Ex Parte Fly et al

Board of Patent Appeals and Interferences

May 8, 2009

10080754 (B.P.A.I. May. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERALD W. FLY and BRIAN K. BRADY
____________

Appeal 2009-3002
Application 10/080,754
Technology Center 1700
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Decided:1 May 8, 2009
____________

Before EDWARD C. KIMLIN, ROMULO H. DELMENDO, and
LINDA M. GAUDETTE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/080,754

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 9, 10, and 13-18. (Appeal Brief filed April 12, 2006, hereinafter
“App. Br.”; Final Office Action entered July 11, 2005, hereinafter “FOA”).
Claims 6-8, 11, 12, and 20-25 have either been allowed or indicated as
containing allowable subject matter (FOA 4; Ans. 7).2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ claimed invention relates to a fuel cell system having an
improved bipolar plate assembly (Specification, hereinafter “Spec.” ¶ 0008).
According to Appellants, the invention is useful in many applications
including a power source for an electrical vehicle to replace internal
combustion engines (id. at ¶¶ 0003, 0008).
Claim 1, the sole independent claim on appeal, reads as follows:
A fuel cell comprising:
a membrane electrode assembly having a membrane, a
first catalytic layer on a first face of said membrane and a
second catalytic layer on a second face of said membrane;
a first bipolar plate assembly adjacent said first catalytic
layer and in electrical contact therewith, said first bipolar plate
assembly including:
a first gas distribution layer having a plurality of porous,
reactant gas flow channels extending transversely through said
first gas distribution layer in a generally parallel orientation, a
first face of said first gas distribution layer confronting said first
catalytic layer such that said plurality of porous, reactant gas

2 In the FOA, claim 20 is indicated as rejected in the Office Action Summary
(PTOL-326), but is not rejected under any ground (FOA 2-4). Also, in the
Examiner’s Answer, the only discussion of claim 20 occurs in the Allowable
Subject Matter section (Ans. 7).
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flow channels are in fluid communication with said first
catalytic layer; and
a first non-porous impermeable, conductive separator
plate secured to a second face of said first gas distribution layer;
a second bipolar plate assembly adjacent said second
catalytic layer and in electrical contact therewith, said second
bipolar plate assembly including:
a second gas distribution layer having a plurality of
porous, reactant gas flow channels extending transversely
through said second gas distribution layer in a generally parallel
orientation, a first face of said second gas distribution layer
confronting said second catalytic layer such that said plurality
of porous, reactant gas flow channels are in fluid
communication with said second catalytic layer; and
a second non-porous impermeable, conductive separator
plate secured to a second face of said second gas distribution
layer.
(App. Br. 10; Appendix A)3
The prior art reference relied upon by the Examiner to reject the
claims on appeal is:
Cipollini 6,258,476 B1 July 10, 2001

The Examiner rejected claims 1, 3, 13, 15, and 17 under 35 U.S.C. §
102(e) as anticipated by Cipollini (Ans. 3). Also, the Examiner rejected
claims 2, 4, 9, 10, 14, 16, and 18 under 35 U.S.C. § 103(a) as unpatentable in
view of Cipollini (Ans. 5).
The Examiner found that Cipollini teaches every limitation of the
invention recited in claim 1 (Ans. 3-4). With respect to the claimed first and

3 The Appeal Brief does not contain numbered pages. Nevertheless, we
number the pages of the brief 1-18 starting with the first page, which has the
heading “APPEAL BRIEF,” and refer to these page numbers in this
Opinion.
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second “non-porous impermeable, conductive separator plate[s],” the
Examiner acknowledged that Cipollini discloses a porous separator plate (id.
at 7-8). Nevertheless, the Examiner asserted that “it is apparent that the
pores of [the separator plate], when filled with water, results in a plate which
is non-porous to materials other than water” (Ans. 8, ll. 20-21).
Appellants, on the other hand, contend that Cipollini discloses a
porous separator plate and that “[r]egardless of whether water is able to fill
the pores or not, the structure of [Cipollini’s disclosed separator] has pores
and is therefore porous” (App. Br. 6, ll. 16-22).
With regard to the second ground of rejection, the Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to modify the teachings of Cipollini to arrive at the recited limitations of
porosity, permeability, electrical resistance, material selection, and plurality
of coolant flow channels of the dependent claims 2, 4, 9, 10, 14, 16, and 18
(Ans. 5-7).
Appellants, with regard to the second ground of rejection, maintain
the focus of their arguments on the separator plate as recited in claim 1 and
respond that “[a]ny obviousness rejection of the present claims is
inappropriate, as Cipollini teaches away from the invention of claim 1 and
the remainder of the rejected claims each depend from claim 1” (App. 8, ll.
13-15).

ISSUE
Thus, the sole issue arising from the contentions between the
Examiner and Appellants is:
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Have Appellants shown reversible error in the Examiner’s finding that
Cipollini discloses a non-porous separator as is required by the claimed
invention?

FINDINGS OF FACT (FF)
Findings of Fact throughout this Opinion are supported by at least a
preponderance of the evidence of record.
1. Appellants’ Fig. 8 is reproduced below:

Fig. 8 depicts a bipolar plate assembly 44 including a separator plate
48 and a gas distribution layer 46 (Spec. ¶ 0042).
2. Appellants’ Abstract discloses that “[e]ach bipolar plate assembly
further includes a non-porous, conductive separator plate” (Abstract,
ll. 10-11).
3. In addition, Appellants’ figures show separator plates that do not have
a porous structure (Figs. 5-17).
4. Cipollini discloses a fuel cell having porous plates that remove
product water from the oxidant side of a fuel cell membrane to
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prevent cell flooding and supply water to the anode side of the
membrane to prevent dryout (Abstract; col. 7, ll.33-38).
5. Cipollini discloses:
[W]ater may be removed from the cathode side of the
membrane surface, and/or supplied to the anode side of
the membrance [sic] surface, by porous carbon plates
which have been rendered highly wettable and
hydrophilic by partially filling the pores of the carbon
plates with certain metal oxyhydroxides [col. 1, ll. 9-15].
6. Cipollini discloses that “[w]hen the pores of the carbon plate are
partially filled with the metal oxyhydroxide compound, the plate
becomes highly wettable by water, and the gas pressure differential
which may be applied to the plate increases without the danger of
breakthrough of the reactant gas” (col. 4, ll. 25-30).
7. Cipollini’s Fig. 2 is reproduced below:

Fig. 2 depicts a fuel cell including coolant water channel 15, water
transfer layer (i.e., cathode reactant gas flow field plate) 4, gas
impermeable member 14, anode reactant field plate 13, cathode
catalyst 3, anode catalyst 7, and membrane 2 (col. 5, ll. 25-35).
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8. Cipollini discloses “[t]he surface of . . . the plate 13 opposite its ribs
contacts a gas impermeable member 14 which, in turn, contacts the
coolant water channel 15 in the product water transfer member 4 of
the adjacent cell” (col. 5, ll. 25-26 and 31-35).

PRINCIPLES OF LAW
Adopted claim construction must be “reasonable in light of the totality
of the written description.” In re Baker Hughes, 215 F.3d 1297, 1303 (Fed.
Cir. 2000).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ANALYSIS
Claims 1, 3, 13, 15, and 17 Rejected as Anticipated by Cipollini
Claim 1 requires a “non-porous” separator (Claim 1). However, the
Examiner contends that “the extent or specific degree to which the separator
is non-porous and impermeable is not defined by the claim and [is] open to
an interpretation which is broader than what Appellant argues” (Ans. 8, ll.
16-18). Therefore, the Examiner asserts:
[T]o the extent that the claim fails to define how the separator
plate is non-porous and impermeable, it is maintained that when
water is provided in the plate of Cipollini, the separator plate is
non-porous to materials other than water and impermeable to
the reactants of the fuel cell. As such, Cipollini still anticipates
the claimed separator plate of the instant claims” (Ans. 9, ll. 4-
8).
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We do not agree with the Examiner. In the Specification, the
separator plate is described as non-porous and the figures depict separator
plates without a porous structure (FF 1-3). This description reasonably
informs one skilled in the relevant art that the claim limitation in question
(i.e., “non-porous” separator plate) requires a separator without a porous
structure so that the plate is non-porous, even with respect to water. Thus,
one of ordinary skill in the art would have understood the claimed non-
porous separator plate could not reasonably be construed to cover porous
separator plates.
In direct conflict with the claim limitation at issue, Cipollini discloses
a porous separator plate (FF 4-8). Even when filled with water, the
separator has a porous structure and provides a path for water moving
through the pores towards or away from the fuel cell membrane (FF 4 and
5).
Under these circumstances, the Examiner erred in interpreting the
claims in a manner directly contrary to Appellants’ Specification. Baker
Hughes, 215 F.3d at 1303.

Claims 2, 4, 9, 10, 14, 16, and 18 Rejected as Obvious in View of Cipollini
The Examiner does not rely on any argument or evidence to show that
it would have been obvious to one of ordinary skill in the art to modify
Cipollini’s porous separator plate to arrive at the claimed non-porous plate
(Ans. 4-10). For the same reasons as discussed above, we do not uphold the
Examiner’s rejection of dependent claims 2, 4, 9, 10, 14, 16, and 18.

CONCLUSION
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Appellants have shown reversible error in the Examiner’s finding that
Cipollini discloses a non-porous separator as required by the claimed
invention.

ORDER
The decision of the Examiner rejecting claims 1, 3, 13, 15, and 17
under 35 U.S.C. § 102(e) and claims 2, 4, 9, 10, 14, 16, and 18 under 35
U.S.C. § 103(a) is reversed.

REVERSED

ack

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P.O. BOX 828
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