Ex Parte Vogel et al

Board of Patent Appeals and Interferences

Mar 12, 2012

10793734 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KARL VOGEL,
EMMANUEL AUER, KARL-ANTON STARZ,
PETER ALBERS, KLAUS BERGEMANN,
and CONNY VOGLER
__________

Appeal 2010-004776
Application 10/793,734
Technology Center 1700
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1, 3-6, and 10-19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims on appeal are directed to a supported electrocatalyst comprising
at least one platinum group metal supported by a carbon black support. The carbon
black support is furnace carbon black having a hydrogen content of greater than
4200 ppm and a peak integral ratio not exceeding 1.20. Claim 1, reproduced
below, is representative.
1. A supported electrocatalyst comprising at least one
platinum group metal supported by a carbon black
support, wherein the carbon black support is furnace
carbon black having a hydrogen content of greater than
4200 ppm, determined by CHN analysis, and a peak
integral ratio, determined by inelastic neutron scattering,
of non-conjugated hydrogen atoms (1250 cm-1‒
2000 cm-1) to aromatic and graphitic hydrogen atoms
(1000 cm-1‒1250 cm-1 and 750 cm-1‒1000 cm-1) not
exceeding 1.20.
App. Br., Claims Appendix.1
The following rejections are before us on appeal:
(1) the rejection of claims 1, 3-6, and 10-19 under 35 U.S.C. § 112, first
paragraph, based on the written description requirement;

1 Appeal Brief dated October 19, 2009.
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(2) the rejection of claims 1, 3-6, and 10-19 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-6 and 9-12 of
US 6,689,505; and
(3) the rejection of claims 1, 3-6, and 10-15 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gerspacher2 and Andolfatto.3
B. DISCUSSION
1. Rejection (1)
The Examiner finds the original disclosure does not provide written
description support for “a peak integral ratio . . . not exceeding 1.20” as recited in
claim 1. Ans. 3.4 The Appellants argue “the accused ratio is specifically recited in
the specification.” App. Br. 8. For support, the Appellants direct our attention to
the following disclosure in their Specification:
The H content may be greater than 4200 ppm, preferably
greater than 4400 ppm. The peak integral ratio of non-
conjugated H atoms (1250-2000 cm-1) to aromatic and
graphitic H atoms (1000-1250 cm-1 and 750-1000 cm-1)
may be less than 1.20.
App. Br. 8; Spec. 2, l. 33-3, l. 2 (emphasis added).
The Examiner correctly points out that claim 1 recites a range “not
exceeding 1.20” which includes the value 1.20. However, the disclosure relied on
by the Appellants, i.e., “less than 1.20,” does not include the value 1.20. Ans. 4.
Thus, we find the original disclosure does not reasonably convey to one of
ordinary skill in the art that the Appellants had possession of the claimed subject

2 US 6,277,350 B1 issued August 21, 2001.
3 US 6,194,338 B1 issued February 27, 2001.
4 Examiner’s Answer dated November 25, 2009.
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matter as of the filing date of the instant Application. For this reason, the § 112,
first paragraph, rejection is affirmed. Ariad Pharm., Inc. v. Eli Lilly and Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010).
2. Rejection (2)
The Examiner contends that claims 1, 3-6, and 10-19 of the instant
Application and claims 1-6 and 9-12 of US 6,689,505 (“the ‘505 patent”) “claim
common subject matter.” Ans. 3. However, the Appellants argue “[t]he claims of
the ‘505 patent are silent as to hydrogen bonding and/or ratios of INS peaks.”
App. Br. 11.
In response, the Examiner contends, “[s]ince ‘505 is not limited to any
particular ratios, it is open to all ratios and thus includes the present ratio.” Ans. 4.
The Examiner’s position is erroneous. Claims 1-6 and 9-12 of the ‘505
patent are silent as to the peak integral ratio of the recited carbon black. Thus,
there is no basis on which to conclude that carbon black having a hydrogen content
of greater than 4200 ppm and a peak integral ratio “not exceeding 1.20,” as recited
in Appellants’ claim 1, is rendered obvious by the claims of the ‘505 patent. For
this reason, the obviousness-type double patenting rejection of claims 1, 3-6, and
10-19 is reversed.
3. Rejection (3)
The Examiner recognizes that “Gerspacher does not characterize their
carbon in the same manner as claimed.” Ans. 5. Nonetheless, the Examiner
contends that the carbon black disclosed in Gerspacher “appears to possess the
claimed features.” Id. For support, the Examiner directs our attention to
Gerspacher Table 1 and contends that the value of 0.13 in Table 1 “means that
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there are 13 parts amorphous carbon and 87 parts non-amorphous . . . so the ratio
of amorphous to non-amorphous is 13/87, which is clearly way less than 1.2.” Id.
The Appellants argue:
The Gerspacher carbon has “an increased amount
of amorphous carbon and a decreased amount of
crystallites on the surfaces of the aggregates.” See U.S.
6,277,350, col. 2, line 66 ‒ col. 3, line 3. Gerspacher
provides no disclosure relating to bulk properties of his
carbon, but only discloses properties of its surface. The
Examiner extrapolates these surface properties to the
bulk of the carbon. However, the Examiner does not
provide any rationale which might support his
assumption.
Reply Br. 8.5
The Appellants’ argument is persuasive of reversible error. Implicit in the
Examiner’s position is the assumption that the Raman spectroscopic measurements
reported in Gerspacher Table 1 measure a bulk property of the disclosed carbon
black rather than a surface property.6 On this record, the Examiner has not directed
us to any evidence that supports this assumption.7 Therefore, the § 103(a) rejection
of claims 1, 3-6, and 10-15 is reversed.

5 Reply Brief dated January 25, 2010.
6 According to a Declaration of Dr. Peter Albers dated September 26, 2003, the
INS (inelastic neutron scattering) technique “measures the type of hydrogen atoms
in the sample as well as throughout a carbon black particle in the bulk sample. In
other words, the ratio of non-conjugated to aromatic and graphitic hydrogen atoms
obtained by the INS technique is not only on the surface of a carbon black particle
but also in the interior of a carbon black particle.” Declaration of Dr. Peter Albers
dated September 26, 2003, filed in parent Application 09/645,554, para. 9.
7 The Examiner relies on Andolfatto as evidence that carbon black having an area
as disclosed in Gerspacher is useful as a support for Pt. Ans. 4.
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C. DECISION
Based on the foregoing, it is hereby
ORDERED that the rejection of claims 1, 3-6, and 10-19 under 35
U.S.C. § 112, first paragraph, based on the written description requirement is
affirmed; and it is
FURTHER ORDERED that the rejection of claims 1, 3-6, and 10-19
on the ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1-6 and 9-12 of US 6,689,505 is reversed; and it is
FURTHER ORDERED that the rejection of claims 1, 3-6, and 10-15
under 35 U.S.C. § 103(a) as unpatentable over the combination of Gerspacher and
Andolfatto is reversed; and it is
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)
(2011).
AFFIRMED

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