Hongfei Jia et al.

Patent Trials and Appeals Board

Aug 29, 2019

14068291 - (D) (P.T.A.B. Aug. 29, 2019)

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.
14/068,291 10/31/2013 Hongfei Jia TTC13-13802/08 7021
63796 7590 08/29/2019
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
EXAMINER
KEELING, ALEXANDER W
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HONGFEI JIA and KENNETH JAMES MCDONALD

____________

Appeal 2018-002074
Application 14/068,291
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to reject claims 1, 3, and 5–20.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We heard oral arguments from Appellant’s representative on August
20, 2019.
We AFFIRM.

1 Appellant is the Applicant, Toyota Motor Engineering & Manufacturing
North America, Inc., which, according to the Appeal Brief, is also the real
party in interest. Appeal Brief filed November 28, 2016 (“App. Br.”), 2.
2 Non-Final Office Action entered May 13, 2016 (“Office Act”), 1.
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STATEMENT OF THE CASE
Appellant claims an electrode for electrochemical reduction of carbon
dioxide and water to form carbon monoxide and hydrogen. Claim 1
illustrates the subject matter on appeal, and is reproduced below with
contested language italicized:
1. An electrode for electrochemical reduction of carbon
dioxide and water forming carbon monoxide and hydrogen
comprising:
a metal substrate formed of a metal having a low carbon
monoxide bonding strength, the metal substrate
electrochemically reducing carbon dioxide and water;
a self-assembled monolayer bonded to the metal substrate
wherein the self-assembled monolayer includes an organic
ligand having a surface end having a reactive group bonded to
the metal substrate and an opposing end including an organic
functional group regulating a ratio of reaction products;
wherein a selectivity of reaction products of carbon
monoxide and hydrogen produced by the electrode is regulated
relative to a bare metal substrate.

App. Br. 14–16 (Claims Appendix) (emphasis added). Independent claim 9
is essentially identical to claim 1, while independent claim 13, like claim 1,
recites an electrode for electrochemical reduction of carbon dioxide and
water that comprises a self-assembled monolayer bonded to a metal
substrate, in which a selectivity of reaction products of carbon monoxide and
hydrogen produced by the electrode is regulated relative to a bare metal
substrate.
The Examiner maintains the rejection of claims 1, 3, and 5–20 under
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35 U.S.C. § 102(a)(1) as anticipated by Love3 as evidenced by Sperling4 (for
claims 6 and 18) in the Examiner’s Answer entered October 19, 2017
(“Ans.”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1, 3, and 5–20 under 35 U.S.C. § 102(a)(1), for the reasons set forth
in the Office Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
For purposes of this appeal, we address claims separately to the extent
they are so argued by Appellant. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1, 6, 7, 9, 13, 14, 16, 18, and 19
Although Appellant provides separate arguments for independent

3 Love et al., Self-Assembled Monolayers of Thiolates on Metals as a Form
of Nanotechnology, American Chemical Society, Vol. 105, 1103–1169
(2005).
4 Sperling et al., Surface modification, functionalization and bioconjugation
of colloidal inorganic nanoparticles, Philosophical Transactions of the
Royal Society A, Vol. 368, 1333–1383 (2010).
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claims 1, 9, and 13, Appellant’s arguments for each of these claims are
essentially the same. Compare App. Br. 13–16, with App. Br. 17–20 and
22–24. We accordingly select claim 1 as representative, and decide the
appeal as to claims 1, 6, 7, 9, 13, 14, 16, 18, and 19 based on claim 1 alone,
keeping in mind that in so doing, we address Appellant’s arguments for
claims 9 and 13, by virtue of addressing Appellant’s arguments for claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
Love discloses a self-assembled monolayer bound to the surface of a
substrate formed of a metal such as gold, silver, palladium, copper,
platinum, or mercury. Love pg. 1106. Love discloses that the self-
assembled monolayer is comprised of ligands that include a chemical
functionality on one end, such as a thiol moiety, having specific affinity for
the surface of the metal substrate, and a functional group on the opposite
end, such as –OH, –COOH, –CH3, or –NH2. Love pp. 1106, 1123–24, 1145,
1156, Fig. 22. Love discloses that the functional groups on the ligand ends
are separated by a carbon chain, and discloses ligands having a carbon chain
length of 6, 8, 10, 12, and 14 carbons. Love pp. 1132–1133, Fig. 10.
The Examiner finds that because Love discloses a metal substrate-
bound self-assembled monolayer having all the structural features of the
electrode recited in claim 1, Love’s metal substrate-bound self-assembled
monolayer “would be capable of reducing carbon dioxide and water
electrochemically” to form carbon monoxide and water, and would be
capable of regulating a selectivity of the carbon monoxide and hydrogen
reaction products produced by the electrode, as recited in claim 1. Final Act.
4; Ans. 13, 15. The Examiner also finds that in view of the disclosure in
Appellant’s Specification that –OH, –COOH, –CH3, or –NH2 organic
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functional groups may affect various properties of an electrode as recited in
claim 1, and disclosure that the changes in the electrode properties may be
utilized to regulate or modify the selectivity and activity of the electrode, the
–OH, –COOH, –CH3, or –NH2 functional groups disclosed in Love would be
capable of regulating a ratio of reaction products, as recited in claim 1. Ans.
12–13 (citing Spec. ¶ 21).
Appellant argues that Love does not disclose “the type of metal used
as a substrate, specifically that it is a metal having a low carbon monoxide
bonding strength.” App. Br. 13–14. Appellant argues that Love also does
not disclose reducing carbon dioxide and water as recited in the preamble of
claim 1, which Appellant argues “should be included in the claim
limitations.” App. Br. 14–15. Nor does Love disclose, Appellant argues, an
organic functional group regulating a ratio of reaction products of carbon
monoxide and hydrogen, and does not disclose the ability to selectively
produce differing amounts of the reaction products. App. Br. 14–16.
Appellant’s arguments are unpersuasive of reversible error in the
Examiner’s rejection, however, because the claim recitations at issue are
directed to functional language and an intended use, which do not patentably
distinguish the claimed electrode from the metal substrate-bound self-
assembled monolayer disclosed Love, for reasons that follow.
It has long been held that “apparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). Nonetheless, a patent applicant is free to
claim elements of a device either structurally or functionally, or claim
characteristics or properties of elements of a device. In re Swinehart, 439
F.2d 210, 212 (CCPA 1971); In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
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1997). But choosing to claim an element of a device functionally—by what
the element does rather than what it is—carries a risk, as does claiming an
element by its characteristics or properties rather than its structure.
Swinehart, 439 F.2d at 212–213 (“[I]t is elementary that the mere recitation
of a newly discovered function or property, inherently possessed by things in
the prior art, does not cause a claim drawn to those things to distinguish over
the prior art.”).
Where the Patent Office has reason to believe that claimed and prior
art devices are the same or substantially the same, or are produced by the
same or substantially the same processes, the Patent Office can require an
applicant to prove that the prior art device is not capable of performing a
claimed function, or does not possess a claimed characteristic or property.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where . . . the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. []Whether the rejection is
based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.”).
It is also well-established that “a statement of intended use . . . does
not qualify or distinguish the structural apparatus claimed over the [prior art]
reference.” In re Sinex, 309 F.2d 488, 492 (CCPA 1962); see also
Schreiber, 128 F.3d at 1477–79 (“Schreiber’s contention that his structure
will be used to dispense popcorn does not have patentable weight if the
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structure is already known” and “the Board [correctly] found that the Harz
dispenser [for dispensing lubricating oil] would be capable of dispensing
popcorn in the manner set forth in claim 1 of Schreiber’s application.”).
Although Appellant argues that Love does not disclose “the type of
metal used as a substrate, specifically that it is a metal having a low carbon
monoxide bonding strength” (App. Br. 14), as discussed above, Love
discloses a metal substrate that can be formed of gold, silver, or palladium to
which a self-assembled monolayer is bound. Love pg. 1106. Appellant’s
Specification indicates that gold, silver, and palladium are metals having a
low carbon monoxide bonding strength. Spec. ¶ 18. Consequently, a
reasonable basis exists for finding that a metal substrate formed of gold,
silver, or palladium as disclosed in Love has a low carbon monoxide
bonding strength, and the burden therefore shifts to Appellant to show
otherwise. Best, 562 F.2d at 1255. On the record before us, Appellant does
not meet this burden because Appellant does not argue, much less provide
objective evidence to demonstrate, that a metal substrate formed of gold,
silver, or palladium as disclosed in Love does not have a low carbon
monoxide bonding strength. App. Br. 13–26.
Similarly, although Appellant argues that Love does not disclose
reducing carbon dioxide and water to form carbon monoxide and hydrogen
reaction products, does not disclose an organic functional group regulating a
ratio of such reaction products, and does not disclose the ability to
selectively produce differing amounts of carbon monoxide and hydrogen
reaction products (App. Br. 14–16), Love discloses all the structural features
of the electrode recited in claim 1. In particular, as discussed above, Love
discloses a self-assembled monolayer comprised of ligands having thiol
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groups on one end that bind to the surface of a substrate, which Love
discloses can be gold, silver, or palladium. Love pg. 1106. Love discloses
that the ligands can include –OH, –COOH, –CH3, or –NH2 functional groups
on the free end opposite the end bound to the substrate, and Love discloses
ligands having a carbon chain with a length of 6, 10, 12, or 14 carbons.
Love pp. 1123–24, 1132–1133, 1145, 1156, Figs. 10 and 22.
In view of these disclosures in Love, one of ordinary skill in the art
would “at once envisage” a self-assembled monolayer comprised of organic
ligands having a reactive group on one end that bonds to a metal substrate,
and an organic functional group on the opposite end of the ligands, as recited
in claim 1, in which the metal substrate, reactive group, and organic
functional group correspond to those described in Appellant’s Specification
as providing the functionality recited in claim 1. Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (“[A]
reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all
the limitations arranged or combined as in the claim, if a person of skill in
the art, reading the reference, would ‘at once envisage’ the claimed
arrangement or combination.”) (alteration in original) (quoting In re
Petering, 301 F.2d 676, 681 (CCPA 1962)); see also Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) ([A] reference may still
anticipate if that reference teaches that the disclosed components or
functionalities may be combined and one of skill in the art would be able to
implement the combination.”) (citing Kennametal, 780 F.3d at 1383)).
More specifically, claim 1 recites a self-assembled monolayer
comprised of organic ligands having a reactive group on one end that bonds
to a metal substrate, and an organic functional group on the opposite end of
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the ligands. Appellant’s Specification discloses that thiol groups as
disclosed in Love are suitable reactive groups for bonding organic ligands as
recited in claim 1 to a metal substrate, and discloses using gold, silver, and
palladium to form a substrate as recited in claim 1, which Love also
discloses. Spec. ¶¶ 18, 20. Appellant’s Specification discloses that organic
ligands as recited in claim 1 may have from 2 to 20 carbon units, and Love
discloses ligands having carbon chains with a length of 6, 10, 12, or 14
carbons. Spec. ¶ 19. Like Love’s disclosure of –OH, –COOH, –CH3, or
–NH2 functional groups on the free end of ligands opposite the end bound to
a substrate, Appellant’s Specification discloses including –OH, –COOH, –
CH3, or –NH2 groups as organic functional groups on the free end of ligands
as recited in claim 1, and discloses that such functional groups may affect
various properties of an electrode comprised of a metal substrate-bound self-
assembled monolayer as recited in claim 1. Spec. ¶¶ 21. Appellant’s
Specification further indicates that such changes in the electrode properties
may be utilized to regulate or modify the selectivity and activity of the
electrode. Id.
The Examiner, therefore, has a reasonable basis for finding that a
metal substrate-bound self-assembled monolayer as disclosed in Love would
be capable of reducing carbon dioxide and water electrochemically to form
carbon monoxide and water. Schreiber, 128 F.3d at 1478. The Examiner
also has a reasonable basis for finding that the –OH, –COOH, –CH3, or –
NH2 functional groups disclosed in Love would be capable of regulating a
ratio of the carbon monoxide and hydrogen reaction products produced by
Love’s metal substrate-bound self-assembled monolayer. Id. The burden
therefore shifts to Appellant to demonstrate otherwise. Best, 562 F.2d at
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1255. On the record before us, however, Appellant does not meet this
burden because Appellant does not argue, much less provide objective
evidence demonstrating, that a metal substrate-bound self-assembled
monolayer as disclosed in Love having the structural features recited in
claim 1 is not capable of reducing carbon dioxide and water
electrochemically to form carbon monoxide and water, and is not capable of
regulating a selectivity of such carbon monoxide and hydrogen reaction
products. App. Br. 13–26. Nor does Appellant provide objective evidence
demonstrating that the –OH, –COOH, –CH3, or –NH2 functional groups of a
self-assembled monolayer as disclosed in Love are not capable of regulating
a ratio of reaction products. Id.
Although Appellant argues that Love also does not disclose reducing
carbon dioxide and water as recited in the preamble of claim 1, which
Appellant urges “should be included in the claim limitations” (App. Br. 14–
15), the preamble of claim 1 states “an electrode for electrochemical
reduction of carbon dioxide and water forming carbon monoxide and
hydrogen,” which is an intended use for the claimed electrode. As discussed
above, it is well-established that statements of an intended use for a claimed
apparatus do not patentably distinguish the claimed apparatus from a prior
art apparatus. Sinex, 309 F.2d at 492.
Nonetheless, in view of the disclosures of Love discussed above,
Appellant does not meet its burden of demonstrating that a metal substrate-
bound self-assembled monolayer as disclosed in Love is not capable of
electrochemically reducing carbon dioxide and water to form carbon
monoxide and hydrogen. Best, 562 F.2d at 1255.
We, accordingly, sustain the Examiner’s rejection of independent
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claims 1, 9, and 13, and claims 6, 7, 14, 16, 18, and 19, which each depend
from either claim 1, 9, or 13, under 35 U.S.C. § 102(a)(1).
Claims 3, 10, and 15
Each of claims 3, 10, and 15, which depend from independent claims
1, 9, and 13, respectively, recite that the metal substrate is selected from Au,
Ag, Zn, Pd, and Ga.
Although Appellant provides separate arguments for claims 3, 10, and
15, Appellant’s arguments for each claim are substantially the same.
Compare App. Br. 16–17, with App. Br. 21 and 25. We accordingly address
Appellant’s arguments for claim 3, keeping in mind that in so doing, we also
address Appellant’s arguments for claims 10 and 15.
Appellant argues that although the Examiner relies on Love’s
disclosure of a substrate formed of gold, silver, palladium, copper, platinum,
or mercury, “[t]his listing of metals does not teach the limitation of a metal
having a low carbon monoxide bonding strength and electrochemically
reducing carbon dioxide and water” because use of mercury as a substrate
results production of formate ion, platinum has a strong CO adsorption and
results in production of hydrogen, and copper further reacts with CO to form
CH3 and C2H4. App. Br. 16–17. Appellant further argues that “[t]here is no
teaching in the Love reference of the metals Zinc and Gallium.” App. Br.
17.
It is well-established, however, that a single species disclosed in the
prior art that falls within a claimed genus anticipates the claimed genus,
regardless of how many additional species are disclosed in the prior art. In
re Slayter, 276 F.2d 408, 411 (CCPA 1960) (Explaining that “[i]t is well
settled that a generic claim cannot be allowed to an applicant if the prior art
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discloses a species falling within the claimed genus.”); In re
Sivaramakrishnan, 673 F.2d 1383, 1385 (CCPA 1982) (a prior art reference
specifically naming a claimed salt compound as a suitable salt amongst a list
of many salts for inclusion in a polycarbonate resin held to anticipate a claim
to a composition including the salt and a polycarbonate resin).
Although Love may disclose forming the substrate described in the
reference of mercury, platinum, or copper, which are not recited in claim 3,
Love nonetheless also discloses forming the substrate of gold, silver, or
palladium, which are each included in the Markush group recited in the
claim. Love pg. 1106. Accordingly, Love’s disclosure of a gold, silver, or
palladium substrate anticipates the genus recited in claim 3, regardless of
whether Love may not also disclose zinc and gallium.
Furthermore, as discussed above, a reasonable basis exists on this
appeal record for finding that a metal substrate formed of gold, silver, or
palladium as disclosed in Love has a low carbon monoxide bonding
strength. The burden therefore shifts to Appellant to show otherwise, which
burden Appellant does not meet on the record before us, for reasons
discussed above. Best, 562 F.2d at 1255.
We accordingly sustain the Examiner’s rejection of claims 3, 10, and
15 under 35 U.S.C. § 102(a)(1).
Claims 5, 11, and 17
Each of claims 5, 11, and 17, which depend from independent claims
1, 9, and 13, respectively, recite that the organic ligand has a length of from
C2 to C20.
Although Appellant provides separate arguments for claims 5, 11, and
17, Appellant’s arguments for each claim are substantially the same.
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Compare App. Br. 17, with App. Br. 21–22 and 25–26. We accordingly
address Appellant’s arguments for claim 5, keeping in mind that in so doing,
we also address Appellant’s arguments for claims 11 and 17.
Appellant argues that although the Examiner relies on Love’s
disclosure that the ligands forming the self-assembled monolayer described
in the reference include a carbon chain having a length of 6, 8, 10, 12, or 14
carbons, “[t]his does not teach the limitations of C2 to C20 lengths as recited
in claim 5” because “[t]here is no disclosure of the range including C2–C5
and Cl5–C20 in Love.” App. Br. 17.
It is well-established, however, that a prior art disclosure of a specific
example falling within a claimed range anticipates the claimed range.
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed. Cir.
1985) (“[W]hen, as by a recitation of ranges or otherwise, a claim covers
several compositions, the claim is ‘anticipated’ if one of them is in the prior
art.”); In re Petering, 301 F.2d 676, 682 (CCPA 1962). Accordingly, Love’s
disclosure of ligands that each have a chain length of 6, 8, 10, 12, or 14
carbons anticipates the organic ligand length range of C2 to C20 recited in
claim 5, regardless of whether Love may not disclose ligands having a chain
length of 2 to 5 carbons or 15 to 20 carbons. Love pp. 1132–1133, Fig. 10.
We, accordingly, sustain the Examiner’s rejection of claims 5, 11, and
17 under 35 U.S.C. § 102(a)(1).
Claims 8, 12, and 20
Each of claims 8, 12, and 20, which depend from independent claims
1, 9, and 13, respectively, recite that the organic functional group is selected
from CH3, OH, COOH and NH2. Although Appellant provides separate
arguments for claims 8, 12, and 20, Appellant’s arguments for each claim
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are substantially the same. Compare App. Br. 16, with App. Br. 20 and 24.
We accordingly address Appellant’s arguments for claim 8, keeping in mind
that in so doing, we also address Appellant’s arguments for claims 12 and
20.
As discussed above, Love discloses ligands that have a –OH, –COOH,
–CH3, or –NH2 functional group on the free end of the ligands opposite the
end bound to a metal substrate. Love pp. 1106, 1123–24, 1145, 1156, Fig.
22. Appellant argues that Love teaches away from use of –OH and –COOH
functional groups “for modifying a reaction and does not disclose that use of
such functional groups may regulate a ratio of reaction products in a
reaction.” App. Br. 16. Appellant argues that Love “only generally refers to
NH2 as a polar functional group and does not disclose the use of such
functional groups may regulate a ratio of reaction products in a reaction.”
Id.
Although a showing that the prior art teaches away from a claimed
invention may rebut a prima facie case of obviousness, such a showing is
irrelevant to anticipation. In re Wiggins, 488 F.2d 538, 543 (CCPA 1973).
Furthermore, as discussed above, the Examiner has a reasonable basis
for finding that the –OH, –COOH, and –NH2 functional groups disclosed in
Love would be capable of regulating a ratio of carbon monoxide and
hydrogen reaction products produced by a metal substrate-bound self-
assembled monolayer as disclosed in Love. The burden therefore shifts to
Appellant to demonstrate otherwise, and on the record before us, Appellant
does not meet this burden, for reasons discussed above. Best, 562 F.2d at
1255.
We, accordingly, sustain the Examiner’s rejection of claims 8, 12, and
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20 under 35 U.S.C. § 102(a)(1).
DECISION
We affirm the Examiner’s rejection of claims 1, 3, and 5–20 under
35 U.S.C. § 102(a)(1).
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)(iv).

AFFIRMED