Ex Parte Kwak et al

Patent Trial and Appeal Board

Oct 17, 2018

11696700 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/696,700 04/04/2007
23363 7590 10/19/2018
Lewis Roca Rothgerber Christie LLP
POBOX29001
Glendale, CA 91209-9001
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Chan Kwak
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.
59220/P849 4941
EXAMINER
BARROW, AMANDA J
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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 CHAN KW AK, ALEXEY ALEXANDROVICHSEROV,
CHANG-BONG LEE, and SI-HYUN LEE
Appeal2018---000845
Application 11/696,700
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREYB. ROBERTSON, and
BRIAND. RANGE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 3-7, and 9-15. (Appeal Br. 3.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Samsung SDI Co., Ltd. as the real party in interest.
(Appeal Brief, filed August 31, 2012, hereinafter "Appeal Br.," 1.)
Appeal2018---000845
Application 11/696,700
THE INVENTION
Appellants state that the invention relates to a stack for a direct
oxidation fuel cell and a direct oxidation fuel cell system. (Spec. ,r 2.) The
Specification discloses that in direct oxidation fuel cells, there is a fuel
cross-over problem where fuel that is present at an anode, flows through a
polymer electrolyte membrane and into a cathode, which deteriorates the
catalyst, for example a platinum catalyst, present at the cathode. (Id. ,r,r 25,
26.) The Specification describes employing a selective catalyst, which is
selectively active for reduction of an oxidant but less active than a platinum
catalyst, in combination with a platinum catalyst to maximize performance.
(Spec. ,r,r 27, 28.) The selective catalyst is employed in areas where there is
high fuel cross-over. (Spec. ,r 47.)
Claim 1, as reproduced from the Claims Appendix, is representative
(emphasis added):
1. A stack for a direct oxidation fuel cell comprising:
at least one membrane-electrode assembly
comprising an anode and a cathode facing each other and
a polymer electrolyte membrane interposed
therebetween, wherein the anode and the cathode each
comprise an electrode substrate and a catalyst layer on
the electrode substrate, and the cathode catalyst layer
comprises a platinum-based catalyst for reduction of an
oxidant, and a selective catalyst being selectively active
for reduction of the oxidant; and
a separator positioned at both sides of the
membrane-electrode assembly,
wherein the selective catalyst comprises a carrier
and an active material supported on the carrier; the active
material being selected from the group consisting of: an
M-N-based compound, where Mis a metal selected from
the group consisting of Fe, Co, Ni, Cu, and combinations
thereof; a Ru-Ch-based compound, where Ch is an
2
Appeal2018---000845
Application 11/696,700
element selected from the group consisting of S, Se, Te,
and combinations thereof; and combinations thereof, and
wherein the amount of the selective catalyst at a
first area corresponding to a fuel inlet of the separator is
greater than the amount of the platinum-based catalyst at
the first area, and the amount of the platinum-based
catalyst at a second area corresponding to a fuel outlet
of the separator is greater than the amount of the
selective catalyst at the second area.
(Appeal Br. 8, Claim Appendix.)
REJECTIONS
The Examiner rejected claims 1, 3-7, and 9-15 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. (Final Rejection, mailed April 12, 2012, hereinafter "Final
Act.," 2-3; Subsequent Examiner's Answer, mailed January 3, 2013,
hereinafter "Ans.," 3--4.)
ISSUE
The Examiner found that the following added limitation to claim 1
lacks written description support:
(Ans. 3.)
wherein the amount of the selective catalyst at a
first area corresponding to a fuel inlet of the separator is
greater than the amount of the platinum-based catalyst at
the first area, and the amount of the platinum-based
catalyst at a second area corresponding to a fuel outlet of
the separator is greater than the amount of the selective
catalyst at the second area.
In particular, the Examiner found that the Specification does not
disclose an embodiment "wherein the amounts of the selective catalyst and
3
Appeal2018---000845
Application 11/696,700
platinum-based catalyst are compared to one another." (Ans. 3.) The
Examiner also found that the Specification does not disclose a particular
amount of the platinum-based catalyst in the first area or a particular amount
of selective catalyst in the second area. (Ans. 4.) The Examiner
acknowledged that the Specification provides support for an embodiment
where (1) only the selective catalyst is present in the first area, (2) no
platinum-based catalyst is present in the first area, (3) only the platinum-
based catalyst is present in the second area, and (4) no selective catalyst is
present in the second area. (Ans. 7-8.) The Examiner also acknowledged
that the Specification discloses a concentration gradient, where the platinum-
based catalyst increases from a fuel inlet of a separator to a fuel outlet, and a
selective catalyst that has a concentration gradient that decreases from a fuel
inlet of a separator to a fuel outlet, but the Examiner stated that there is no
disclosure of the concentrations of each catalyst within the gradients or of
the comparative distribution of the catalysts to one another. (Ans. 4.)
Appellants contend that one of ordinary skill in the art would have
understood that Appellants were in possession of the claim limitations given
the disclosure in the Specification. (Appeal Br. 3---6 ( citing Specification
,r,r 44, 45, 50, and 52); Reply Brief, filed February 8, 2013, hereinafter
"Reply Br.," 2-3.)
The dispositive issue in this appeal is: Did the Examiner err in
finding that the Specification does not provide support for the amounts of
selective catalyst and platinum-based catalyst recited in the claims?
4
Appeal2018---000845
Application 11/696,700
DISCUSSION
35 U.S.C. § 112, first paragraph states that "[t]he specification shall
contain a written description of the invention."
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at
issue. See Fujikawa v. Wattanasin, 93 F.3d 1559, 1570,
39 USPQ2d 1895, 1904 (Fed. Cir. 1996). Nonetheless,
the disclosure must ... convey with reasonable clarity to
those skilled in the art that . . . [ the inventor] was in
possession of the invention. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed.
Cir. 1991 ). Put another way, one skilled in the art,
reading the original disclosure, must immediately discern
the limitation at issue in the claims. Waldemar Link
GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558, 31
USPQ2d 1855, 1857 (Fed. Cir. 1994). That inquiry is a
factual one and must be assessed on a case-by-case basis.
See Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116.
Purdue Pharm. L.P. v. Paulding Inc., 230 F.3d 1320, 1323-24 (Fed. Cir.
2000).
We agree with Appellants that one of ordinary skill in the art would
have immediately discerned that Appellants were in possession the
limitation at issue. Specifically, the Specification describes that the selective
catalyst and the platinum-based catalyst can be included in the cathode
catalyst layer "in various ways." (Spec. ,r 43.) The Specification describes
that both catalysts can be mixed and coated all over a cathode catalyst layer
and also describes that a first area corresponding to a fuel inlet may be
coated with only a selective catalyst while a second area corresponding to an
outlet is coated with only a platinum-based catalyst. (Spec. ,r,r 44, 45, 50.)
In addition to the description discussed above, the Specification describes
5
Appeal2018---000845
Application 11/696,700
that the cathode catalyst layer may be divided into several areas, where the
amount of selective catalyst may be gradually reduced from an inlet area to
an outlet area, while the amount of platinum-based catalyst is gradually
increased. (Spec ,r 52.) The Specification also describes an arrangement
where catalysts are included based on fuel flow. (Spec. ,r 54.)
As discussed above, the Examiner has already acknowledged that the
Specification provides written description support for an embodiment where
there is no platinum catalyst present in the first area and no selective catalyst
present in the second area. We are also of the view that one of ordinary skill
in the art would have understood from the Specification that Appellants were
in possession of embodiments in which both catalysts are present in the
cathode catalyst layer, where there is more selective catalyst in a first area
corresponding to a fuel inlet (subject to more cross-over) than platinum-
based catalyst, and where in a second area corresponding to a fuel outlet
(subject to less cross-over) there is more platinum-based catalyst than
selective catalyst.
This arrangement would be immediately appreciated by one of
ordinary skill in the art, when considering that the Specification discloses the
presence of both catalysts all over the cathode catalyst layer, the relationship
between the use of each catalyst relative to areas subject to more and less
fuel cross-over, and the relative activities of each catalyst in the reduction
reaction. The Examiner appears to be reading the specific embodiments
disclosed in the Specification in isolation, rather than what one of ordinary
skill in the art would have understood from reading the Specification as a
whole.
6
Appeal2018---000845
Application 11/696,700
Accordingly, we reverse the Examiner's rejection of claims 1, 3-7,
and 9-15 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
DECISION
We reverse the Examiner's decision rejecting claims 1, 3-7, and 9-15.
REVERSED
7