Ex Parte TEJIMA

Patent Trials and Appeals Board

Mar 15, 2019

14861256 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/861,256 09/22/2015 GoTEJIMA
22852 7590 03/19/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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.
07057.0958-00000 2622
EXAMINER
MCCONNELL, WYATTP
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
03/19/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GO TEJIMA
Appeal2018-005232
Application 14/861,25 61
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-5.
We have jurisdiction under 35 U.S.C. § 6(b). 2
We AFFIRM.
1 Appellant is the Applicant, TOY OT A JIDOSHA KABUSHIKI KAISHA,
which, according to Appeal Brief, is the real party in interest. Appeal Brief
filed January 31, 2018 ("Appeal Br."), 2.
2 Our Decision additionally refers to the Specification filed September 22,
2015 ("Spec."), and the Examiner's Answer dated February 23, 2018
("Ans.").
Appeal2018-005232
Application 14/861,256
The subject matter on appeal relates to fuel cells (see, e.g., claim 1 ).
The Specification discloses that the weight ratio of polymer electrolyte to
catalyst-carrying carbon in a fuel cell catalyst layer significantly affects the
fuel cell's performance. Spec. ,r 4. Due to this, the ratio is set to a
predetermined value to maximize performance when manufacturing fuel
cells. Id. According to the Specification, however, water irreversibly swells
the polymer electrolyte during use of the fuel cell, which changes the
relationship between the weight ratio and the maximum output for the fuel
cell so lower weight ratios provide the maximum output. Id. ,r 5. In
addition, oxidation of the carbon of the catalyst-carrying carbon causes the
weight ratio to increase during fuel cell use. Id. In view of this, Appellant
discloses a fuel cell in which the initial weight ratio of the polymer
electrolyte to the catalyst-carrying carbon is a value 0.1 to 0.2 smaller than
the value that would maximize the output of the fuel cell in a state when the
polymer electrolyte is not swollen. Id. ,r 8.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A fuel cell comprising:
a catalyst layer containing a polymer electrolyte and
catalyst-carrying carbon,
wherein a value of an initial weight ratio of the polymer
electrolyte to the catalyst-carrying carbon in the catalyst layer
is a value that is smaller by 0.1 to 0.2 than a value of a weight
ratio of the polymer electrolyte to the catalyst-carrying carbon
in the catalyst layer in a maximizing state in which a maximum
output of the fuel cell is maximized when the polymer
electrolyte is not swollen during use of the fuel cell.
2
Appeal2018-005232
Application 14/861,256
REJECTIONS ON APPEAL
I. Claims 1--4 under 35 U.S.C. § 103 as being unpatentable
over Sugawara; 3 and
II. Claim 5 as being unpatentable under 35 U.S.C. § 103
over Sugawara further in view of Hershkowitz. 4
B. DISCUSSION
Rejection I
Claims 1--4 are rejected under 35 U.S.C. § 103 as being unpatentable
over Sugawara.
The Examiner finds Sugawara discloses a fuel cell including a catalyst
layer having a hydrogen-ion conducting polymer and carbon particles
carrying electrocatalyst particles. Ans. 3. The Examiner finds Sugawara
teaches the weight ratio of the polymer and the carbon particles is important
because a small ratio fails to provide necessary insulation and a high ratio
results in unnecessarily decreasing hydrogen trapping efficiency. Id. at 4. In
view of this, the Examiner finds Sugawara teaches the claimed weight ratio
is a result-effective variable that would have been obvious to optimize via
routine experimentation. Id.
Appellant contends the claimed invention would not have been
obvious because the claimed weight ratio results in lower fuel cell efficiency
at an initial stage and a person of ordinary skill in the art would not have
3 Sugawara et al., US 2003/0072990 Al, published Apr. 17, 2003
("Sugawara").
4 Hershkowitz et al., US 2004/0175326 Al, published Sept. 9, 2004
("Hershkowitz").
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Appeal2018-005232
Application 14/861,256
selected such an initial ratio. Appeal Br. 3--4. Appellant argues Sugawara
does not identify the problem addressed by Appellant's invention and thus
does not recognize the claimed weight ratio as a result-effective variable and
Sugawara discloses that the power generating efficiency of a fuel cell lowers
with the passage of time, which would have motivated one of ordinary skill
in the art to set the initial ratio to a maximum value. Id. at 5-8.
Appellant's arguments are unpersuasive. Sugawara discloses
deterioration of a fuel cell's polymer electrolyte membrane can occur when
hydrogen gas that has cross leaked from the anode to the cathode bums
locally in the catalyst layer of the cathode. Sugawara ,r 3. To address this,
Sugawara discloses the inclusion of a trapping catalyst in the electrode
catalyst layer to promote the reaction of hydrogen with oxygen to produce
water. Id. ,r 10-11. Sugawara discloses that the trapping catalyst is
desirably on a carrier, such as carbon black, and can be coated with a
hydrogen-ion conductive polymer electrolyte. Id. ,r,r 28-29. Furthermore,
Sugawara discloses varying the weight ratio for its examples to determine
what range of weight ratio (which is set when the exemplary fuel cells are
assembled (id. ,r,r 67, 77, 79, 82, 87, 90)) provides the best fuel cell voltage
after 1000 hours of use. Id. ,r 94. In other words, Sugawara's teachings are
useful for determining what initial weight ratios provide the best fuel cell
voltage after many hours of use.
"A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Sugawara states "the
ratio of the hydrogen-ion conductive polymer electrolyte to the catalyst
carrier particle is important" because a ratio that is too small results in
4
Appeal2018-005232
Application 14/861,256
insufficient insulation of the catalyst and results in low hydrogen ion
conductivity and a ratio that is too large results in excessive coating of the
catalyst-carrying carbon, which decreasing the trapping efficiency of the
trapping catalyst. Sugawara ,r 29. In view of this, Sugawara discloses a
weight ratio range of 1.6 to 2.0. Id.
Thus, Sugawara's disclosure supports the Examiner's finding that
Sugawara recognizes the claimed weight ratio as a result-effective variable
and supports the Examiner's conclusion of obviousness. "[D]iscovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art." In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
It would have been obvious to modify the weight ratio of polymer
electrolyte to catalyst-carrying carbon by determining workable or optimal
arrangements of a fuel cell's weight ratio as a matter of routine
experimentation and design within the level of the ordinary skill, thus
arriving at an arrangement or configuration within the scope of claim 1. In
other words, to the extent Sugawara does not disclose the specific approach
or specific issue recognized by Appellant, Sugawara's disclosure renders the
claimed fuel cell obvious as a matter of optimizing the weight ratio as a
result-effective variable. 5
Thus, the Examiner has set forth a prima facie case of obviousness
over Sugawara. "[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming forward with
5 We note that Sugawara discloses a set of examples with weight ratios of
1.4, 1.6, 1.8, 2.0, and 2.5. The maximum voltage output after a lapse of
1000 hours ( and presumably significant swelling) occurs at weight ratios of
1.6 and 1.8. Sugawara, ,r 94, Table 1.
5
Appeal2018-005232
Application 14/861,256
evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (emphasis omitted).
Appellant contends that the Office should provide evidence
supporting its position because none of Sugawara's examples provide a
reason to modify the weight ratio so a fuel cell's output is reduced at an
initial time. Appeal Br. 5---6. As discussed above, the Examiner has set forth
a prima facie case of obviousness, which has shifted the burden to
Appellant. This argument attempts to shift the burden back upon the
Examiner even though a prima face case has been made. Appellant does not
cite evidence or persuasive technical reasoning that Sugawara's range does
not encompass the claimed range or it would not have been obvious to
modify Sugawara's ratio to arrive at the claimed ratio via optimization by
routine experimentation.
"Only if the 'results of optimizing a variable' are 'unexpectedly good'
can a patent be obtained for the claimed critical range." In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620
(CCPA 1977)). Appellant does argue unexpected results for the claimed
fuel cell, citing Appellant's Figure 4. Appeal Br. 8-12. However, the
Examiner characterizes the rejection as "a strong showing of obviousness."
Ans. 5. In view of Sugawara's teachings regarding the weight ratio of
polymer electrolyte to catalyst-carrying carbon and its recognition of this
weight ratio as a result-effective variable, we agree that the evidence
favoring the obviousness of the claimed weight ratio is strong. Where the
evidence of prima facie obviousness is particularly strong, evidence
regarding unexpected results rnay be insufficient to overcome the evidence
6
Appeal2018-005232
Application 14/861,256
of prhna facie obviousness. See l~fizer, Inc. v. Apotex, hie., 480 F.3d 1348,
1172 -f, d c-,· ')O()T _ , . ( e . ..ir. ... _ , ).
In addition, Appellant's disclosure does not describe the asserted
results in Figure 4 as "unexpected." "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 De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (citing In re Lindner, 457 F.2d
506, 508 (CCPA 1972)). Nor does Figure 4 seem commensurate in scope
with claim 1, which is not limited to any particular catalyst or polymer
electrolyte. A showing of unexpected results generally must be
commensurate in scope with a claimed range. In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005). Furthermore, Appellant does not compare Figure 4
with the closest prior art (e.g., Sugawara). "[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art." In re Baxter Travenol
Labs., 952 F.2d 388,392 (Fed. Cir. 1991).
Based on the foregoing, the Appellant's evidence of unexpected
results is entitled to little weight. A preponderance of the evidence supports
the Examiner's obviousness determination for claim 1.
Appellant does not argue claims 2-4 separately from claim 1. Appeal
Br. 12.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 103 rejection of claims 1-4.
Re} ection II
Claim 5 is rejected as being unpatentable under 35 U.S.C. § 103 over
7
Appeal2018-005232
Application 14/861,256
Sugawara further in view of Hershkowitz. Appellant asserts claim 5 is
allowable for the same reasons as claim 1. Id. at 12-13. As discussed
above, Appellant's arguments do not identify a reversible error in the
rejection of claim 1. Therefore, we sustain the Examiner's§ 103 rejection of
claim 5.
C. DECISION
The decision of the Examiner 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
8