Robert Mason. Darling et al.

Patent Trials and Appeals Board

Jul 17, 2019

14131379 - (D) (P.T.A.B. Jul. 17, 2019)

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.
14/131,379 01/07/2014 Robert Mason Darling P99279US.0/130609.544USPC 4700
500 7590 07/17/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
CARRICO, ROBERT SCOTT
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT MASON DARLING, SHAMPA KANDOI,
and JONATHAN DANIEL O’NEILL
____________________

Appeal 2018-008135
Application 14/131,379
Technology Center 1700
____________________

Before JAMES A. WORTH, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 14/131,379

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1–3, 6–11, 13–16, and 18–24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED SUBJECT MATTER
The claims are directed to a low platinum load electrode. Spec. 1:25–
30.3 Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An electrode for an electrochemical cell, the electrode
comprising:
platinum catalysts;
carbon support particles supporting the platinum catalysts;
and
an ionomer connecting the platinum catalysts, wherein the
electrode has a platinum loading less than about 0.2 mg/cm2 and
an ionomer-to-carbon ratio between about 0.5 and about 0.9,
wherein a metal weight percent of the platinum catalysts
supported by the carbon support particles is between 40% and
60%, and
wherein the electrode has a thickness between about 2
microns and about 5 microns.
Claims Appendix (Br. 12).

1 The real party in interest is identified as “Audi AG.” Appeal Brief of
January 22, 2018 (“Br.”), 1.
2 Final Office Action of July 26, 2017 (“Final Act.”). In this opinion, we also
refer to the Examiner’s Answer of May 17, 2018 (“Ans.”). No Reply Brief
was filed.
3 Application No. 14/131,379 filed January 7, 2014 (“Spec.”).
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Application 14/131,379

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REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Mussell et al.
(hereinafter “Mussell”)
Hirano et al.
(hereinafter “Hirano”)
US 5,882,810

US 6,103,412
Mar. 16, 1999

Aug. 15, 2000
Sayre et al.
(hereinafter “Sayre”)
US 2008/0248362 A1 Oct. 9, 2008

REJECTIONS
Claims 1–3, 6–11, 13–16, 18–20, 23, and 24 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Mussell in view of
Hirano.4 Final Act. 3.
Claims 21 and 22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Mussell in view of Hirano, and further in view of
Sayre. Final Act. 7.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to

4 Although claim 12 is included in the Examiner’s discussion of the
rejection, the Examiner also acknowledges that claim 12 was canceled by an
amendment filed on April 7, 2017. Final Act. 2, 3.
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identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellants’
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s § 103 rejection for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
In rejecting claim 15, the Examiner finds that Mussell teaches or
suggests an electrode having the recited components except “a metal weight
percent of the platinum catalysts supported by the carbon support particles”
which is “between 40% and 60%” for which the Examiner relies on Hirano.
Final Act. 3–4. Specifically, the Examiner finds that Hirano describes that
“the weight ratio of the platinum to the carbon black is at most about 60%.”
Final Act. 4 (citing Hirano 6:14–15). Based on the combined prior art
teaching including Hirano’s teaching that the platinum/carbon weight ratio is
related to catalyst thickness and “[b]y reducing the thickness of the reaction
region, a higher reaction efficiency and higher cell performance can be
maintained,” the Examiner concludes that it would have been obvious to a
skilled artisan “to have provided a metal weight percent as claimed so that
appropriate thickness is maintained to achieve higher reaction efficiency and
higher cell performance.” Id. (citing Hirano 5:58–6:19).
Appellants first argue that the rejection should be reversed because the
catalyst in Mussell has a preferred weight percentage of 10 to about 30
percent which teaches away from the recited metal weight percentage. Br. 9.

5 Appellants do not present separate arguments for claims 2, 3, 6–11, 13–16,
and 18–24 and they therefore stand or fall with claim 1. See Br. 8–11; see
also 37 C.F.R. § 41.37(c)(1)(iv) (2013).
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“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1131 (Fed. Cir. 1994). In this case, the evidence in the record
does not support Appellants’ argument that a skilled artisan would be
discouraged from all metal weight percentage other than the 10 to about 30
percentage described as preferred in Mussell. We are therefore not
persuaded by this argument.
Appellants next argue that the Examiner reversibly erred in evaluating
Hirano because Hirano discloses an electrode having a platinum to carbon
weight ratio of 2 to 1 or 67% which is outside the recited range. Br. 9. We
note that, however, unlike the recited electrode which has a thickness of
about 2 microns to about 5 microns, the 2 to 1 weight ratio embodiment
Appellants refer to has a thickness of 10 microns. Hirano at 6:8–10; see also
Br. 10 (acknowledging that Hirano describes a catalyst embodiment having a
thickness of 10 microns and “at that thickness the metal weight percent of
platinum is 67%). Appellants do not address Hirano’s undisputed teaching
that in other prior art embodiments, “the weight ratio of the platinum to
carbon is at most about 60%.” Hirano 6:14–15. Because Appellants do not
adequately explain why we should ignore the undisputed teaching in Hirano
on which the obviousness rejection is based, we discern no reversible error
here.
Appellants also argue that Hirano teaches away from the recited
electrode having “a thickness between about 2 microns and about 5
microns.” Br. 10. In support, Appellants point to Hirano’s teaching that “a
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limit thickness of the catalyst layer would be about 10 µm” as “[a] smaller
catalyst layer will not be able to maintain the desired size range of the
platinum particles.” Hirano 6:11–16.
The electrode recited in claim 1 does not require any particular size of
the platinum particles. Appellants’ argument does not sufficiently explain
why a skilled artisan would be discouraged from using Hirano’s teaching for
the recited metal weight ratio when Hirano describes the specific catalyst
thickness “in order to maintain the desired size range of the platinum
particles.” Hirano 6:16–19. We are not persuaded that reversible error has
been identified here.
Appellants also argue that the Examiner reversibly erred here because
“there is no supportable rationale” for combining the references. Br. 10.
Appellants, however, do not address the Examiner’s rationale that it would
have been obvious to a skilled artisan “to have provided a metal weight
percent as claimed so that appropriate thickness is maintained to achieve
higher reaction efficiency and higher cell performance. Compare id., with
Final Act. 4 (citing Hirano 5:58–6:19 for various teachings regarding
catalyst thickness, platinum/carbon weight ratio, reaction efficiency, cell
performance and other parameters); see also Ans. 4 (stating that based on the
prior art teachings, it would have been obvious for the skilled artisan “to
have provided a metal weight percentage as claimed to achieve higher
voltage, decreased internal resistance, increased cell performance, and
higher reaction efficiency”).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In this case,
Appellants do not address the Examiner’s reasoning, nor Hirano’s teaching
in support of the Examiner’s reasoning, we discern no reversible error in this
aspect of the obviousness analysis.
Lastly, we note that Appellants state the recited electrode
“unexpectedly provides an electrode in which the effect of individual
drawbacks of certain characteristics are mitigated while the benefits of the
combination of electrode characteristics as a whole are amplified to provide
an efficient low platinum electrode.” Br. 9. To the extent that this statement
is an argument of unexpected results, “it is well settled that unexpected
results must be established by factual evidence. ‘Mere argument or
conclusory statements in the specification does not suffice.’” In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984)). In this case, Appellants do not support the
unexpected results argument (if any) with factual evidence (see Br. 9), and
we accordingly are not persuaded that unexpected results have been shown.

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED