Ex Parte Gertner

Board of Patent Appeals and Interferences

Mar 31, 2010

10703765 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL ERIC GERTNER
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Appeal 2009-005398
Application 10/703,765
Technology Center 1700
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Decided: March 31, 2010
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Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1, 4, 7, 18, and 22 under 35 U.S.C. § 102(e) as anticipated
by McElrath.1,2 We have jurisdiction under 35 U.S.C. § 6(b).

1 US 2004/0197638 A1 to McElrath et al. published October 7, 2004.
2 Claims 2, 3, 5, 6, 8-11, 14-17, and 19-21 are also pending but have been
withdrawn from consideration. Final Office Action dated October 17, 2007,
at 1.
Appeal 2009-005398
Application 10/703,765

We AFFIRM.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
A fuel cell component comprising:

a. a porous polymeric material;
b. a first conductive coating;
c. a second conductive and catalytic coating; and
d. a third catalysis enhancing coating.

Br., Claims Appendix.3
B. ISSUE
The Examiner contends that McElrath describes the subject matter of
claim 1. Ans. 3.4 However, the Appellant contends that McElrath does not
disclose a third catalysis enhancing coating as recited in claim 1. Br. 9.
Thus, the sole issue on appeal is:
Has the Appellant identified harmful error in the Examiner’s finding
that McElrath discloses a fuel cell component comprising a third catalysis
enhancing coating as recited in claim 1?
For the reasons set forth below and in the Examiner’s Answer dated
August 6, 2008, we answer this question in the negative.
C. FINDINGS OF FACT
McElrath discloses a PEM fuel cell comprising a proton exchange
membrane. See, e.g., McElrath, para. [0115].
McElrath discloses that NAFION may be used as the membrane
material. See, e.g., McElrath, para. [0094]. The Examiner found, and the
Appellant does not dispute, that NAFION is a porous polymer. Ans. 4.

3 Appeal Brief dated May 6, 2008.
4 Examiner’s Answer dated August 6, 2008.
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Appeal 2009-005398
Application 10/703,765

The Examiner found that the proton exchange membrane corresponds
to the “porous polymeric material” recited in claim 1. Ans. 4.
McElrath discloses that a layer of carbon nanotubes is in contact with
the proton exchange membrane. McElrath, para. [0115].
The Examiner found that this layer of carbon nanotubes corresponds
to the “first conductive coating” recited in claim 1. Ans. 4.
McElrath discloses that an electrode is in contact with the layer of
carbon nanotubes. McElrath, para. [0115].
McElrath discloses that the electrode comprises a plurality of carbon
nanotubes and a catalyst material which is deposited on the carbon
nanotubes. See, e.g., McElrath, para. [0076]-[0077]; McElrath claim 1.
The Examiner found that the plurality of carbon nanotubes and the
catalyst material comprising the electrode correspond to the “second
conductive and catalytic coating” and the “third catalysis enhancing
coating,” respectively, recited in claim 1. Ans. 4.
D. PRINCIPLES OF LAW
“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).
E. ANALYSIS
At the outset, we note that claim 1 merely lists elements (a) through
(d) and does not recite any structural or functional relationship between the
elements whereby a “fuel cell component” is formed. Thus, a description of
each of these elements, in any order, in the fuel cell of McElrath anticipates
claim 1.
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Appeal 2009-005398
Application 10/703,765

As set forth above, the Examiner found that McElrath describes a fuel
cell component comprising elements (a) through (d) recited in claim 1. Ans.
4. The Examiner’s findings are supported by the record. Thus, contrary to
the Appellant’s arguments, we find that McElrath describes a “fuel cell
component” comprising “a third catalysis enhancing coating” as recited in
claim 1.
F. DECISION
The decision of the Examiner is affirmed.

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

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MICHAEL GERTNER
P.O. BOX P
MENLO PARK, CA 94026
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