Ex Parte Devries

Patent Trial and Appeal Board

Sep 21, 2016

11966887 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111966,887 12/28/2007
8156 7590 09/23/2016
JOHN P. O'BANION
O'BANION & RITCHEY LLP
400 CAPITOL MALL SUITE 1550
SACRAMENTO, CA 95814
FIRST NAMED INVENTOR
Peter David Devries
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.
ALT6089.07A 5931
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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@intellectual.com
jpo@intellectual.com
sek@intellectual.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER DAVID DEVRIES
Appeal2015-002402
Application 11/966,887
Technology Center 1700
Before MARK NAGUMO, N. WHITNEY WILSON, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4--7, and 11-19 under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies Altergy Systems as the real party in interest. App. Br. 1.
Appeal2015-002402
Application 11/966,887
STATEMENT OF THE CASE
Claimed Invention
Appellant claims a polymer electrolyte membrane (PEM) modular
unit fuel cell assembly. App. Br. 23 (claim 1 ). An embodiment is illustrated
in Figure 7, which is reproduced below:
60
55
s.s~n
1l
~

80 70
62 Figure 7
/45
Figure 7 shows an exploded cross-section of the elements of a modular
unit cell. Spec. i-fi-1 24, 29.
Claims 1, 2, and 4 are the independent claims on appeal. Claim 1 is
reproduced below from Appellant's Claims Appendix, with bold added for
emphasis and bracketed reference numerals added to identify corresponding
structures in Figure 7:
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Application 11/966,887
1. A PEM modular unit fuel cell assembly [ 45],
compnsmg:
a membrane electrode assembly (MEA) [ 62] having an
anode side and a cathode side;
an anode porous transport layer (PTL) [70] having a
first and second side, comprising a three-dimensional open
structure suitable for gas diffusion and electrical and heat
conduction, the first side of anode PTL is juxtaposed with and
in electrical contact with the anode side of the MEA;
a conductive bipolar separator plate [50] having a first
side and a second side, the first side of the conductive separator
plate juxtaposed and in electrical contact with the second side
of the anode PTL;
a heat transfer structure [85] having a first side and a
second side, the first side of the heat transfer structure
juxtaposed with the second side of the conductive separator
plate; and
a cathode PTL [7 5] having a first and second side,
comprising a three-dimensional open structure suitable for gas
diffusion and electrical and heat conduction, the first side of
cathode PTL is juxtaposed with and in electrical contact with
the second side of the heat transfer structure;
wherein the MEA comprises a proton exchange
membrane (PEM) [55] disposed between an anode gas
diffusion layer [60] and a cathode gas diffusion layer [65];
wherein the cathode PTL and anode PTL comprise a
reticulated structure configured to distribute the compressive
stresses evenly when the modular unit fuel cell is compressed in
a fuel cell stack.
App. Br. 23. Independent claims 2 and 4 similarly recite an anode porous
transport layer (PTL ), a cathode PTL, an anode gas diffusion layer, and a
cathode gas diffusion layer. Id. at 24--25.
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Appeal2015-002402
Application 11/966,887
Lloyd et al.
("Lloyd")
F ormanski et al.
("F ormanski")
Koehler et al.
("Koehler")
References
US 2004/0086775 Al May 6, 2004
US 2006/0240308 Al Oct. 26, 2006
WO 2005/086271 Al Sept. 15, 2005
The Rejections
1. Claims 1, 2, and 4--7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Formanski in view of Koehler. Final Action 3-5.2
2. Claims 11-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Formanski and Koehler in view of Lloyd. Id. at 5---6.
ANALYSIS
Claim Construction
Each independent claim recites, among other elements, the following
four layers: an anode porous transport layer (PTL), a cathode PTL, an anode
gas diffusion layer (GDL), and a cathode GDL. App. Br. 23-25. The
Examiner construes the independent claims as not requiring that the PTL and
GDL are separate layers in the assembly. Final Action 2; Ans. 4, 6-7.
Appellant argues that the Examiner's claim construction is incorrect and that
the terms "porous transport layer (PTL)" and "gas diffusion layer (GDL)"
would be understood in the art as referring to separate and distinct
components. App. Br. 12.
In our view, the Examiner's interpretation is contrary to the plain
language of the claim, which recites an anode PTL, a cathode PTL, an anode
2 Final Action mailed June 7, 2013.
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Application 11/966,887
GDL, and a cathode GDL as separate claim elements. Becton, Dickinson &
Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
("Where a claim lists elements separately, the clear implication of the claim
language is that those elements are distinct component[ s] of the patented
invention.") (internal quotes and citation omitted).
We are mindful that, unlike the court in Becton, Dickinson, which was
considering patented claims, we are required to apply a broadest reasonable
interpretation of claims in an application for patent. Even under that
standard, however, we cannot construe claims "so broadly that its
constructions are unreasonable under general claim construction principles."
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
The Board does not have "an unfettered license to interpret the words in a
claim without regard for the full claim language and the written description."
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). The
Board; s construction "cannot be divorced from the specification and the
record evidence, and must be consistent with the one that those skilled in the
art would reach." SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341,
1348 (Fed. Cir. 2016).
Here, the claims, the Specification, and the record evidence
demonstrate that a person of ordinary skill in the art would construe the
independent claims as requiring a porous transport layer (PTL) in addition to
a gas diffusion layer (GDL). 3 Claim 2, for example, recites an anode PTL
3 Appellant relies on a declaration under 37 C.F.R. § 1.132 of Jerrold
Franklin filed May 17, 2013. For purposes of claim construction, we do not
give substantial weight to the declaration, which does not cite to objective
evidence in support of declarant's opinions regarding the meaning of the
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Appeal2015-002402
Application 11/966,887
juxtaposed with and in electrical contact with the anode side of the MEA,
where the MEA comprises an anode GDL. Claim 2 also recites a cathode
PTL juxtaposed with and in electrical contact with the cathode side of the
MEA, where the MEA comprises a cathode GDL. App. Br. 24. Figure 7
shows anode gas diffusion layer 60 as a separate layer from anode porous
transport layer 70, and similarly shows cathode GDL 65 as a separate layer
from cathode PTL 75. The Specification describes GDLs 60 and 65 as part
ofMEA 62, Spec. i-fi-132-34, and separately describes PTLs 70 and 75, Spec.
i137.
The Examiner does not direct us to support in the claim language or
Specification indicating that the PTL and GDL need not be separate
components or that a single component can function as both elements. More
particularly, the Examiner does not direct us to support for construing "an
anode porous transport layer (PTL )" as referring to the same component of
the fuel cell assembly as "an anode gas diffusion layer.'' Nor does the
Examiner direct us to support for construing "a cathode PTL" as referring to
the same component of the fuel cell assembly as "a cathode gas diffusion
layer."
Accordingly, under a broadest reasonable interpretation, we construe
each independent claim as requiring "an anode gas diffusion layer" in
addition to "an anode porous transport layer (PTL ). " We further construe
claim terms. See In re NTP, Inc., 654 F.3d 1268, 1275 (Fed. Cir. 2011) (the
Board did not abuse its discretion in discounting expert declaration on issue
of claim construction); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) ("the Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations").
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Application 11/966,887
each independent claim as requiring "a cathode gas diffusion layer" in
addition to "a cathode PTL."
Obviousness Based on Formanski and Koehler
The Examiner finds that Formanski discloses a PEM fuel cell having
all elements of independent claims 1, 2, and 4, except for a reticulated
structure for the porous transport layer (PTL). Final Action 3. The
Examiner finds that Formanski discloses an anode PTL in the form of
porous conductive sheets 76 and 78 and a cathode PTL in the form of porous
conductive sheets 80 and 82. Id. The Examiner determines that a reticulated
structure for the PTL would have been obvious in view of Koehler. Final
Action 3--4.
Appellant argues that, regardless of whether Formanski's porous
conductive sheets 7 6, 78, 80, and 82 are interpreted as PTLs or GD Ls,
Formanski lacks the structure recited in claims 1, 2, and 4, which require
PTLs in addition to GDLs. App. Br. 14--15. Appellant argues that Koehler
discloses GDLs, not PTLs. Id. at 15-16.
We are persuaded that the Examiner errs in finding, as a matter of
fact, that the proposed combination of Formanski and Koehler discloses all
elements of Appellant's independent claims 1, 2, and 4 under a proper claim
construction, as outlined above. The Examiner does not find that the cited
art teaches porous transport layers (PTLs) in addition to gas diffusion layers
(GDLs). Instead, the Examiner relies on a construction of Appellant's
claims as not requiring that the PTL and GDL are separate layers in the
assembly. Final Action 2; Ans. 4, 6-7. For the reasons discussed above, we
determine that this claim construction is incorrect. We do not sustain the
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Application 11/966,887
Examiner's rejection of claims 1, 2, and 4--7 because it is based on an
incorrect claim construction.
The Examiner also holds: "there is no difference claimed in a GDL
and PTL and therefore mere duplication of parts would obviate the instant
claim." Ans. 8; see also id. at 6 (responding to Appellant's argument that
the claimed assembly is not a mere duplication of parts). The Examiner
appears to invoke the rule of In re Harza, that "the mere duplication of parts
has no patentable significance unless a new and unexpected result is
produced." 274 F.2d 669, 671 (CCPA 1960). The Examiner does not,
however, set forth an adequate factual basis for invoking the rule of Harza,
nor a sufficient basis for concluding that "mere duplication of parts"
supports obviousness of Appellant's claims.
In Harza, the "only distinction" between the claimed structure (a
flexible material web sealing the joint between poured masonary masses)
and the structure disclosed in the cited art was "in the recitation in claim 1 of
a plurality of ribs on each side of the web whereas [the reference] shows
only a single rib on each side of the web." Harza, 274 F.2d at 671. The
Examiner does not compare the facts of this case with H arza (or other
precedent) or explain why, based upon such a comparison, the legal
conclusion should be the same as in H arza.
In contrast to the "plurality of ribs" limitation in H arza, the limitations
of Appellant's claims do not recite a mere duplication of a part that is
disclosed in the singular in the cited art. Appellant's claims recite a layered
structure that includes an anode porous transport layer (PTL ), an anode gas
diffusion layer (GDL), a proton exchange membrane (PEM), a cathode
GDL, and a cathode PTL, where the anode and cathode PTLs comprise a
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Appeal2015-002402
Application 11/966,887
reticulated structure. App. Br. 23-25. The Examiner does not explain how
"mere duplication" of Formanski's sheets 76, 78, 80, and 82 would result in
the structure recited in Appellant's claims. Cf Final Action 3. Nor does the
Examiner explain why one of ordinary skill in the art would have found it
obvious both to duplicate Formanski's disclosed sheets and to modify one or
more of them to have a reticulated structure or how such duplication and
modification would result in the claimed structure. Cf id. at 4 (discussing
modification of Formanski in view of Koehler).
The foregoing deficiencies in the Examiner's findings and conclusions
regarding independent claims 1, 2, and 4 are not remedied by the Examiner's
findings or conclusions regarding dependent claims 5-7.
For all of the foregoing reasons, we do not sustain the rejection of
claims 1, 2, and 4--7 under 35 U.S.C. § 103(a) as unpatentable over
Formanski and Koehler.
Obviousness Based on Formanski, Koehler, and Lloyd
The Examiner finds that F ormanski in view of Koehler fails to teach
anode and cathode PTLs having a higher porosity than anode and cathode
GDLs, as recited in claims 11-16. Final Action 5. The Examiner finds that
Lloyd discloses a gas diffusion layer with an outer layer (corresponding to
Applicant's PTL) having a greater porosity than an inner layer. Id. (citing
Lloyd Abstract, i-fi-1 43--44, Fig. 9). The Examiner determines that it would
have been obvious to modify Formanski (as modified by Koehler) to include
a variable porosity GDL as taught by Lloyd "in order to provide a layer with
increased hydrophobicity in order to increase the overall cell's
characteristics." Id. (citing Lloyd i-fi-138-39, Fig. 5).
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Application 11/966,887
Appellant argues that the Examiner's assertion of supposed benefits or
advantages of the modification (e.g., increased hydrophobicity) is
insufficient to support a conclusion of obviousness and that the rejection is
based on hindsight. App. Br. 20-21.
An obviousness rejection "cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning" for combining elements in the manner claimed. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). We must review the Examiner's reasoning
and the cited evidence "to determine whether there was an apparent reason
to combine the known elements in the fashion claimed" by Appellant. Id. at
418.
Applying these standards to the appealed rejection, we are not
convinced that the Examiner's reasoning is sufficient to support the
proposed modification of Formanski and Koehler and is adequately
supported by Lloyd. The Examiner asserts that it would have been obvious
to modify a fuel cell to include a variable porosity GDL "in order to provide
a layer with increased hydrophobicity in order to increase the overall cell's
characteristics." Final Action 5. The Examiner does not, however, explain
the relationship, if any, between hydrophobicity and porosity, nor explain
why a benefit associated with increased hydrophobicity would have led one
of ordinary skill in the art to modify a fuel cell to include a layer having
variable porosity.
As support for the asserted rationale, the Examiner cites paragraphs
38 and 39 and Figure 5 of Lloyd. Id. Paragraph 38 teaches a gas diffusion
layer comprising a macro-diffusion layer and a micro-diffusion layer, where
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Appeal2015-002402
Application 11/966,887
the former has greater porosity than the latter. Lloyd i-f 38. Paragraph 39
and Figure 5 teach that the performance characteristics of a fuel cell are
increased by providing a gas diffusion layer having enhanced or variable
hydrophobicity due to PTFE content in the micro-diffusion layer. Id. ,-r 39,
Fig. 5. The Examiner does not, however, cite to evidence supporting the
assertion that a variable porosity GDL would provide increased
hydrophobicity or increased cell performance characteristics. In fact, a fuel
cell having a variable porosity GDL is merely the baseline against which
Lloyd shows increased cell performance. Id. i-fi-138-39, Fig. 5, (line 41
showing performance of fuel cell with untreated gas diffusion layer 22
including a macro-diffusion layer and a micro-diffusion layer).
The foregoing deficiencies in the Examiner's findings and conclusions
regarding claims 11-16 are not remedied by the Examiner's findings or
conclusions regarding claims 17-19, which depend from claims 11-13,
respectively. The Examiner; s conclusion that "the higher porosity (macro-
diffusion) layer increases hydrophobicity," Final Action 6 (citing Lloyd
i-fi-112-15) is not sufficiently supported by the cited paragraphs of Lloyd or
other evidence or reasoning.
For all of the foregoing reasons, we do not sustain the rejection of
claims 11-19 under 35 U.S.C. § 103(a) as unpatentable over Formanski,
Koehler, and Lloyd.
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is reversed.
REVERSED
11