Ex Parte Schmidt et al

Patent Trial and Appeal Board

Feb 14, 2017

10589844 (P.T.A.B. Feb. 14, 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.
10/589,844 05/04/2007 Thomas Schmidt 074032-0042-US-287205 2786
123223 7590 02/16/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
ARCIERO, ADAM A
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
02/16/2017 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):
IPDocketWM @ dbr.com
penelope. mongelluzzo @ dbr. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SCHMIDT, OEMER UENSAL,
MATHIAS WEBER, ISABEL KUNDLER, GORDON
CALUNDANN, and JOCHEN BAURMEISTER
Appeal 2015-007666
Application 10/589,844
Technology Center 1700
Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1, 6, 8—22, 24—29, 31—34, 36—38, and 40-42. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a membrane electrode unit. Claim 1 is
illustrative:
1. A membrane electrode unit comprising
Appeal 2015-007666
Application 10/589,844
A) at least one polymer membrane which consists essentially
of at least one alkaline polymer with at least one nitrogen
atom, the polymer membrane including at least one
mineral acid which is phosphoric acid,
B) at least two electrodes one which is a cathode and one is
an anode,
wherein at least the cathode side includes a catalyst
consisting essentially of
i. platinum and
ii. Ni. [sic, Ni,]
wherein the alkaline polymer is a polyimidazole, a
polybenzimidazole, a polybenzothiazole, a polybenzoxazole, a
polytriazole, a polyoxadiazole, a polythiadiazole, a
polypyrazole, a polyquinoxaline, a poly(pyridine), a
poly(pyrimidine) or a poly(tetrazapyrene) and said catalyst is
loaded with 0.01 to 20g/m2 Pt based on the surface area of the
polymer membrane and
said polymer membrane has proton conductivity of at least
O.lS/cm A [sic, at] 120°C.
The References
References relied upon by the Examiner
Keck US 5,068,161 Nov. 26, 1991
Buchanan1 US 5,759,944 June 2, 1998
Calundann US 2004/0096734 A1 May 20, 2004
Kiefer US 2005/0084727 A1 Apr. 21,2005
Bjerrum WO 01/18894 A2 Mar. 15,2001
Reference relied upon by the Appellants
Chen US 2008/0317946 A1 Dec. 25, 2008
1 Buchanan (which is assigned to the same assignee as Keck) is relied upon
by the Examiner (Ans. 3) (but not included in the statement of the rejections)
and addressed by the Appellants (Reply Br. 4). Accordingly, we also
address that reference.
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Application 10/589,844
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
6, 8—22, 24, 28, 29, 31—33, 36, 37, and 40-42 over Bjerrum in view of Keck,
claims 2 and 25—27 over Bjerrum in view of Keck and Kiefer, and claims 34
and 38 over Bjerrum in view of Keck and Calundann.
OPINION
We affirm the rejections.
The Appellants argue the claims in two groups: claims 1, 6, 8—22, 24—
29, 31—34, 36—38, 40, and 41, and 2) claim 42 (App. Br. 11—26). Although
the Appellants address some of the claims under separate headings and an
additional reference is applied in the rejection of some of them, the
Appellants do not provide a substantive argument for the separate
patentability of those claims (App. Br. 21—25). We therefore limit our
discussion to claim 42 and one claim in the first group, i.e., claim 1.
Claims 6, 8—22, 24—29, 31—34, 36—38, 40, and 41 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 1
Bjerrum discloses a membrane electrode assembly comprising a
phosphoric acid-doped polybenzimidazole membrane (p. 1,11. 5—12; p. 14,
11. 1—23) and a catalyst which can be “noble metals from Group VIII of the
periodic table, particularly platinum (Pt), ruthenium (Ru), alloys of Pt-Ru,
etc.” (p. 16,11. 22—24) or a composite catalyst “e.g. platinum with chromium,
titanium, tungsten or the like” (p. 16,11. 24—25). “The loading of
polybenzimidazole or polybenzimidazole blend in the catalyst layer of
electrodes is preferably around 0.2-2.5 mg/cm2. The electrodes made in this
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Application 10/589,844
way have a noble metal (e.g. platinum) loading of 0.1-1.0 mg/cm2, such as
0.2-0.8 mg/cm2” (p. 17,11. 14-17).
Keck discloses an electrocatalytic material which “comprises an alloy
of platinum with another element, supported on a conductive carbon
support” (Abstract). The especially preferred alloying metals are “one or
more of Cr, Mn, Co and Ni” (col. 3,11. 24—25). Numerous Pt/Ni alloys are
exemplified (Examples 2, 4, 5, 8—12). Keck states that “[although the
material according to the invention has particular application in PAFC
[phosphoric acid fuel cell], and is described herein in detail with reference to
this use, it is clear to us that the materials have uses in other fuel cells or for
other applications” (col. 4,11. 50-55).
Buchanan discloses “an electrocatalyst material for use in an acid
electrolyte environment, comprising platinum alloyed with at least one
alloying element and gold, supported on a conductive support, the atomic
ratio of platinum to the alloying element being in the range of 80:20 to
20:80, and wherein the gold is present in a loading of 0.0001 up to but not
including 3 wt % of the total catalyst weight” (col. 1,11. 47—53). The
especially preferred alloying elements are “one or more of Cr, Mn, Co and
Ni” (col. 1,11. 65—67). Two Pt/Ni alloys are exemplified (Examples 1, 2).
Buchanan states that “[t]he electrocatalyst materials described here will be
of use in the phosphoric acid fuel cell (PAFC) and in the other acid
electrolyte fuel cells, for example in the solid polymer fuel cell (SPFC), also
known as the proton exchange membrane fuel cell (PEMFC), in which the
electrolyte comprises a solid proton-conducting polymer membrane
commonly based on perfhiorosulphonic acid materials. The materials
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Application 10/589,844
described here will also be of use [in] other acid electrolyte environments in
addition to the acid electrolyte fuel cell” (col. 2,11. 48—56).
The Appellants assert that Bjerrum’s disclosure that at the normally
preferred 2.5—10.0 phosphoric acid doping level the membrane’s electrical
conductivity can be 0.001-0.08 S/cm at around 150 -C (p. 14,11. 13—17)
teaches away from the Appellants’ claim 1 ’s recited range of at least
0.1 S/cm at 120 °~C (App. Br. 14).
Bjerrum obtains that electrical conductivity at a doping level which,
Bjerrum discloses, is dependent upon “doping temperature (from 25 to
150-C)” (p. 14,11. 7—9). The Appellants do not address the difference
between Bjerrum’s 150 -C temperature (p. 14,1. 17) and the Appellants’
claim 1 ’s recited 120 -C temperature. Moreover, Bjerrum discloses that at
high doping levels the electrical conductivity can be as high as 0.13 S/cm
and that although “the high doping level results in a certain reduction in the
mechanical strength of the membrane which will limit its application in a
fuel cell” (p. 14,11. 17—20), “[t]his phenomenon may be irrelevant for some
applications, but may be prohibitive for other applications” (p. 14,11. 19-
23). That disclosure would have led one of ordinary skill in the art, through
no more than ordinary creativity, to achieve the higher electrical
conductivity when mechanical strength reduction is irrelevant. See KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ”). Also, it appears that
using Ni as Bjerrum’s alloying metal as suggested by the combination of
references would provide the same electrical conductivity as the Appellants’
Pt/Ni catalyst. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From
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the standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.”).
The Appellants assert that in view of Bjerrum, one of ordinary skill in
the art would “select mixed catalysts choosing metals from difference [sic]
groups of the table of elements (Pt is group #10 in the periodic table of the
elements, Cr is #6, W is #6 and Ti is #4) and would require the same high
catalyst loads as known for liquid electrolyte” (Reply Br. 2).
The Appellants do not point to any disclosure in Bjerrum which
indicates that the alloying metal should be in a different periodic table group
than platinum, and do not point to support in Bjerrum for the assertion that
Bjerrum would have led one of ordinary skill in the art to use the same high
catalyst loads as known for liquid electrolytes. The Appellants have
provided mere attorney argument, and such arguments of counsel cannot
take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield,
571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
The Appellants assert that Bjerrum uses a phosphoric acid-doped solid
polymer electrolyte membrane whereas Keck and Buchannan are limited to
a liquid acid electrolyte such as phosphoric acid and that, therefore, one of
ordinary skill in the art would not have combined Keck with Bjerrum
(App. Br. 14—19; Reply Br. 4).
Keck is not limited to liquid electrolytes but, rather, discloses that the
electrocatalytic material is useful in other fuel cells (col. 4,11. 50-54).
Furthermore, Buchannan indicates that a Pt/Ni electrolytic material is useful
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in both phosphoric acid fuel cells and solid polymer fuel cells (col. 1,11. 47—
50, 67; col. 2,11. 48-56).
The Appellants assert that a comparison of their Specification’s
specimens 1 and 2 versus specimens 3 and 4 shows unexpected results (App.
Br. 19—21) and that “the MEU [membrane electrode unit] using the instant
invention were those having had the largest commercial success because
they satisfied long-felt but unsolved needs in terms of performance and
competitors failed to provide similar products” (Reply Br. 3).
We have begun anew and determined that due to the following
deficiencies in the evidence relied upon by the Appellants, the totality of the
evidence and argument supports a conclusion of obviousness of the claimed
process. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).
First the Appellants do not identify the closest prior art and provide a
comparison of the claimed invention with it. See In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); De Blauwe, 736 F.2d at 705.
Second, it is not enough for the Appellants to show that the results for
the Appellants’ invention and the comparative examples differ. The
difference must be shown to be an unexpected difference. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972). The Appellants provide no evidence that the results of
the relied-upon comparison would have been unexpected by one of ordinary
skill in the art.
Third, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellants’ claim 1 encompasses any
relative amounts of Pt and Ni, including only a trace amount of Ni, a broad
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range of catalyst Pt loadings, only one of which is used in the comparison,
and a number of alkaline polymers, only one species within a broad genus of
one of which is used in the comparison. We find in the evidence of record
no reasonable basis for concluding that the great number of materials
encompassed by that claim would behave as a class in the same manner as
the particular materials tested. See In re Lindner, 457 F.2d 506, 508 (CCPA
1972); In re Susi, 440 F.2d 442, 445^16 (CCPA 1971). The Appellants
assert, in reliance upon Chen, that the alkaline polymers have the same
technical effect of having an alkaline property (App. Br. 20—21). Chen lists
polyazole compounds but does not indicate that they provide the same or
similar results (144; claim 3).
The Appellants’ assertion regarding commercial success and
satisfying long-felt unsolved need (Reply Br. 3) is unavailing to the
Appellants due to being unsupported by evidence.
Claim 42
The Appellants assert that Keck teaches higher Pt loadings than the
not more than 2 mg/cm2 required by claim 42 (App. Br. 26).
Bjerrum’s catalyst loading (0.1—1.0 mg/cm2) corresponding to the
preferred polybenzimidazole or polybenzimidazole blend loading of around
0.2—2.5 mg/cm2 (p. 17,11. 14—17) is within that range.
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 6, 8—22, 24, 28, 29,
31—33, 36, 37, and 40-42 over Bjerrum in view of Keck, claims 2 and 25—27
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over Bjerrum in view of Keck and Kiefer, and claims 34 and 38 over
Bjerrum in view of Keck and Calundann are affirmed.
It is ordered that 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).
AFFIRMED
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