstract (indicating “high stability in such a concentrated alkaline solution
comparable to that in an acidic solution”), 323 (“catalytic activity and
durability of the electrode have been widely investigated in such acidic
media”). Appellant cites the Sharman Declaration to support its argument
(Appeal Br. 12–13), but the Declaration does not outweigh the evidence in
the references because it is conclusory rather than explaining why there is
incompatibility and citing evidence to support that position (Sharman Decl.
¶ 13).
Because Appellant’s arguments do not identify Examiner error, we
sustain these rejections.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–10, 15–
20, 22–32,
34, 35
103 Knights, Ashizawa,
Atanassova
1, 4–10, 15–
20, 22–32,
34, 35

33 103 Knights, Ashizawa,
Atanassova, Ye
33
1, 4, 5, 8–10,
15–20, 22,
23, 26–30
103 Cisar, Ashizawa,
Atanassova
1, 4, 5, 8–10,
15–20, 22,
23, 26–30

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Application 13/390,821

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
33 103 Cisar, Ashizawa,
Atanassova, Ye
33
1, 4–10, 15–
20, 22–32,
34, 35
103 Knights, Morimitsu,
Atanassova
1, 4–10, 15–
20, 22–32,
34, 35

33 103 Knights, Morimitsu,
Atanassova, Ye
33
1, 4, 5, 8–10,
15–20, 22,
23, 26–30
103 Cisar, Morimitsu,
Atanassova
1, 4, 5, 8–10,
15–20, 22,
23, 26–30

33 103 Cisar, Morimitsu,
Atanassova, Ye
33
Overall
Outcome
1, 4–10, 15–
20, 22–35

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