Ex Parte Cho et al

Patent Trial and Appeal Board

Apr 30, 2014

12472230 (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SUNG-YONG CHO,
JONG-KI LEE, YEONG-CHAN EUN, and HO-JIN KWEON
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Appeal 2012-004831
Application 12/472,230
Technology Center 1700
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Before CHARLES F. WARREN, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004831
Application 12/472,230
2
On April 13, 2011, the Examiner finally rejected claims 1-8 of
Application 12/472,230 under 35 U.S.C. § 103(a) as obvious. Appellants1
seek reversal of this rejection pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’230 application describes an electrode substrate for a fuel cell
and methods for its preparation. Spec. 1. Claim 1 is the only independent
claim in the ’230 application and is reproduced below:
1. A method of preparing an electrode substrate for a fuel
cell, comprising:
mixing carbon material, a binder, and a solvent to prepare a
coating composition;
coating the coating composition onto a diffusion layer to
prepare a coated diffusion layer; and
firing the coated diffusion layer to prepare a fired coating
composition, wherein a first portion of the fired coating
composition is embedded into the diffusion layer to form a first
microporous layer having a thickness in the range of 10 to
30 μm, and a second portion of the fired coating composition
forms a boundary with the diffusion layer to form a second
microporous layer on the surface of the first microporous layer.
(App. Br. 6 (Claims App’x).)

1 Samsung SDI Co., Ltd. is identified as the real party in interest. (App.
Br. 1.)
Appeal 2012-004831
Application 12/472,230
3
REJECTION
The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yoshida2 and Kato.3 (Ans. 4.)
DISCUSSION
Appellants’ arguments for reversal of the asserted rejection rely upon
the limitations of claim 1, which is the only independent claim in the ’230
application. Appellants do not present separate argument for the
patentability of any dependent claim. Thus, claims 2-8 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
In rejecting claim 1, the Examiner finds that Yoshida describes a
process of impregnating a conductive carbon fiber cloth with a first
dispersion containing a fluorocarbon resin and baking, followed by
application of a second dispersion containing conductive particles and a
second baking step. (Ans. 4.) The Examiner also finds that Yoshida does
not describe the inclusion of conductive particles in the first dispersion. (Id.
at 5.) The Examiner relies upon Kato’s preparation of a gas diffusion layer
using a coating comprised of a fluorocarbon resin and carbon black. (Id.
(citing Kato col. 2, l. 67-col. 3, l. 21).) The Examiner concludes that “it
would have been obvious for one skilled in the art at the time of the
invention was made to have modified Yoshida et al. (7,414,004) process to
include carbon black particles in the first dispersion as evidenced by Kato
(6,127,059) . . . .” (Id.)

2 U.S. Patent No. 7,414,004 B2, issued Aug. 19, 2008.
3 U.S. Patent No. 6,127,059, issued Oct. 3, 2000.
Appeal 2012-004831
Application 12/472,230
4
Appellants argue that the rejection of claim 1 should be reversed for at
least three reasons: (1) the Examiner erred in concluding that it would have
been obvious to a person of ordinary skill in the art to modify Yoshida’s
process in the manner suggested by Kato (App. Br. 3), (2) a person of
ordinary skill in the art would not have had a reasonable expectation of
success in getting the Examiner’s proposed combination of Yoshida and
Kato to work for the intended purpose (id. at 5), and (3) Yoshida teaches
away from the modification suggested by Kato (id.).
We are not persuaded by Appellants’ arguments, which are based
upon Yoshida’s description of a possible problem with conventional
methods of fabricating gas diffusion layers, i.e., that the dispersion for
forming a conductive water repellant layer is impregnated into the
conductive porous substrate, which might inhibit gas diffusion through the
resulting gas diffusion layer. (Id. at 4 (citing Yoshida col. 3, ll. 25-29).)
As the Examiner points out (Ans. 7), Kato considered this potential
problem and describes how it may be avoided (Kato col. 4, ll. 1-37). We
therefore are not convinced that the Examiner’s conclusion is erroneous.4

4 Appellants’ Reply Brief argues that the claimed process creates a material
with unexpected advantages compared to the prior art. (Reply Br. 3.)
Appellants could have argued that the evidence of unexpected results
rebutted the Examiner’s prima facie case of obviousness in the Appeal Brief,
but they did not do so. Under regulations governing appeals to the Board,
we will not consider an argument presented for the first time in the Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative); 37 C.F.R. §§ 41.37, 41.41.
Because the record does not contain such a showing, we will not consider
this argument.
Appeal 2012-004831
Application 12/472,230
5
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-8
as obvious over the combination of Yoshida and Kato.

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

cdc