Ex Parte Dadheech et alDownload PDFPatent Trial and Appeal BoardMay 12, 201612564344 (P.T.A.B. May. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/564,344 0912212009 83938 7590 05/16/2016 Brooks Kushman P,C, 1000 Town Center, Twenty-Second Floor Southfield, MI 48075-1238 FIRST NAMED INVENTOR Gayatri Vyas Dadheech 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P006907-CHE (MGJP 0129 8191 EXAMINER Y ANCHUK, STEPHEN J ART UNIT PAPER NUMBER 1723 NOTIFICATION DATE DELIVERY MODE 05/16/2016 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GA YATRI VYAS DADHEECH, and MICHAEL J. LUKITSCH Appeal2014-009185 Application 12/564,344 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 1 through 8, 10 through 14, and 16 through 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants identify the Real Party in Interest as General Motors Corporation (Appeal Brief filed March 24, 2014 ("App. Br.") at 1.) Appeal2014-009185 Application 12/564,344 The subject matter on appeal is directed to a flow field plate for fuel cells comprising a metal plate having a surface that defines a plurality of channels for directing the flow of a gaseous composition, a carbon layer disposed over at least a portion of the metal plate; and a titanium oxide layer disposed over at least a portion of the carbon layer, to form a titanium oxide/carbon bilayer. (Spec. i-f 7.) Details of the appealed subject matter are recited in illustrative claim 1, reproduced below from the Claims Appendix to the Appeal Brief. 1. A flow field plate for fuel cell applications comprising: a metal plate having a first surf ace and a second surface, the first surface defining a plurality of channels for directing flow of a first gaseous composition; a carbon layer disposed over and directly connected to at least a portion of the metal plate; and a titanium oxide layer disposed over and directly connected to at least a portion of the carbon layer to form a titanium oxide/carbon bilayer. (App. Br. Claims App'x 1.) Appellants seek review of the following grounds of rejection maintained by the Examiner in the Examiner's Answer entered on June 17, 2014 ("Ans."): Claims 1-5, 11, 16, and 18-21under35 U.S.C. § 103(a) as unpatentable over the disclosure of U.S. Patent Application Publication 2007 /0003815 Al published in the name of Vyas et al. on January 4, 2007 (hereinafter referred to as "Vyas") in view of U.S. Patent Application 2 Appeal2014-009185 Application 12/564,344 Publication 2004/0157108 Al published in the name of Blunk et al. on August 12, 2004 (hereinafter referred to as "Blunk"); Claims 6 and 7 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over, the disclosure of Vyas in view of Blunk and U.S. Patent 6,660,424 Bl issued in the name of Gyoten et al. on December 9, 2003 (hereinafter referred to as "Gyoten"); Claim 8 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Vyas in view of Blunk and U.S. Patent 6,291,094 Bl issued in the name of Yoshimura et al. on September 18,2001 (hereinafter referred to as "Yoshimura"); Claim 10 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Vyas in view of Blunk, Yoshimura, and U.S. Patent Application Publication 2006/0194095 ii.J published in the name of Vyas et al. on August 31, 2006 (hereinafter referred to as "Vyas 095"); Claim 12 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Vyas in view of Blunk and U.S. Patent Application Publication 2007/0087257 Al published in the name of Son et al. on April 19, 2007 (hereinafter referred to as "Son"); Claims 13 and 14 as unpatentable over the disclosure of Vyas in view of Blunk and U.S. Patent Application Publication US 2007 /0178365 Al published in the name of Sugimasa et al. on August 2, 2007 (hereinafter referred to as "Sugimasa"); and 3 Appeal2014-009185 Application 12/564,344 Claim 17 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Vyas in view of Blunk and Yoshimura. 2 DISCUSSION Upon consideration of the evidence on this appeal record and each of Appellants' contentions, we determine that Appellants have identified reversible error only in the Examiner's rejections of claims 6 and 7 under 35 U.S.C. § 102(b) and claims 13 and 14 under 35 U.S.C. § 103(a). Accordingly, we reverse these rejections for the reasons set forth in the Appeal Brief, but affirm the Examiner's rejections of claims 1-8, 10-12, and 16-21under35 U.S.C. § 103(a) for the reasons set forth in the Final Action entered on October 23, 2013 ("Final Act.") and the Answer. We add the discussion below primarily for emphasis and completeness. To prevail in an appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner's§§ 102(b) and 103(a) rejections. See 37 C.F.R. § 41.37(c)(l) (iv) (2012); see also In re Jung, 637 2 In the Answer, the Examiner withdrew the rejection of claims 18-21 under 35 U.S.C. § 102(b) as anticipated by Vyas; the rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent Application Publication 2004/0091768 Al published in the name of Abd Elhamid et al., on May 13, 2004 ("Abd Elhamid"); and the rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over Abd Elhamid in view of U.S. Patent Application Publication 2007 /0178357 Al published in the name of Vyas et al. on August 2, 2007 ("Vyas 357"). Ans. 3. 4 Appeal2014-009185 Application 12/564,344 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining that even ifthe examiner had failed to make a prima facie case, it has long been the Board's practice to require an appellant to identify the alleged error in the examiner's rejections); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009) ("the burden of showing that the error is harmful normally falls upon the party attacking the agency's determination."). Rejection of Claims 1-5, 11, 16, and 18-21 as unpatentable over Vyas and Blunk Appellants argue claims 1-5, 11, 16, and 18-21 as a group. (See generally App. Br. 4---6.) Therefore, we select claim 1 as representative, and decide the propriety of the rejection of these claims based on claim 1 alone. (37 C.F.R. § 41.37(c)(l)(iv).) Appellants do not dispute the Examiner's finding that Vyas discloses a metal bipolar plate (corresponding to the recited flow field plate having a surface defining a plurality of channels for directing flow of a gaseous composition) for use in a fuel cell, and discloses that a conductive layer is deposited on the metal plate, and a titanium oxide layer is deposited on the conductive layer, to form a titanium oxide/carbon bilayer. (Compare Final Act. 3--4 with App. Br. 4---6; Vyas i-fi-f 16, 32.) Nor do Appellants dispute the Examiner's finding that Vyas discloses that the conductive layer can be made of "any suitable conductive material for the purposes discussed herein, including, but not limited to, gold (Au), silver (Ag), ruthenium (Ru), 5 Appeal2014-009185 Application 12/564,344 rhodium (Rh), palladium (Pd), platinum (Pt), osmium (Os), iridium (Ir), hafnium (Hf), rare earth metals, etc." (Compare Final Act. 4 with App. Br. 4---6; Vyas i-f 31.) The Examiner acknowledges that Vyas does not explicitly disclose that carbon can be utilized as the conductive material. (Final Act. 4.) To account for this difference, the Examiner relies upon Blunk's disclosure of a bipolar plate (a flow field plate) for a fuel cell coated with an electrically-conductive composite material in which conductive particles made of gold, platinum, graphite, carbon, palladium, niobium, rhodium, ruthenium, or a rare earth metal are dispersed throughout a polymer matrix, which Appellants do not dispute. (Compare Final Act. 4 with App. Br. 4---6; Blunk i-f 27.) The Examiner determines that Blunk's disclosures establish that carbon is an art=recognized equivalent to the conductive materials disclosed in Vyas, and is used for the same purpose. (Final Act. 4.) Based on these findings, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the conductive layer of Vyas to include carbon as taught by Blunk to increase the electrical conductivity of the layer. (Id.) Appellants argue that a "carbon layer" as recited in claim 1 is "a layer in one of the forms of carbon-graphite, diamond, and amorphous, etc.," and point out that their Specification discloses that the carbon layer "may be amorphous, crystalline, or a combination thereof," and further discloses that 6 Appeal2014-009185 Application 12/564,344 "the carbon layer may be formed by a number of technologies known to those skilled in the art ... U.S. Pat. No. 5,314,716 discloses a CVD technique for forming non-crystalline carbon films." (App. Br. 4--5; Spec. i-fi-128, 40.) Appellants further argue that the composite material disclosed in Blunk in which conductive particles are dispersed in a polymer matrix is not chemically or physically equivalent to a carbon layer as described in their Specification, or as generally recognized by those skilled in the art of thin film coating. (App. Br. 6.) However, contrary to Appellants' assertions, the written description provided in Appellants' Specification does not limit the carbon layer recited in claim 1 to a layer made solely of carbon. (Spec. i128.) Specifically, the Specification discloses that the carbon layer may be amorphous, crystalline, or a combination thereof, rather than requiring the layer to be made solely of amorphous or crystalline carbon, or a combination thereof. (Id.) Thus, under a broadest reasonable interpretation, the term "carbon layer" as recited in claim 1 is not limited to a layer formed solely of carbon, but rather is a layer that includes carbon. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, "the PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."). Accordingly, the carbon layer recited in claim 1 does not 7 Appeal2014-009185 Application 12/564,344 exclude Blunk's composite material containing conductive carbon particles which would have reasonably expected to function in the same or similar way as Vyas' conductive layer. Even if we were to interpret the carbon layer recited in claim 1 as a layer made of solely carbon, we do not find Appellants' argument persuasive because the collective teachings of Vyas and Blunk would have suggested using either a layer made of a composite material containing conductive carbon particles or a layer made solely of a conductive material, such as carbon, as the conductive layer of Vyas 'metal bipolar plate for a fuel cell. As indicated supra, Vyas discloses that its conductive layer, like Blunk's composite layer containing conductive carbon particles, is deposited on a bipolar plate. (See also Vyas i-fi-f 16, 32.) Vyas discloses that the conductive material used for forming its conductive layer can be any' conductive material suitable for the purposes described in the reference, and discloses that exemplary conductive materials include, but are not limited to, gold, silver, ruthenium, rhodium, palladium, platinum, osmium, iridium, hafnium, and rare earth metals. (Vyas i131.) Blunk discloses that the conductive particles are made from gold, platinum, graphite, carbon, palladium, niobium, rhodium, ruthenium, or the rare earth metals-a list of conductive materials that overlaps significantly with the conductive materials disclosed in Vyas. (Compare Blunk i127 with Vyas i1 31.) Implicit in this teaching of Blunk is that the conductive materials (including carbon) disclosed in Blunk 8 Appeal2014-009185 Application 12/564,344 are reasonably interchangeable with, or suitable as the conductive material used for forming the conductive layer disclosed in Vyas. In addition, as Appellants acknowledge, their Specification discloses that techniques for forming layers made solely of carbon were known in the art at the time of the invention. (App. Br. 4--5; Spec. i-f 40.) Accordingly, we find no reversible error in the Examiner's determination that the combined disclosures of Vyas and Blunk reasonably would have led one skilled in the art, through no more than ordinary creativity, to utilize the carbon disclosed in Blunk as the conductive material for Vyas' conductive layer, as recited in claim 1, with a reasonable expectation of successfully producing a conductive layer suitable for a bipolar plate of a fuel cell. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)("[W]hen a patent claims a structure already kno\'l/n in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."); In re Fout, 675 F.2d 297, 301 (CCPA 1982)("Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.") Thus, on this record, Appellants do not identify reversible error in the Examiner's determination that one of ordinary skill in the art, armed with the disclosures of Vyas and Blunk, would have been led to the subject matter of claims 1-5, 11, 16, and 18-21 within the meaning 35 U.S.C. § 103(a). We accordingly sustain the Examiner's§ 103(a) rejection of these claims. 9 Appeal2014-009185 Application 12/564,344 Rejection of Claims 6 and 7 as anticipated by, or unpatentable over, Vyas, Blunk, and Gyoten Claim 6 requires the titanium oxide layer to include hydrocarbons in an amount that is less than 40 weight percent of the total weight of the titanium oxide layer, and claim 7 requires the titanium oxide layer to include hydrocarbons in an amount that is less than 20 weight percent of the total weight of the titanium oxide layer. Although the Examiner rejects claims 6 and 7 under 35 U.S.C. § 102(b) as anticipated by Vyas, Blunk, and Gyoten, the Examiner does not set forth any basis for anticipation of the subject matter of these claims. (Final Act. 6-7.) Accordingly, we do not sustain the rejection of claims 6 and 7 under 35 U.S.C. § 102(b), and only address the alternative rejection of these claims under 35 U.S.C. § 103(a). The Examiner acknowledges that Vyas does not disclose a titanium oxide layer that includes hydrocarbons. (Final Act. 6-7.) To remedy this deficiency in Vyas, the Examiner relies on Gyoten's disclosure of "incorporating hydrocarbon material to the flow path of a fuel cell in order to adjust the hydrophilicity of the surface," which Appellants do not dispute. (Compare Final Act. 6-7 with App. Br. 6-7.) Appellants also do not dispute the Examiner's determination that the amount of hydrocarbon material added to the titanium oxide layer is a result-effective variable, and it therefore would have been within the level of ordinary skill in the art to arrive at the amounts recited in claims 13 and 14 through nothing more than 10 Appeal2014-009185 Application 12/564,344 routine experimentation. (Compare Final Act. 6-7 with App. Br. 6-7.) Instead, Appellants argue that Gyoten does not disclose titanium oxide at all, much less a flow field plate coated with a titanium oxide layer that includes hydrocarbons. (App. Br. 7.) However, as discussed above, Vyas discloses depositing a first, conductive layer on a bipolar fuel cell plate (corresponding to the recited flow field plate) and then depositing a second, outer, titanium oxide layer on the conductive layer. (Vyas i-fi-f 16, 32.) As depicted in Figure 33 of Vyas, the outer coating layer, which can be made of titanium oxide, defines the surface of the flow path through the channels in the bipolar plate and the titanium oxide layer thus constitutes the flow path surface. Vyas discloses that the titanium oxide layer makes the bipolar plates hydrophilic in the fuel cell environment, thus disclosing a hydrophilic, titanium oxide flo\'l/ path surface. (Vyas i-fi-125, 31.) Gyoten discloses coupling a silane-containing compound containing a hydrocarbon moiety to a flow path surface in a fuel cell (Gyoten col. 4, 11. 58---63; col. 5, 11. 4--20), which the Examiner uncontrovertibly finds functions to adjust the hydrophilicity of the surface. (Final Act. 7.) In fact, Appellants admit that it was known in the art at the time of the invention to use hydrocarbon-containing silane coupling agents 3 Although the bipolar plate depicted in Figure 3 of Vyas contains an outer conductive layer and an inner titanium oxide layer, paragraphs 16 and 32 indicate that the layers can be deposited in either order. 11 Appeal2014-009185 Application 12/564,344 to produce hydrophilic coatings. (Spec. i-f 28.) Therefore, one of ordinary skill in the art reasonably would have been led at the time of the invention to incorporate a hydrocarbon-containing silane compound as disclosed in Gyoten and, as discussed in Appellants' Specification, into the hydrophilic, titanium oxide flow path surface disclosed in Vyas, as recited in claims 6 and 7, with a reasonable expectation of successfully enhancing the hydrophilicity of the flow path surface. Accordingly, Appellants' argument regarding Gyoten's lack of explicit teaching of a flow field plate coated with a titanium oxide layer that includes hydrocarbons is unpersuasive of reversible error because it is based on Gyoten alone, and does not take into account what the combined disclosures of the applied prior art would have suggested to one of ordinary skill in the art. Jn re 1'.1erck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness "is what the combined teachings of the references would have suggested to those of ordinary skill in the art.") 12 Appeal2014-009185 Application 12/564,344 Rejection of Claims 13 and 14 as unpatentable over Vyas, Blunk, and Gyoten Claim 13 requires the titanium oxide/carbon bilayer to be activated by a UV or plasma source, and claim 14 requires activation by visible light after treatment with a nitrogen-containing gas. As discussed above, Vyas discloses that a conductive layer is deposited on a bipolar plate in a fuel cell, and discloses that a titanium oxide layer that defines a flow path surface in the fuel cell is deposited on the conductive layer to form a bilayer. (Vyas i-fi-f 16, 25, 32, Fig. 3.) The Examiner acknowledges that Vyas does not disclose activation of such a bilayer as recited in claims 13 and 14, and to address this deficiency in Vyas, relies on Sugimasa's disclosure of a "technique for making a titanium oxide/carbon layer more hydrophilic by UV-ray irradiation." (Final Act. 9.) However, Sugimasa discloses a method for enhancing the hydrophilicity of the surface of a porous carbon anode diffusion layer in a membrane electrode assembly of a fuel cell by UV irradiation, and does not disclose a method for enhancing the hydrophilicity of a titanium oxide flow path surface by UV irradiation. (Sugimasa i1i12, 66.) The Examiner does not adequately explain, or provide any evidence to show, why one of ordinary skill in the art reasonably would have expected that a method for enhancing the hydrophilicity of a porous carbon diffusion layer in a membrane electrode assembly would be useful for a flow path surface made of titanium oxide. On this record, therefore, the Examiner does not demonstrate that one 13 Appeal2014-009185 Application 12/564,344 of ordinary skill in the art reasonably would have been led to activate the titanium oxide flow path surface suggested by Vyas and Blunk with UV radiation as recited in claim 13 in view of Sugimasa's disclosure of enhancing the hydrophilicity of a porous carbon anode diffusion layer via UV irradiation. With respect to claim 14, which requires activation of the titanium oxide/carbon bilayer by visible light after treatment with a nitrogen- containing gas, the Examiner again relies on Sugimasa' s disclosure of enhancing the hydrophilicity of a porous carbon anode diffusion layer via UV irradiation, asserts that "the specific method of activation is [sic] does not structurally distinguish the instant structure claim from that of the prior art." (Final Act. 10.) However, as discussed above, the Examiner does not articulate an apparent reason or suggestion that \'l/ould have prompted one of ordinary skill in the art to activate the titanium oxide flow path surface suggested by Vyas and Blunk with UV radiation in view of Sugimasa's disclosures. Accordingly, on this record, we are persuaded that the Examiner's evidence and explanation are not sufficient to establish a prima facie case of obviousness of the subject matter recited in claims 13 and 14 within the meaning of 35 U.S.C. § 103(a). We therefore do not sustain the Examiner's rejection of these claims. 14 Appeal2014-009185 Application 12/564,344 Rejection of claims 8, 10, 12, and 17 Appellants assert that each of these claims, which depend from claim 1, are allowable for the same reasons advanced in connection with claim 1. (App. Br. 7-9.) Because we are unpersuaded of reversible error in the Examiner's rejection of claim 1, Appellants' position as to these claims is equally without merit. Accordingly, we sustain the rejections of claims 8, 10, 12, and 17 under 35 U.S.C. § 103(a). CONCLUSION In view of the reasons set forth above, we reverse the Examiner's decision rejecting claims 6 and 7 under § 102(b) and claims 13 and 14 under 35 U.S.C. § 103(a), but affirm the Examiner's decisions rejecting claims 1- 8, 10-12, and 16-21 under§ 103(a). 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-IN-PART 15 Copy with citationCopy as parenthetical citation