Pietron, Jeremy J. et al.

Patent Trials and Appeals Board

Dec 30, 2019

13723878 - (D) (P.T.A.B. Dec. 30, 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.
13/723,878 12/21/2012 Jeremy J. Pietron 101464-US2 3699
26384 7590 12/30/2019
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
12/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEREMY J. PIETRON, MICHAEL B. POMFRET,
CHRISTOPHER N. CHERVIN, DEBRA R. ROLISON,
and JEFFREY W. LONG

Appeal 2019-001288
Application 13/723,878
Technology Center 1700
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–11, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 The
Government of the United State of America, as represented by the Secretary
of the Navy. Appeal Br. 2.
Appeal 2019-001288
Application 13/723,878

2

Appellant’s invention is directed to fuel cell anodes having a RuO2
coating on a substrate (Spec. ¶ 2; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. An article comprising:
a substrate comprising titanium, a titanium carbide, a titanium
nitride, tantalum, aluminum, silicon, or stainless steel; a RuO2 coating on a
portion of the substrate;
wherein the coating comprises nanoparticles of RuO2; and a
plurality of platinum nanoparticles on the RuO2 coating;
wherein the RuO2 coating is made by a method comprising:
immersing the substrate in a solution of RuO4 and a nonpolar solvent at a
temperature that is below the temperature at which RuO4
decomposes to RuO2 in the nonpolar solvent in the presence of the substrate;
and warming the substrate and solution to ambient temperature under
ambient conditions to cause the formation of the coating.

Appellant appeals the following rejection:
Claims 1 to 5, 7 to 11, and 21 are rejected under 35 U.S.C. § 103
as unpatentable over Eberhard (US 2006/0198082 A1; pub. Sept.
7, 2006) in view of Nakano (US 2007/0059584 A1; pub. Mar.
15, 2007), and Tsai (US 2008/0251390 A1; pub. Oct. 16, 2008).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the rejection of
claim 1 over Eberhard, Nakano, and Tsai are located on pages 3 to 5 of the
Non-Final Action. The Examiner finds that Eberhard teaches depositing a
ruthenium oxide layer on a titanium casing (Non-Final Act. 3–4). The
Examiner finds that Eberhard does not teach that the electrode comprises a
Appeal 2019-001288
Application 13/723,878

3
plurality of platinum nanoparticles on the ruthenium oxide (Non-Final Act.
4). The Examiner finds that Nakano teaches a fuel cell electrode comprised
of a series of micro-pillars coated with nickel and ruthenium, with platinum
electrodeposited on the ruthenium (Non-Final Act. 4). The Examiner finds
that neither Eberhard nor Nakano teaches platinum nanoparticles having an
average diameter less than about 5 nm (Non-Final Act. 5). The Examiner
finds that Tsai teaches a catalyst electrode of a low temperature fuel cell
produced by electrodeposition of platinum wherein the platinum comprising
catalyst has a particle diameter of about 4.8 nm to 5.22 nm (Non-Final Act.
5). The Examiner concludes that it would have been obvious to include
platinum particles on the ruthenium oxide layer in Eberhard’s capacitor as
taught by Nakano to improve the capacity density of the electrode (Non-
Final Act. 5). The Examiner further concludes that it would have been
obvious to select electrodepostion as taught by Tsai for the platinum coating
having platinum nanoparticles with a diameter of about 5 nm for the
electrode to provide the electrode catalyst with the maximum specific
surface area of platinum (Non-Final Act. 5).
Appellant argues that the combined teachings of Eberhard, Nakano,
and Tsai fail to teach or suggest depositing platinum particles on a
ruthenium oxide layer (Appeal Br. 5–6). The Examiner responds that the
combined teachings of Nakano and Eberhard would have suggested
deposition of Nakano’s platinum particles over Eberhard’s ruthenia (Ans. 9).
The Examiner finds that one of ordinary skill in the art would immediately
understand the same benefit (i.e., improved electrode capacity and low
resistance) would be present if ruthenium were present as such or as ruthenia
(Ans. 9). Appellant counters that the Examiner provides no evidence to
Appeal 2019-001288
Application 13/723,878

4
support the assumption that ruthenium metal would behave the same as the
oxide of the metal (Reply Br. 2).
The preponderance of the evidence favors Appellant’s argument of
nonobviousness. The Examiner has the initial burden of establishing a
prima facie case of obviousness. In this case, the Examiner has not
established that Nakano and Eberhard would have suggested applying
platinum nanoparticles to a ruthenium oxide coating. Rather, Nakano
teaches applying platinum to a ruthenium metal coating, not the oxide. The
Examiner has not established that “one of ordinary skill in the art would
immediately understand the same benefit would be present if ruthenium is
present as such or as ruthenia” (Ans. 9). In light of Appellant’s challenge to
the Examiner’s findings, the burden rests with the Examiner to support a
prima facie case.
On this record, we reverse the Examiner’s § 103 rejection of claims 1
to 5, 7 to 11, and 21 over Eberhard in view of Nakano and Tsai.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1 to 5, 7 to 11, and
21
§ 103 Eberhard,
Nakano, and Tsai
1 to 5, 7 to 11,
and 21

REVERSED