JX NIPPON OIL & ENERGY CORPORATION

Patent Trials and Appeals Board

May 4, 2020

15054610 - (D) (P.T.A.B. May. 4, 2020)

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.
15/054,610 02/26/2016 Yasushi Sato 0079558-000104 4198
21839 7590 05/04/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
WILKINS III, HARRY D
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YASUSHI SATO, KOTA MIYOSHI, KOJIRO NAKAGAWA,
YOSHIHIRO KOBORI, and SHINJI OSHIMA

____________

Appeal 2019-003947
Application 15/054,610
Technology Center 1700
____________

Before JEFFREY T. SMITH, AVELYN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as JX
NIPPON OIL & ENERGY CORPORATION. Appeal Br. 2.
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The invention relates to an electrochemical reduction device for
hydrogenating an aromatic compound. Spec. ¶ 1. The reduction device
comprises an intermediate layer between a diffusion layer and a reduction
electrode catalyst layer. Id. ¶ 9. The intermediate layer allows for water to
be easily retained in a proton conductive portion such as the ionomer
(electrolyte) in the reduction electrode catalyst layer and the cathode side of
the electrolyte membrane. Id. ¶ 32. Thereby, this facilitates the proton
reduction reaction at the reduction electrode side more easily in an
environment in which a large amount of aromatic compound is present. Id.
¶ 37. Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. An electrochemical reduction device comprising:

an electrolyte membrane having proton conductivity;

a reduction electrode including a reduction electrode
catalyst layer that is provided in contact with one major surface
of the electrolyte membrane and has an electron
conductive material and a metal containing one or both of Pt
and Pd supported by the electron conductive material, a
diffusion layer that is provided near to the other major surface
of the reduction electrode catalyst layer, the other major surface
being opposite to the electrolyte membrane, and that causes a
liquid aromatic compound and a hydride of the aromatic
compound to pass through, and an intermediate layer provided
between the diffusion layer and the reduction electrode catalyst
layer, the intermediate layer is configured to cause the liquid
aromatic compound and the hydride of the aromatic compound
to pass through and to suppress liquid water from passing
through;

an oxygen generating electrode provided in contact with
the other major surface of the electrolyte membrane;

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a raw material supplier that supplies the aromatic
compound in a liquid state to the reduction electrode;

a moisture supplier that supplies water or humidified gas
to the oxygen generating electrode; and

a power controller that externally applies an electric field
such that the reduction electrode has an electronegative
potential and the oxygen generating electrode has
an electropositive potential.

The Examiner maintains the rejection of claims 1–8 under 35 U.S.C.
§ 103 as unpatentable over Pintauro (US 6,218,556 B1, issued April 17,
2001), Anderson (US 2003/0230495 A1, published December 18, 2003),
Park (Sehkyu Park et al., “Effect on PTFE Content in Microporous Layer on
Water Management,” ECS Transactions, 11 (1) 623-628 (2007)
10.1149/1.2780975), and Weber (Adam Z. Weber & John Newman, “Effects
of Microporous Layers in Polymer Electrolyte Fuel Cells,” Journal of The
Electrochemical Society, 152 (4) A677-A688, 2005). Final Act. 4–7; Ans.
3–6.
Appellant does not argue any claim separate from the other.
Accordingly, we select claim 1 as representative of the subject matter
claimed and decide all issues as to this appeal based on the arguments as
applied to claim 1.

OPINION
After review of the respective positions the Appellant presents in the
Appeal and Reply Briefs and the Examiner presents in the Final Office
Action and the Answer, we AFFIRM the Examiner’s prior art rejection for
the reasons the Examiner presents. Our reasoning follows.
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Claim 1 recites an electrochemical reduction device comprising an
intermediate layer provided between a diffusion layer and a reduction
electrode catalyst layer, where the intermediate layer is configured to cause
the liquid aromatic compound and the hydride of the aromatic compound to
pass through to the catalyst layer while suppressing liquid water from
passing through to the diffusion layer. See Spec. ¶ 37.
The Examiner finds Pintauro teaches an electrochemical reduction
device for the hydrogenation of an aromatic compound that differs from the
claimed invention in that Pintauro does not disclose using an intermediate
layer between the diffusion layer and the reduction electrode catalyst layer
as claimed. Final Act. 4–5. The Examiner also finds Pintauro recognizes
that cathode (reduction electrode) flooding by water caused by
electroosmotic drag could be a potential problem in the device that results in
the lack of access of aromatic compounds to catalyst regions in the reaction
zone where hydrogen generation occurs. Final Act. 5; Pintauro col. 6 ll. 3–
9, Fig. 3. Citing to Anderson, the Examiner explains that the electro-
osmotic flux causes some water molecules to be transported via electro-
osmosis with the hydrogen ions through a proton exchange membrane from
the anode side to the cathode side. Final Act. 5; Anderson Fig. 9, ¶¶ 40, 41.
To address this difference from the claimed invention, the Examiner
turns to Park and Weber. The Examiner finds that Park teaches that it is
known to provide a microporous layer (dense (intermediate) layer) between
a catalyst layer and a diffusion layer to increase the catalyst utilization and
improve water management in the membrane-electrode assembly. Final Act.
5; Park 623–624. The Examiner also finds that Park discloses that the tested
microporous layers increased the resistance to water flow through the gas
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diffusion layer. Ans. 7; Park 627. The Examiner further finds that Weber
teaches the use of microporous layers (dense (intermediate) layers) between
an electrode catalyst and a gas diffusion layer to improve water management
within a PEM cell by keeping water away from the diffusion layer. Final
Act. 6; Weber Abstr., Figure 1. The Examiner finds that Weber teaches the
use of the microporous layers to prevent catalyst layers from becoming
entrenched in the diffusion media, a condition that hinders their overall
activity and accessibility. Ans. 7–8; Weber A677. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to modify Pintauro’s electrochemical reduction device by incorporating a
microporous layer between a catalyst layer and a diffusion layer, as taught
by Park and Weber, to improve the performance of Pintauro’s
electrochemical device because the microporous layer would prevent water
from reaching the diffusion layer while increasing catalyst utilization. Final
Act. 6.
Appellant does not contest the Examiner’s specific findings with
respect to Pintauro. Appeal Br. 4. Instead, Appellant argues that both Park
and Weber relate to fuel cells which generate water at the cathode electrode
while Pintauro relates to an electrochemical reduction device where a
reduction occurs at the cathode without water generation. Id. at 4–5. Thus,
Appellant contends that there is a need to remove the water to suppress
flooding at the cathode electrode. Id. at 4. According to Appellant, Park
and Weber provide a microporous layer between a diffusion layer and a
catalyst layer to manage the water in the electrode to prevent flooding. Id.
Appellant contends that Park achieves this by using the microporous layer to
promote the movement of water from the catalyst layer to the diffusion layer
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while Weber uses the microporous layer to drive water away from the
cathode catalyst layer to the anode. Id. at 5. Therefore, Appellant asserts
that the Examiner failed to provide a factual finding that adopting the MPL
described in Park or Weber in the Pintauro device would be reasonably
expected to achieve the results desired in Pintauro. Appeal Br. 6.
Appellant’s arguments do not identify error in the Examiner’s
determination of obviousness.
The Examiner finds Pintauro recognizes that cathode (reduction
electrode) water flooding is caused by electroosmotic drag and creates a
potential problem in the device that results in the lack of access of aromatic
compounds to catalyst regions in the reaction zone where hydrogen
generation occurs. Final Act. 5; Pintauro col. 6 ll. 3–9, Fig. 3. The
Examiner further explains that electro-osmotic flux causes some water
molecules to be transported via electro-osmosis with the hydrogen ions
through a proton exchange membrane from the anode side to the cathode
side. Final Act. 5; Anderson Fig. 9, ¶¶ 40, 41. Thus, contrary to Appellant’s
argument that Pintauro’s electrochemical reduction device does not generate
water (Appeal Br. 4–5), there is a reasonable basis for one skilled in the art
to expect Pintauro’s device to experience the detrimental effect from water
molecules transported via electro-osmosis through a proton exchange
membrane from the anode side to the cathode side. Park and Weber provide
a means to prevent this transportation of water to the cathode side. Thus,
Appellant’s arguments do not address adequately this analysis by the
Examiner.
While Appellant asserts that nothing in Anderson discloses or
suggests using a microporous layer to control bidirectional water flux (Reply
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Br. 7), the Examiner relies on Anderson solely to establish water would be
transported to the cathode of Pintauro’s device via electroosmotic flux.
Again, Appellant’s arguments do not address the reasons for which the
Examiner relies on Anderson.
Appellant contends that the use of a dense (intermediate) layer as
claimed provides an advantage over the prior art of maintaining a certain
amount of moisture in the reduction electrode catalyst layer and, thus, the
electrolyte membrane and the reduction electrode catalyst layer are
suppressed from being dried and the hydride-producing reaction for an
aromatic compound can be further promoted. Appeal Br. 6; Spec. ¶ 46.
The burden of establishing unexpected results rests on the Appellant.
Appellant may meet this burden by establishing that the difference between
the claimed invention and the closest prior art was an unexpected difference.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected
results must be established by factual evidence; attorney statements are
insufficient to establish unexpected results. See In re Geisler, 116 F.3d
1465, 1470–71 (Fed. Cir. 1997).
In this case, Appellant does not direct us to any objective evidence in
support of the alleged unexpected results. Appellant, at most, has provided
mere attorney arguments 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). Therefore, we agree with the
Examiners’ determination that Appellant has not met the burden of
establishing unexpected results. Ans. 8–9.
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Accordingly, we AFFIRM the Examiner’s prior art rejection of claims
1–8 under 35 U.S.C. § 103 for the reasons the Examiner presents and we
give above.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–8 103 Pintauro,
Anderson, Park,
Weber
1–8

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