Li, Weina et al.

Patent Trials and Appeals Board

Sep 30, 2019

14653280 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/653,280 06/18/2015 Weina Li 59868US01;
67007-030PUS1
3169
26096 7590 09/30/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
DIGGS, TANISHA
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WEINA LI, MICHAEL L. PERRY,
RACHID ZAFFOU, and CHRISTOPER C. SHOVLIN
____________________

Appeal 2019-000494
Application 14/653,280
Technology Center 1700
____________________

Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
January 25, 2018 decision finally rejecting claims 1–18 and 22–24 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies United Technologies Corporation as
the real party in interest (Appeal Br. 1).
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Application 14/653,280

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method of treating a carbon
electrode that includes a surface with a plurality of chemically different
carbon oxides (Spec. ¶ 3). The surface is treated with a reducing agent to
reduce at least a portion of the oxides to a target carbon oxide (id.). The
reducing agent can be selected from the group consisting of diborane (B2H6),
metalorganic agents, LiBH3, and combinations thereof (Spec. ¶ 20). Details
of the claimed method are set forth in representative claim 1, which is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method of treating a carbon electrode, the method
comprising:
providing a carbon-based electrode including a surface
that has a plurality of chemically different carbon oxides; and
treating the surface with a reducing agent to reduce at
least a portion of the plurality of chemically different carbon
oxides to a target carbon oxide, wherein the reducing agent is
selected from the group consisting of diborane (B2H6),
metalorganic agents, LiBH3, and combinations thereof.

REJECTIONS
1. Claims 1–6, 8–11, and 13–18 are rejected under
35 U.S.C. § 103(a) as unpatentable over Zhong2 in view of Filer.3

2 Zhong et al., “Effect of carbon nanotube surface functional groups on
oxygen reduction in alkaline solution,” Journal of Power Sources, Vol. 225,
pp. 192–199, published October 23, 2012.
3 Filer, US 2011/0306084 A1, published December 15, 2011.
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2. Claims 1–6, 8–11, and 13–18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Ramesh4 in view of Filer.
3. Claim 12 over Zhong in view of Filer, or Ramesh in view of Filer,
and further in view of Adzic.5
4. Claim 22 over Zhong in view of Filer, or Ramesh in view of Filer,
and further in view of Jiang.6
5. Claims 7, 8, and 17 over Zhong in view of Filer, or Ramesh in
view of Filer, and further in view of Shin.7
6. Claims 23 and 24 over Zhong in view of Filer, or Ramesh in view
of Filer, and further in view of Hashimoto.8

DISCUSSION
Appellant argues all of the claims together. Accordingly, we limit our
discussion to the rejection of claim 1. Moreover, the arguments made in
support of the patentability of claim 1 are the same with regards to
Rejection 1 (Zhong in view of Filer) and Rejection 2 (Ramesh in view of

4 Ramesh et al., “Chemically functionalised exfoliated graphite: a new bulk
modified, renewable surface electrode,” Chemical Communications, 1999
2221–2222, published 1999.
5 Adzic et al., US 2006/0177728 A1, published August 10, 2006.
6 Jiang et al., US 2011/0014550 A1, published January 20, 2011.
7 Shin et al., “Efficient Reduction of Graphite Oxide by Sodium Borohydride
and Its Effect on Electrical Conductance” Adv. Funct. Mater., Vol. 19, pp.
1987–1992, published April 20, 2009.
8 Hashimoto et al., US 2013/0230744 A1, published September 5, 2013.
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Filer), in that they focus on the teachings of Filer. Accordingly, we will
address all of the rejections together.
The Examiner finds that each of Zhong and Ramesh disclose each
element of claim 1, except that neither discloses the use of the specific
reducing agents recited therein, in particular diborane (Final Act. 2–3, 5).
Appellant does not challenge these findings (see, Appeal Br. 3–5, and Reply
Br, 1–2). The Examiner further finds that Filer is in the same field of
endeavor, a finding which is also unchallenged by Appellant, and discloses
the use of reducing agents such as diborane, lithium aluminum hydride, and
sodium borohydride as reducing agents for reducing carboxylic acid on
carob materials (Final Act. 3, 5, citing Filer ¶¶ 20–25)). The Examiner
determines that it would have been obvious to use diborane in either
Zhong’s or Ramesh’s process in order to reduce the functional groups on the
carbon materials in those references as taught by Filer because “[s]imple
substitution of one known reducing agent for another would produce the
predictable results of reducing the carbon oxide groups on the carbon
material” and “Filer teaches diborane, lithium aluminum hydride and sodium
borohydride as functionally equivalent reducing agent[s] for this purpose”
(Final Act. 3–4, 5–6).
Appellant argues that Filer “does not teach mere use of diborane to
reduce carboxylic acid on carbon materials as is desired in Zhong or
Ramesh,” but instead “teaches use of reducing agents that can be adapted in
order to form [] tritium containing side chains on a carbon form” (Appeal
Br. 3, citing Filer ¶¶ 24, 26, and 34). According to Appellant, although both
Zhong and Ramesh are interested in reducing carbon oxide groups on carbon
nanotubes or graphite particles, “neither have any interest in producing
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tritiated groups as in Filer” (Appeal Br. 3). Appellant further argues that
neither Zhong nor Ramesh would seek to produce a tritium containing
material – for example, because tritium is radioactive - and, therefore, would
not be combined with Filer’s teachings (Appeal Br. 3–4).
Appellant’s arguments are not persuasive. Filer specifically states
that:
A reducing agent is any reducing agent capable of reducing a carboxylic
acid when used under appropriate conditions. Such reducing agents are
commonly referred to as strong reducing agents. Examples of reducing
agents include those that react as nucleophiles, but a reducing agent may
act as an electrophile such as diborane. Illustrative reducing agents
include diborane (B2H6)…
(Filer, ¶ 25, emphasis added). Thus, Filer is plainly teaching that diborane is
a reducing agent capable of reducing a carboxylic acid (for example to a
hydroxyl group). Filer goes on to discuss how the reducing agents described
in Paragraph 25 may be “tritiated as a proton donor for the association of a
tritium with a planar carbon form” (id.).
Nevertheless, the Examiner reasonably found that Filer teaches that
diborane can be used as reducing agent for reducing carboxylic acid groups,
regardless of whether it is tritiated (Ans. 14). Accordingly, the Examiner
properly concluded that it would have be obvious to substitute the known
reducing agent diborane in either Ramesh’s process or Zhong’s process for
the reducing agents disclosed therein. “[T]he simple substitution of one
known element for another” generally will be obvious unless the substitution
would have been beyond the level of ordinary skill in the art or the results of
the substitution would not have been predictable by one of ordinary skill in
the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-417 (2007).
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In this instance, while Filer teaches, and indeed is directed to, the use
of tritiated reducing agents, Filer also discloses that diborane is a known
reducing agent for reactions like those disclosed in Zhong and Ramesh.
Accordingly, the substitution of diborane into those processes would have
been obvious.
Accordingly, we conclude that, based on the preponderance of the
evidence of record, Appellant has not demonstrated reversible error in the
rejections.

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CONCLUSION

In summary:

Claims
Rejected
Basis Affirmed Reversed
1–6, 8–11, and
13–18
§ 103
Zhong and Filer
1–6, 8–11,
and 13–18

1–6, 8–11, and
13–18
§ 103
Ramesh and Filer
1–6, 8–11,
and 13–18

12 § 103
Zhong, Filer and Adzic
12
12 § 103
Ramesh, Filer and Adzic
12
22 § 103
Zhong, Filer and Jiang
22
22 § 103
Ramesh, Filer and Adzic
22
7, 8, 17 § 103
Zhong, Filer and Shin
7, 8, 17
7, 8, 17 § 103
Ramesh, Filer and Shin
7, 8, 17
23, 25 § 103
Zhong, Filer and
Hashimoto
23, 25
23, 25 § 103
Ramesh, Filer and
Hashimoto
23, 25
Overall Outcome 1–18 and
22–24

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED