Ex Parte Nakano et al

Patent Trial and Appeal Board

Sep 28, 2017

12050397 (P.T.A.B. Sep. 28, 2017)

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.
12/050,397 03/18/2008 Yoshihiko Nakano 323941US0RD 8634
22850 7590 10/02/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIHIKO NAKANO, JUN TAMURA,
and KAZUHIRO YASUDA1
Appeal 2017-000731
Application 12/050,397
Technology Center 1700
Before BEVERLY A. FRANKLIN, MARKNAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Kabushiki Kaisha Toshiba.
Appeal 2017-000731
Application 12/050,397
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—3, 5—8 and 17—22. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. A supported catalyst, consisting of
a carrier being a hydrophilic metal oxide A,
a catalytic metal supported on the carrier, and
a metal oxide B supported on at least a part of the surface of the
carrier;
wherein the catalytic metal is supported in an amount ranging
from 10% by weight to 80% by weight, based on the weight of the
supported catalyst, wherein the metal oxide B is supported in an
amount ranging from 0.1 % by weight to 20% by weight, based on the
weight of the supported catalyst,
wherein the metal oxide B exhibits superstrong acidity on the
surface of said carrier to impart proton conductivity to the supported
catalyst, and
wherein the catalytic metal comprises platinum particles or
particles of an alloy of at least one element selected from platinum
group element, other than platinum, of the Periodic Table of the
Elements, a fourth to sixth period transition metal of the Periodic
Table of the Elements, and combination thereof; with platinum.
THE REJECTIONS
1. Claims 1—3, 5, 17—19, 21 and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Obayashi in view of Chattha.
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Application 12/050,397
2. Claims 6—8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Obayashi in view of Chattha and in further view
of Nakano.
3. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Obayashi in view of Chattha and in further view
of Ishikawa.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence supports the Examiner’s findings and conclusion that the subject
matter of Appellants’ claims is unpatentable over the applied art.
Accordingly, we sustain each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the Final Office Action and in the
Answer, and add the following for emphasis.
Rejections 1—3
It is the Examiner’s position that Obayashi teaches a supported
catalyst, including a carrier formed of titania (metal oxide A) and tungsten
oxide (metal oxide B), carrying ruthenium as the catalytic metal (Abstract).
The Examiner finds that “the amount of ruthenium is from 0.02 to 10 parts
on the basis of 100 parts of the carrier ([0027]),” and that “[t]he amount of
tungsten oxide is 9 parts on basis (Table 3, catalyst 9).” Ans. 2. The
Examiner states that the disclosed weight percentage range overlaps the
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Application 12/050,397
claimed ranges and therefore the claimed range would have been obvious.
Id.
With regard to the argument that metal oxide B exhibits superstrong
acidity, the Examiner states that Appellants prefer metal oxide B to be an
oxide of tungsten (Spec. 5), which is taught by Obayashi (Abstract). Id. at 3
The Examiner states that where the claimed and prior art product(s) are
identical or substantially identical, or are produced by identical or
substantially identical process(es), the burden of proof is on applicant to
establish that the prior art product(s) do not necessarily or inherently possess
the characteristics of the instantly claimed product(s). Id. at 2.
The Examiner states that Obayashi does not teach using platinum as
catalytic metal. Ans. 3.
The Examiner relies upon Chattha, directed to tungsten modified NOx
traps, for teaching that a precious metal such as platinum with tungsten
oxide is useful for trapping nitrogen oxide material. Chattha, col. 4,11. 20-
30. Ans. 3.
The Examiner concludes that it would have been obvious to have used
the platinum catalytic metal of Chattha, with ruthenium, or in place of
of ruthenium of Obayashi, motivated by the fact that it would yield expected
results of trapping nitrogen oxide material (Chattha, col. 4,11. 20-30).
Ans. 3.
It is Appellants’ position that the Declaration (submitted on
September 22, 2014) demonstrates the advantages and outstanding
properties of their claimed support. Appeal Br. 5 and 6.
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Application 12/050,397
In response, the Examiner states that the Declaration is unpersuasive
for the reasons presented on page 6 of the Answer. Therein, the Examiner
states, inter alia, that the Declaration does not compare the closest prior art,
and merely states that it has comparable performance to the use of NAFION,
an unrelated organic material, not an inorganic material as claimed. We
agree. Appellants can rebut aprima facie case of obviousness by showing
“unexpected results,” i.e., showing that the claimed invention possesses a
superior property or advantage that a person of ordinary skill in the art
would have found surprising or unexpected. See In re Geisler, 116 F.3d
1465, 1469 (Fed. Cir.1997) (quoting In re Soni, 54 F.3d 746, 750 (Fed. Cir.
1995). However, the burden rests with Appellants to establish, inter alia, (1)
that the comparisons are to the disclosure of the closest prior art, and (2) that
the supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the
instant case, Appellants have not met this burden for the reasons provided by
the Examiner in the record.
Applicants also argue that Obayashi fails to teach a metal oxide
supported on at least a part of the surface of the carrier which exhibits
superstrong acidity. Appeal Br. 5. We agree with the Examiner’s stated
reply made on page 6—7 of the Answer. Therein, the Examiner reiterates
that when a reference discloses all the limitations of a claim, except
a property or function, and the Examiner cannot determine whether or not
the reference inherently possesses properties which anticipate or renders
obvious the claimed invention, the burden rest with Appellants to make a
showing. In re Fitzgerald, 619 F.2d 67 (CCPA 1980). The Examiner
explains that Obayashi teaches a small amount of tungsten oxide mixed with
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Application 12/050,397
titania where the titania reads on the carrier, and at least some of the
tungsten oxide would be present on at least a part of the surface of the
titania. Obayashi, | [0012], Ans. 6. The Examiner states that because
tungsten oxide is one of the specifically preferred metal oxide B metals (as
disclosed by Appellants to have this superstrong acidity), it follows that such
a property would be inherent in Obayashi. Ans. 6—7. We agree.
On pages 6—7 of the Appeal Brief, Applicants discuss the secondary
references of Chattha and Nakano, but, as the Examiner points out on page 7
of the Answer, the arguments are unpersuasive because Appellants argue the
secondary references individually, and one cannot show nonobviousness by
attacking references individually where the rejections are based
on combinations of references. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In
re Keller, 642 F.2d413, 425 (CCPA 1981).
In view of the above, we affirm the Examiner’s rejections.
DECISION
Each rejection is affirmed.
TIME PERIOD
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).
ORDER
AFFIRMED
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