VOLKSWAGEN AG

Patent Trials and Appeals BoardMay 24, 2021

2020002394 (P.T.A.B. May. 24, 2021)

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. 15/026,549 03/31/2016 Peter Strasser 1901.1005 3569 23280 7590 05/24/2021 Davidson, Davidson & Kappel, LLC 589 8th Avenue 22nd Floor New York, NY 10018 EXAMINER PARSONS, THOMAS H ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 05/24/2021 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER STRASSER, M.S. RANJBAR, and GEROLD HUEBNER1 ____________ Appeal 2020-002394 Application 15/026,549 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, MICHELLE N. ANKENBRAND, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 9, 10, and 12–24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to fuel-cell catalyst systems comprising a polyaniline-metal catalyst that includes iron and manganese. E.g., Spec. ¶ 1; Claim 9. The Specification states that “[t]he invention is 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 Audi Aktiengesellschaft. Appeal Br. 2. Appeal 2020-002394 Application 15/026,549 2 based on the realization that a polyaniline-metal catalyst containing iron as well as manganese displays a higher stability than the prior art polyaniline- metal catalysts.” Spec. ¶ 8. Claim 9 is reproduced below from page 8 (Appendix A) of the Appeal Brief: 9. A catalyst system comprising: a carbon-based support material; and a polyaniline-metal catalyst bound to the support material, the polyaniline-metal catalyst including iron (Fe) and manganese (Mn); wherein a molar ratio of Mn to Fe is in the range from 1:100 to 100:1. ANALYSIS Claims 9, 10, and 12–24 stand rejected under 35 U.S.C. § 103 as unpatentable over Serov (WO 2012/174344 A1, published Dec. 20, 2012) and Calabrese Barton (US 2011/0287174 A1, published Nov. 24, 2011) (hereafter “Barton” for brevity). After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejection. Accordingly, we affirm the rejection for reasons set forth below, in the Final Action dated March 20, 2019, and in the Examiner’s Answer. The Appellant presents arguments for claims 9 and 24. We address those claims below. The remaining claims on appeal will stand or fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 9. The Examiner finds that Serov teaches a catalyst system comprising each element of claim 9, including the use of iron and manganese, except that Serov’s system uses a phenylenediamine-metal catalyst rather than a polyaniline-metal catalyst as recited by claim 9. Final Appeal 2020-002394 Application 15/026,549 3 Act. 3. The Examiner finds that Barton teaches similar catalyst systems2 in which either a phenylenediamine-metal catalyst or a polyaniline-metal catalyst is used, indicating the interchangeability of phenylenediamine and polyaniline. See id. The Examiner determines that it would have been obvious to substitute Barton’s polyaniline for Serov’s phenylenediamine. Id. at 3–4. In the Appeal Brief, the Appellant argues that Serov does not teach a catalyst that is “bound to the [carbon-based] support material,” as required by claim 9. Appeal Br. 4. The Appellant argues that Serov’s M-N-C (metal- nitrogen-carbon) catalyst is manufactured using a non-carbon sacrificial support, and that Serov’s M-N-C catalyst is subsequently “deposited on a new support [that may be carbon], without any apparent chemical reaction or other process that could result in binding.” Id. at 4–5. In the Answer, the Examiner relies on ¶¶ 6 and 104 of Serov and responds that Serov prepares its “M-N-C catalyst utilizing a [non-carbon] sacrificial support approach,” that the sacrificial support is removed, and that Serov teaches that the resulting M-N-C catalyst “can be deposited onto conductive dispersed supports (both carbon and non-carbon).” Ans. 3–4 (citing Serov ¶ 104). The Examiner does not expressly find that Serov ¶ 104 teaches that the M-N-C catalyst is “bound” to a carbon support as recited by claim 9. Id. Instead, the Examiner relies on Serov ¶ 6, which discloses that “[g]enerally, known non-platinum electrocatalysts are supported on high surface area carbon blacks,” and that “[t]he synthesis procedure usually includes precipitation of the precursor molecules onto the supporting 2 Barton also discloses the use of iron and manganese. E.g., Barton ¶ 52. Appeal 2020-002394 Application 15/026,549 4 substrate and pyrolyzation of the supported precursor.” Serov ¶ 6; see also Ans. 4. The Examiner finds that, because Serov ¶ 104 states that the M-N-C catalyst is “deposited” onto a support without specifying how the deposition occurs, and Serov ¶ 6 teaches a typical method by which non-platinum catalysts are deposited onto carbon supports, it would have been obvious to perform the “deposit[ing]” described by ¶ 104 using the known technique involving pyrolyzation described by ¶ 6. See Ans. 3–5. There is no dispute that the technique described by ¶ 6 results in a catalyst that is “bound to the support material,” as recited by claim 9. In the Reply Brief, the Appellant argues that a person of ordinary skill in the art would not have used the technique of Serov ¶ 6 to perform the “deposit[ing]” of Serov ¶ 104 because Serov ¶ 7 allegedly teaches downsides of that technique that a person of ordinary skill in the art practicing Serov would have sought to avoid. Reply Br. 2. The Appellant’s arguments are not persuasive of reversible error in the Examiner’s rejection. As an initial matter, we observe that Serov ¶ 104 does not merely teach “deposit[ing]” the M-N-C catalyst onto the support; it expressly teaches “deposit[ing] . . . in a fashion that facilitates the charge transfer of the heteroatom atom and the support.” Serov ¶ 104 (emphasis added). The Appellant does not persuasively address that disclosure or otherwise provide an explanation of why a catalyst interacting with a support via “charge transfer,” as disclosed by Serov ¶ 104, falls beyond the scope of the term “bound to the support material.” Moreover, and as set forth above, Serov teaches that, after manufacture of the M-N-C catalyst and removal of the sacrificial support with which the M-N-C catalyst is manufactured, “the M-N-C catalysts Appeal 2020-002394 Application 15/026,549 5 described herein can be deposited onto conductive dispersed supports (both carbon and non-carbon).” Serov ¶ 104 (emphasis added). Serov ¶ 104 does not specifically indicate how the “deposit[ing]” takes place beyond, as noted above, stating that the depositing facilitates charge transfer. Serov ¶ 6 states that, “[g]enerally, known non-platinum electrocatalysts are supported on high surface area carbon blacks,” and that “[t]he synthesis procedure usually includes precipitation of the precursor molecules onto the supporting substrate and pyrolyzation of the supported precursor.” The Examiner’s finding that a person of ordinary skill in the art would have looked to known methods of depositing a catalyst onto a support for guidance as to how to perform the “deposit[ing]” of Serov ¶ 104 is reasonable and is consistent with the record. See Serov ¶¶ 6, 104. The Appellant does not offer an alternative explanation as to how a person of ordinary skill in the art might have understood that the “deposit[ing]” step of Serov ¶ 104 should be performed. We do not agree with the Appellant that ¶ 7 of Serov would have taught a person of ordinary skill in the art “to avoid” what the Examiner has proposed. See Reply Br. 2. Although ¶ 7 does describe “significant drawbacks” of prior art M-N-C catalysts, Serov indicates that those drawbacks are reduced or resolved by its “method of preparation of M-N-C catalysts utilizing a sacrificial support,” not by eliminating carbon-catalyst bonding in the final product. See Serov ¶ 9. Serov even acknowledges in ¶ 104 some of the same drawbacks described in ¶ 7 (durability and stability), but nevertheless expressly teaches the use of carbon supports as an alternative to non-carbon supports. Id. ¶ 104. Although Serov ¶ 7 speculates that “low activity is possibly due low metal loading, and as a Appeal 2020-002394 Application 15/026,549 6 result in low concentration of active sites in such catalysts due to using external carbon source,” as described above, Serov then goes on to explicitly teach that its M-N-C catalysts can be deposited onto carbon supports, and does not disparage known methods such as precipitation/pyrolyzation, see Serov ¶¶ 6, 104. Accordingly, we are not persuaded that a person of ordinary skill reading Serov would have attempted to avoid the method identified by the Examiner. The Appellant also argues that a person of ordinary skill in the art would not have used Barton’s polyaniline as a substitute for Serov’s phenylenediamine because Barton does not teach “that the use of polyaniline would in any way provide an improvement to [Serov].” Appeal Br. 6. That argument is not persuasive because the record establishes, e.g., Barton ¶ 57, and the Appellant does not dispute, that phenylenediamine and polyaniline were known alternatives to each other in fuel cell catalysts such as those of Serov and Barton. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). We have carefully considered the Appellant’s arguments, but we are not persuaded of reversible error in the Examiner’s rejection of claim 9.3 3 In the event of further examination of the application on appeal, the Examiner may wish to consider whether it would be appropriate to alternatively state the rejection as relying on Barton for its disclosure of a polyaniline-metal catalyst bound to a carbon-based support material, e.g., Barton ¶ 45 (carbon support), ¶ 52 (metal precursor comprising Fe and Mn), ¶ 57 (polyaniline nitrogen precursor), and on Serov for its disclosure of a suitable Mn:Fe ratio, e.g., Serov ¶ 129. Appeal 2020-002394 Application 15/026,549 7 Claim 24. Claim 24 depends from claim 9 and recites that the carbon-based support material “includes a carbon black.” Appeal Br. 9. The Examiner finds that Barton discloses a carbon-based support material that includes a carbon black. Final Act. 8 (citing Barton ¶ 46). The Appellant relies on the argument discussed above that Serov teaches avoidance of the use of carbons. Appeal Br. 6. That argument is not persuasive for reasons set forth above. We are not persuaded that Serov teaches avoidance of the use of carbons given Serov’s disclosure that its M-N-C catalyst “can be deposited onto conductive dispersed supports (both carbon and non-carbon).” Serov ¶ 104. Both Barton (¶ 46) and Serov itself (¶ 6) establish that it was well known that dispersed carbon catalyst supports may include carbon black. The Examiner’s proposal is simply the use of a known element (carbon black) according to an established function (fuel cell catalyst support) with predictable results. Such combinations typically do not result in nonobvious subject matter. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). We are not persuaded of reversible error in the Examiner’s rejection of claim 24. Appeal 2020-002394 Application 15/026,549 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9, 10, 12–24 103 Serov, Calabrese Barton 9, 10, 12–24 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