Ex Parte Barnwell et al

Patent Trial and Appeal Board

Feb 1, 2018

12921289 (P.T.A.B. Feb. 1, 2018)

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.
12/921,289 12/10/2010 David Edward Barnwell JMYT-487US 1697
23122 7590 02/05/2018
RATNFRPRFSTTA EXAMINER
2200 Renaissance Blvd DOVE, TRACY MAE
Suite 350
King of Prussia, PA 19406 ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
02/05/2018 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):
PCorrespondence @ ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID EDWARD BARNWELL,
ADAM JOHN HODGKINSON, and THOMAS ROBERTSON RALPH
Appeal 2017-000558
Application 12/921,289
Technology Center 1700
Before KAREN M. HASTINGS, MONTE T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 11, 12, 15, 19, 23—29, 31—35, and 37
under 35 U.S.C. § 103(a) over the combined prior art of Morimoto (JP 2001-
118591 A, Apr. 27, 2001; as translated) and Kitamura (US 2009/0075147
Al, Mar. 19, 2009).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is identified as Johnson Matthey Fuel Cells
Limited (Appeal Br. 1).
Appeal 2017-000558
Application 12/921,289
Independent claim 1 is illustrative of the subject matter on appeal:
1. An ion-conducting membrane structure comprising (i) a
perfluorinated sulphonic acid ion-conducting membrane wherein said
membrane has a first face and a second face, (ii) a first hydrogen peroxide
decomposition catalyst which is a metal oxide and (iii) a first radical
scavenger which is a regenerative antioxidant, wherein the first hydrogen
peroxide decomposition catalyst is embedded within the ion-conducting
membrane in an amount from 0.001 to 5% by weight of the ion-conducting
membrane structure and the regenerative antioxidant is selected from the
group consisting of hindered amine stabilisers and hindered amine light
stabilisers.
ANALYSIS
Accordingly, we select claim 1 as representative. Upon consideration
of each of Appellants’ contentions, we find that the preponderance of
evidence supports the Examiner’s conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied prior art. We sustain the
Examiner’s § 103 rejection essentially for the reasons set out by the
Examiner in the Answer. We add the following primarily for emphasis.
Appellants argue the claims as a group and do not separately argue
any claims (Appeal Br. 3—6; Reply Br. 1 4). Accordingly, all the claims
stand and fall together.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
2
Appeal 2017-000558
Application 12/921,289
expected to draw therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed.
Cir. 1992).
Appellants’ main argument is that there is no reason to use the
solution of providing oxidation resistance of Morimoto/Kitamura to a PFSA
membrane, as Morimoto teaches that PFSA membranes are already resistant
to oxidation, and thus the inclusion of the claimed radical scavengers would
thus be unnecessary (e.g., Appeal Br. 5—6). Appellants’ argument is not
persuasive of reversible error.
Even assuming arguendo that Appellants are correct that Morimoto’s
inventive membrane that includes a radical scavenger does not encompass
the claimed PFSA membrane, there is no dispute that PFSA membranes are
known electrolyte membranes for fuel cells as discussed in Morimoto
(Morimoto 117; Spec. 2 (“[conventional ion-conducting membranes used”
in fuel cell are formed from PFSA ionomers)). While Morimota may imply
that PFSA membranes do not need the additional protection afforded by the
inclusion of a radical scavenger as much as other electrolyte membrane
materials (Appeal Br. 5), this does not mean it would not have been prima
facie obvious to include such a scavenger. Morimoto does indeed indicate
that PFSA membranes undergo some small amount of oxidation over a
period of time (Morimoto 117). Whether a reference teaches away from a
claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005). Notably, our reviewing court has determined that a
reference can distinguish prior art in order to show the novelty of an
invention without teaching away from combining the prior art with the
invention disclosed in the reference. See Ricoh Co., Ltd. v. Quanta
Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008).
3
Appeal 2017-000558
Application 12/921,289
As the Examiner pointed out, one of ordinary skill in the art would
have reasonably expected that the radical scavengers of Morimoto/Kitamura
would have also provided improved oxidation resistance against peroxide (as
formed in side reaction of the fuel cell operation) for any known solid
polymer electrolyte of a PEM fuel cell (Ans. 6). Appellants’ argument that
the Examiner is “merely expressing a personal opinion” in this regard (Reply
Br. 3) is not persuasive of error. One of ordinary skill would have readily
inferred that the radical scavengers would still function in the admitted prior
art PFSA membrane. KSR Int’l Co., 550 U.S. at 417 (“the predictable use of
prior art elements according to their established functions” is normally prima
facie obvious). “[A] reasonable expectation of success, not absolute
predictability” supports a conclusion of obviousness. In re Longi, 759 F.2d
887, 897 (Fed. Cir. 1985).
Accordingly, for all the reasons stated above and in the Answer, and
taking into account “the inferences and creative steps that a person of
ordinary skill in the art would employ,” KSR Int’l Co., 550 U.S. at 418,
Appellants have not shown reversible error in the Examiner’s obviousness
determination.
Accordingly, we affirm the Examiner’s prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner’s § 103 rejection is affirmed.
4
Appeal 2017-000558
Application 12/921,289
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
5