Ex Parte Kurozumi et al

Patent Trial and Appeal Board

Mar 29, 2016

12675711 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/675,711 02/26/2010
23373 7590 03/31/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Tadatoshi Kurozumi
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.
Ql 17665 6155
EXAMINER
MCDERMOTT, HELENM
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T ADATOSHI KUROZUMI, TOSHIKAZU SHISHIKURA, and
RYUJI MONDEN 1
Appeal2014-003390
Application 12/675,711
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3-8, and 10-14 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 According to Appellants, the real party in interest is SHOW A DENKO
K. K. Appeal Br. 2.
Appeal2014-003390
Application 12/675,711
BACKGROUND
Appellants' invention relates to "electrocatalyst layers containing an
electrocatalyst with high oxygen reduction activity," and related membrane
electrode assemblies and fuel cells. Spec. i-f 7. Claim 1, the sole
independent claim, is representative:
1. An electrocatalyst layer comprising an electrocatalyst,
the electrocatalyst comprising a metal oxide obtained by
thermally decomposing a metal organic compound,
wherein the metal element forming the metal organic
compound is one selected from the group consisting of
niobium, titanium, tantalum and zirconium and the
electrocatalyst has an ionization potential in the range of
4.9 to 5.5 eV.
Appeal Br. 10 (emphasis added).
The Examiner rejects claims 1, 3-8, and 10-14 under 35 U.S.C.
§ 102(b) as anticipated by US 2002/0107140 Al [hereinafter Hampden-
Smith] (published August 8, 2002), or alternatively, under 35 U.S.C.
§ 103(a) as obvious over Hampden-Smith. Final Action 3-5.
Appellants argue claims 1, 3-8, and 10-14 as a group. See Appeal Br.
5-9. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 1. All the claims stand or fall
together.
DISCUSSION
The Examiner finds that Hampden-Smith teaches each of the
limitations of claim 1, including the use of either niobium, titanium,
tantalum, or zirconium as the metal element, except that it is "silent as to the
ionization potential of the electrocatalyst." Final Action 3. The Examiner
also finds that "the electrocatalyst in Hampden-Smith is structurally identical
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Appeal2014-003390
Application 12/675,711
to and formed by the identical process as the electrocatalyst of claim 1." Id.
Therefore, the Examiner concludes that "a prima facie case of either
anticipation or obviousness has been established." Id. (citing In re Best, 562
F.2d 1252, 1255 (CCPA 1977)).
Appellants argue that in Hampden-Smith,
none of the working examples employ any of Ni, Ti, Ta
or Zr. Thus, it cannot be said that the electrocatalyst in
Hampden-Smith is structurally identical to the claimed
electrocatalyst since the law requires that all of the
elements arranged or combined in the same way as
recited in the claim, within the four comers of the
document.
Appeal Br. 6 (citing Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359,
1370 (Fed. Cir. 2008)). Appellants also argue that "one skilled in the art
would have to pick and choose from the list of listed suitable metal oxides
and it is well established that such 'picking and choosing' has no place in a
rejection under 35 U.S.C. § 102." Id. Regarding the alternative§ 103
rejection, Appellants argue that the Examiner has not articulated a reason, or
any "motivation or teaching to specifically choose one of Ni, Ti, Ta or Zr
from the list of suitable metal oxides taught by the reference." Id. at 8
(citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)).
Hampden-Smith provides a list of metal elements that may be used in
the metal oxide precursor. See Hampden-Smith i-f 209. This list includes
niobium, titanium, tantalum, and zirconium, among 17 other elements. See
id. The disclosure in Hampden-Smith is more than the description of a
genus; it is the description of a number of specific embodiments, which
includes the four metal elements of claim 1. That these metal elements were
not also disclosed as part of Hampden-Smith's working examples does not
negate the fact that the each of the elements was specifically disclosed.
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Appeal2014-003390
Application 12/675,711
Therefore, there is no need for "picking and choosing" among metal
elements in order for the Examiner to find that Hampden-Smith anticipates
claim 12. Ans. 11, 12. Other than the ionization potential, which is
discussed below, Appellants have not pointed to any limitation of claim 1
that is not specifically set forth within the four comers of Hampden-Smith.
Nor have Appellants pointed to any rebuttal evidence sufficient to show that
selecting one of the four chemical elements recited by claim 1 would have
been nonobvious despite the specific mention of those elements in
Hampden-Smith.
Appellants also argue that "the Examiner has not provided a technical
basis for asserting that the materials of the reference would inherently
possess ... an ionization potential within the claimed range." Appeal Br. 7.
Appellants argue that to establish inherency, "the evidence must make it
clear that the characteristic or property is necessarily present in the prior
art." Id. (citing MPEP § 2112(IV)). Regarding the alternative§ 103
rejection, Appellants argue that
not all of the listed suitable metal oxides have an
ionization potential within the claimed range and there is
no other teaching or suggestion within the reference that
would lead one of ordinary skill in the art specifically to
one of the claimed metal oxides amongst all listed metal
oxides which do and do not have the required ionization
potential as presently claimed.
2 It has been established that specific examples of the claimed subject matter
are not necessary to establish anticipation. Rather, to anticipate, one skilled
in the art must be able to "at once envisage" the claimed subject matter in
the prior art disclosure. In re Petering, 301F.2d676, 681(CCPA1962).
One of ordinary skill would have immediately envisaged each metal element
of Hamden-Smith's explicit list for use in its metal oxide precursor.
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Appeal2014-003390
Application 12/675,711
Id. at 8-9.
The Examiner's technical basis for asserting that the claimed
electrocatalyst layer would have an ionization potential in the range of claim
1 is that "the electrocatalyst in Hampden-Smith is structurally identical to
and formed by the identical process as the electrocatalyst of claim 1." Final
Action 3. The finding of substantial identity with the prior art, either in
terms of its structure or the process by which it is made, is sufficient to
support the Examiner's prima facie determination of anticipation and
obviousness. See In re Best, 562 F.2d 1252, 1255 (Fed. Cir. 1997)
("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."). Appellants have not directed our attention to any evidence that
the Examiner materially erred in determining that when niobium, titanium,
tantalum, or zirconium is selected, Hampden-Smith specifically describes
substantially the same structure, and the substantially same process of
production, as that defined by claim 1.
Appellants have the burden to rebut the Examiner's prima facie case.
However, Appellants have not pointed to any evidence sufficient to meet
that burden. For example, Appellants have not shown that an electrocatalyst
with the structure of that disclosed in Hampden-Smith, or made by the same
process, will not necessarily have an ionization potential in the range of
claim 1 when niobium, titanium, tantalum, or zirconium is selected as the
metal element in the metal oxide precursor.
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Appeal2014-003390
Application 12/675,711
For the above reasons, we affirm the Examiner's decision to reject
claims 1, 3-8, and 10-14 as being anticipated under 35 U.S.C. § 102(b) and
as being obvious under 35 U.S.C. § 103(a) in view of Hampden-Smith.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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