Ex Parte Kim et al

Patent Trials and Appeals Board

Jun 12, 2019

14160352 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/160,352 01/21/2014
23363 7590 06/14/2019
Lewis Roca Rothgerber Christie LLP
POBOX29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Hee-Tak Kim
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
74464 7761
EXAMINER
0 DONNELL, LUCAS J
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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):
pto@lrrc.com
pair_cph@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEE-TAK KIM,
SUNG-YONG CHO, and KAH-YOUNG SONG
Appeal2018-007196 1
Application 14/160,352
Technology Center 1700
Before JEFFREY T. SMITH, DONNA M. PRAISS., and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This decides an appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-3, 7, and 9-16. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Kolon Industries Inc. is identified as the Appellant and real party in
interest. App. Br. 1.
Appeal2018-007196
Application 14/160,352
Appellant's invention is directed generally to an electrode for a fuel
cell with a catalyst layer wherein the catalyst layer includes a composite
supporter comprising a spherical-shaped supporter and a graphitized carbon
nanofiber fibrous supporter. App. Br. 1--4; Spec. ,r 14.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced from the Appeal Brief below:
1. An electrode for a fuel cell, comprising:
an electrode substrate; and
a catalyst layer on the electrode substrate,
wherein the catalyst layer comprises:
an active metal catalyst; and
a composite supporter supporting the active metal
catalyst and comprising a spherical-shaped supporter
comprising at least one selected from graphite, denka
black, ketjen black and lamp black, and a fibrous
supporter comprising a graphitized carbon nanofiber,
wherein the fibrous supporter is included in an
amount of about 5 wt% to about 40 wt% based on the total
amount of the composite supporter,
the fibrous supporter has a diameter at least twice as
large as that of the spherical-shaped supporter, and
a change in a thickness of the catalyst layer after a
cycle operation is 5.88% or less based on the thickness of the
catalyst layer before the cycle operation, wherein the cycle
operation is conducted by repetitively applying with a voltage
of 0.6 V to 1.0 V within the range at 80° C by providing each
cathode with 0 2 having a relative humidity of 100% and each
anode with H2 having a relative humidity of 100% until a
voltage drop of 30 m Vat 0.8 A/cm2.
2
Appeal2018-007196
Application 14/160,352
Appellant requests review of the following prior art rejections from
the Examiner's Final Office Action:
I. Claims 1-3, 7, 9-13, and 16 under pre-AIA 35 U.S.C. § I02(b)
as unpatentable over Mei (US 2006/0204832 Al, published
Sept. 14, 2006, herein after referred to as Mei '832). Final Act.
5-7; App. Br. 4.
II. Claims 1-3, 7, 9-13, and 16 under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over Mei '832 in view of Yoshida (US
2003/0091891 Al, published May 15, 2003) and Mei (US
2005/0238948 Al, published Oct. 27, 2005, herein after
referred to as Mei '948). Final Act. 9-13; App. Br. 9.
III. Claim 14 under pre-AIA 35 U.S.C. § I03(a) as unpatentable
over Mei '832 in view of Yoshida, Mei '948, and Son (US
2009/0130515 Al, published May 21, 2009). Final Act. 15;
App. Br. 10.
IV. Claim 15 under pre-AIA 35 U.S.C. § I03(a) as unpatentable
over Mei '832 in view of Yoshida, Mei '948, and Hitomi (US
7,147,957 Bl, published Dec. 12, 2006). Final Act. 15-18;
App. Br. 10.
OPINION
After review of the respective positions Appellant presents in the
Appeal and Reply Briefs and the Examiner presents in the Final Action and
the Answer, we reverse the Examiner's prior art rejections of claims 1-3, 7,
3
Appeal2018-007196
Application 14/160,352
9-16 under 35 U.S.C. § 102(b) and under 35 U.S.C. § 103(a) for essentially
the reasons presented by Appellant. We add the following.
Independent claims 1 and 16 are directed to an electrode for a fuel cell
comprising a catalyst layer on the electrode substrate, wherein the catalyst
layer comprises a composite supporter, the composite supporter comprising
a spherical-shaped supporter and a graphitized carbon nanofiber fibrous
supporter.
Rejection under 35 USC§ 102 (b)
We refer to the Examiner's Final Action for a statement of the
rejection of independent claims 1 and 16. Final Act. 3-7; and Ans. 3-5.
Briefly, the Examiner finds Mei '832 discloses an electrode for a fuel cell
comprising all of the elements of the independent claims. Final Act. 3--4.
The Examiner finds that Mei '832 describes a carbon nanotube structure in
which the C-plane of the constituting graphite crystals is oriented along the
fiber length direction and into a so-called herringbone structure or the
platelet structure. Final Act. 5-7; Mei '832, Abstract and ,r 58. The
Examiner cites Merriam-Webster and finds that the term "graphitized" apart
from carbon nanotube is defined as converting something to a graphite
microstructure. Final Act. 3. Thus, the Examiner finds that Mei '832's
carbon nanotube structure anticipates the graphitized carbon nanofiber
structure limitation. Final Act. 3--4, 6.
Appellant argues Mei '832 discloses graphite carbon nanofibers that
are not the same as the claimed "graphitized carbon nanofiber." App. Br. 4,
8. Appellant argues "graphitized carbon nanofiber" is a term of art used to
refer to a specifically processed carbon nanofiber with special properties that
is different from Mei '832's disclosed graphite carbon nanofibers. App. Br.
4
Appeal2018-007196
Application 14/160,352
4, 8. Appellant further contends that Lim2 discloses a graphitized carbon
nanofiber (i.e., GPCNF) is manufactured using the conventional carbon
nanofiber (i.e., PCNF) as a starting material and subjecting the starting
material through high temperature treatment in an argon atmosphere. App.
Br. 5---6; Lim 1533. As Appellant argues, Lim also establishes the
differences between a graphitized carbon nanofiber and a conventional
carbon nanofiber based on the morphology of graphitized PCNF in Figures
2b and 3b compared to conventional PCNF of Figures 2a and 3a. App. Br.
5---6; Lim Figures 2a/b, 3a/b.
We agree with Appellant that the Examiner erred in the determination
that Mei '832 anticipates the claimed invention. Appellant has established
that the structures of a "graphitized carbon nano fiber" and a graphite carbon
nanofiber are different. As Appellant argues, Lim teaches that a
"graphitized carbon nanofiber" requires a treatment in addition to formation
of the carbon in the nanofiber. App. Br. 5; Lim 1533. Lim discloses platelet
CNF (PCNF) is converted to graphitized platelet CNF (GPCNF) by various
techniques such as graphitization at 2800°C; ball-milling for 72 hours; and
treatment in 10% HN03 for 24 hours. Lim 1534, Table 1. Thus, Lim
establishes "graphitized carbon nanofiber" is not the same as graphite carbon
nano fibers.
Accordingly, we reverse the Examiner's rejection of claims 1-3, 7, 9-
13, and 16 under 35 U.S.C. § 102(b) for the reasons the Appellant present
and we provide above.
2 Lim et al. (Surface Modification of Carbon Nanofiber with High Degree of
Graphitization, 108 J. Phys. Chem. B 1533-1536 (2004) hereinafter "Lim"),
submitted on July 24, 2017 as Exhibit-I.
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Appeal2018-007196
Application 14/160,352
Rejections under 35 US.C. § 103(a)
In light of our previous determination, the Examiner's prior art
rejection of claims 1-3, 7, 9-13, and 16 under 35 U.S.C. § 103(a) that relies
on Mei '832's graphite carbon nanofibers as being the same as the claimed
graphitized carbon nanofiber cannot stand.
Accordingly, we reverse the Examiner's rejection of independent
claims 1 and 16 under 35 U.S.C. 103(a) for the reasons presented by
Appellant and given above. We likewise reverse the Examiner's
obviousness rejections of dependent claims 2, 3, 7, 9-15 because the
premise of these rejections are based on the Examiner's unsupported
determination that Mei '832 discloses graphite carbon nanofibers as required
by the claimed invention. We need not reach the additional references relied
upon by the Examiner for these rejections because the Examiner did not rely
on them to address the deficiencies of Mei '832 noted above.
ORDER
The Examiner's prior art rejections of claims 1-3, 7, 9-16 under
35 U.S.C. §§ 102(b) and 103(a) are reversed.
REVERSED
6