Ex Parte Damdar et al

Patent Trial and Appeal Board

Dec 20, 2016

13252788 (P.T.A.B. Dec. 20, 2016)

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.
13/252,788 10/04/2011 Sherwin Damdar 089129- 8075.U S02 2936
98783 7590 12/22/2016
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
EXAMINER
USYATINSKY, ALEXANDER
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHERWIN DAMDAR, JAMES DRAGO,
and PAUL JUDE NICHOLS
Appeal 2015-003893
Application 13/252,7881
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the March 6, 2014 Final
Rejection of claims 1—11 and 21—29. We have jurisdiction under 35 U.S.C.
§6.
1 The real party in interest is Garlock Sealing Technologies, LLC. (App. Br.
1).
Appeal 2015-003893
Application 13/252,788
Appellants’ invention relates generally to a solid oxide fuel cell
incorporating an extreme temperature gasket and an apparatus comprising a
solid oxide fuel cell. (Spec. 2). Claim 1 is illustrative of the subject matter
on appeal and reproduced from the Brief below:
1. A solid oxide fuel cell comprising:
an upper electrode;
a lower electrode; and
an extreme temperature gasket material disposed between
the upper electrode and the lower electrode, the extreme
temperature gasket material comprising:
5 to 20 wt% inorganic fiber;
75 to 90 wt% inorganic filler; and
1 to 5 wt%; organic binder.
App. Br. 9 (Claims Appendix).
The Examiner has maintained the rejection of claims 1—9 under 35
U.S.C. § 103(a) as unpatentable over Gilman et al., US 2004/0137302 Al,
July 15, 2004 (“Gilman”) in view of Amano et al., US 5,763,094, June 9,
1998 (“Amano”); and claims 4, 5, 10 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Gilman and Amano, further in view of Dunn et al., US
2009/0162672 Al, June 25, 2009 (“Dunn”).
We refer to the Examiner’s Final Action for a statement of the
rejection. (Final Act. 3—10).
2
Appeal 2015-003893
Application 13/252,788
OPINION2
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the proposed modification of
Gilman based on the teachings of Amano would have rendered the resulting
stmcture unsatisfactory for its intended purpose because the gasket material
of Amano would not be capable of providing the same level of sealing as
provided by the aerogel gasket material of Gilman. (App. Br. 5—7).
Gilman discusses in the background of the invention that there are
several challenges to the good development of solid oxide fuel cells that
precludes the filling materials being formed from rubber or plastic. (Gilman
14). Consequently, a person of ordinary skill in the art would have
recognized the need to utilize gasket materials that did not include these
materials. Amano describes sheet materials suitable for gaskets that
“exhibits excellent flexibility, sealing property and heat resistance.”
(Amano, col. 1,11. 53—56). However, Amano discloses the gasket material
comprises at least an inorganic filler other than asbestos, a rubber material,
a polycarbodiimide resin powder, and an organic or inorganic fiber.
(Amano, col. 1,11. 53—60). Thus, Amano requires the gasket material to
contain rubber which is expressly excluded from the invention of Gilman.
The Examiner has not established that the relied-upon disclosures are
sufficient to support obviousness of the Appellants’ claimed invention. See
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
2 Our discussion applies to independent claims 1,21 and 29.
3
Appeal 2015-003893
Application 13/252,788
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the appealed rejections.
ORDER
The appealed obviousness rejections of claims 1—11 and 21—29 are
reversed.
REVERSED
4