SHOWA DENKO K.K.

Patent Trials and Appeals BoardDec 7, 2020

2020001359 (P.T.A.B. Dec. 7, 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. 15/312,992 11/21/2016 Noriyasu TEZUKA Q230121 8416 23373 7590 12/07/2020 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER BARROW, AMANDA J ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 12/07/2020 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NORIYASU TEZUKA, TAKUYA IMAI, MASAYUKI YOSHIMURA, and MASAHIRO OHMORI Appeal 2020-001359 Application 15/312,992 Technology Center 1700 Before TERRY J. OWENS, BRADLEY W. BAUMEISTER, and BRIAN D. RANGE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), The Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, and 4–6. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as SHOWA DENKO K.K. (Appeal Br. 2). Appeal 2020-001359 Application 15/312,992 2 CLAIMED SUBJECT MATTER The claims are directed to an oxygen reduction catalyst. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An oxygen reduction catalyst comprising titanium dioxide particles, a carbon material and a catalyst component, wherein at least part of a surface of the titanium dioxide particles is covered with zinc oxide, and the titanium dioxide particles and the carbon material each support the catalyst component. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Mance US 2006/0188775 A1 Aug. 24, 2006 Fang US 2011/0124449 A1 May 26, 2011 Tezuka US 2017/0155157 A1 June 1, 2017 Shigeo JP 60-137434 A July 22, 1985 REJECTIONS The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 2, and 4–6 over Mance in view of Shigeo; claim 3 over Mance in view of Shigeo and Tezuka; and claim 7 over Mance in view of Shigeo and Fang. OPINION We need address only the sole independent claim, i.e., claim 1. Mance discloses a supported catalyst comprising particles of a catalyst such as platinum on a support made of carbon particles coated with smaller titanium dioxide particles to resist oxidation of the carbon particles yet maintain suitable electrical conductivity for use of the catalyst in a fuel cell (¶¶ 2, 8, 11). Appeal 2020-001359 Application 15/312,992 3 Shigeo discloses a methanol reforming catalyst comprising a precious metal, such as platinum or palladium, on a support made of titania coated with zinc oxide or chrome oxide (p. 1). Due to the zinc oxide or chrome oxide coating, the titania is basic instead of acidic, causes dehydrogenation, and inhibits methanol reforming side reactions. Id. The catalyst is highly selective to conversion of methanol to hydrogen and carbon monoxide, is highly active, and is durable (p. 2). The Examiner concludes that it would have been prima facie obvious to one of ordinary skill in the art to coat Mance’s fuel cell catalyst carbon support particles with zinc oxide-coated titanium dioxide particles because Mance teaches that an acidic environment at a fuel cell cathode is harmful to a cathode catalyst carbon support and Shigeo teaches that coating titanium dioxide particles with zinc oxide particles was known in the field of titanium dioxide-supported platinum catalysts and provides a catalyst that is basic rather than acidic and has high activity and long life in a methanol reforming process (Final Rej. 3). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Sheigo’s disclosed benefit of coating the titania particles with zinc oxide is that it causes dehydrogenation and prevents side reactions in methanol reforming (p. 1). Also, the catalyst is disclosed as having high activity and durability in a methanol reforming process (p. 2). The Examiner does not establish that Sheigo’s disclosure of those benefits of coating methanol reforming catalyst titania particles with zinc oxide would have Appeal 2020-001359 Application 15/312,992 4 provided one of ordinary skill in the art with an apparent reason to coat Mance’s fuel cell catalyst support titanium dioxide particles with zinc oxide. Nor does the Examiner identify a benefit of using basic titanium dioxide particles such as Shigeo’s zinc oxide-coated titanium dioxide particles in a fuel cell acidic environment such as that of Mance that would have provided one of ordinary skill in the art with an apparent reason to coat Mance’s titanium dioxide particles with zinc oxide. Thus, the Examiner has not set forth the required apparent reason why one of ordinary skill in the art would have modified Mance’s catalyst in view of Shigeo to arrive at the Appellant’s claimed catalyst. Accordingly, we reverse the rejections. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–6 103 Mance, Shigeo 1, 2, 4–6 3 103 Mance, Shigeo, Tezuka 3 7 103 Mance, Shigeo, Fang 7 Overall Outcome 1–7 REVERSED