Jonathan David Sharman et al.

Patent Trials and Appeals BoardNov 4, 2020

2020001569 (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 2 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.”). Appeal 2020-001569 Application 13/390,821 3 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 4 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 Appeal 2020-001569 Application 13/390,821 5 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. Appeal 2020-001569 Application 13/390,821 6 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 Appeal 2020-001569 Application 13/390,821 7 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 Appeal 2020-001569 Application 13/390,821 8 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. Appeal 2020-001569 Application 13/390,821 9 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. Appeal 2020-001569 Application 13/390,821 10 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 Appeal 2020-001569 Application 13/390,821 11 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