Ex Parte Haas et al

Patent Trials and Appeals Board

May 15, 2019

13518435 - (D) (P.T.A.B. May. 15, 2019)

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.
13/518,435 09/26/2012 Herwig Haas 3926.367 2613
41288 7590 05/15/2019
PATFNT TFNTR AT T T C
EXAMINER
Stephan A. Pendorf DOVE, TRACY MAE
1401 Hollywood Boulevard
Hollywood, EL 33020 ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
05/15/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERWIG HAAS, JOY ROBERTS,
FRANCINE BERRETTA, AMY SHUN-WEN YANG, YVONNE HSIEH,
GUY PEPIN, ANDREW LEOW, RICHARD FELLOWS,
and NICOLAE BARS AN
Appeal 2018-006119
Application 13/518,435
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 30—38, 43—45, and 59 under (1) 35 U.S.C.
§ 112(a)or35U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
1 This Decision includes citations to the following documents: Specification filed
June 22, 2012 (“Spec.”); Final Office Action dated June 13, 2017 (“Final”);
Appeal Brief filed Jan. 16, 2018 (“Appeal Br.”); Examiner’s Answer dated Mar.
22, 2018 (“Ans.”); and Reply Brief filed May 22, 2018 (“Reply Br.”).
2 The Appellants identify the real parties in interest as Daimler AG of Stuttgart,
Germany, and Ford Motor Company of Dearborn, Michigan. Appeal Br. 3.
Appeal 2018-006119
Application 13/518,435
the written description requirement; and (2) 35 U.S.C. § 102(b) as anticipated by
(a) Lee,3 (b) Ye,4 and (c) Hill.5’6
We AFFIRM.
The invention relates to a solid polymer electrolyte fuel cell. Spec. 1. A solid
polymer electrolyte fuel cell stack for generating electricity at useful voltages
generally includes several to many unit cells stacked in multi-layers, each unit cell
being formed with a membrane-electrode assembly (MEA) comprising an anode,
a cathode, and a solid polymer electrolyte membrane therebetween. Id. at 5. Both
the anode and the cathode comprise catalysts (e.g. platinum). Id. MEAs often
include porous, electrically conductive, gas diffusion layers (GDLs) adjacent the
anode (oxidation electrode) and cathode (reduction electrode) for purposes of
distributing reactants to and by-products from these electrodes. Id. Electrically
conductive flow field plates comprising a plurality of channels patterned therein
are employed to evenly distribute reactants to, and by-products from, the adjacent
GDLs. Id. “Hydrogen fuel is supplied to the anode and adsorbed on the anode
catalyst, often present in the form of a catalyst coating on the membrane electrolyte
. . . . The fuel is oxidized to produce protons and electrons.” Id. “The electrons are
transferred to the cathode via an external circuit, and the protons are transferred to
the cathode through the polymer electrolyte membrane.” Id. The protons, electrons,
and an oxidant, typically air, are reacted on the catalyst present on or in the cathode
to product electricity and water. Id.
3 US 2006/0134501 Al, pub. June 22, 2006.
4 WO 2008/024465 A2, pub. Feb. 28, 2008.
5 GB 2,309,230 A, pub. July 23, 1997.
6 We have jurisdiction under 35 U.S.C. § 6(b).
2
Appeal 2018-006119
Application 13/518,435
According to the Specification, “[d]uring the start-up and shut-down of fuel
cell systems, corrosion enhancing events can occur.” Id. at 1. “In particular, air can
be present at the anode . . . and the transition between air and fuel in the anode is
known to cause temporary high potentials at the cathode, thereby resulting in
carbon corrosion and platinum catalyst dissolution, . . . [and] significant
performance degradation over time.” Id. The inventive solid polymer electrolyte
fuel cell incorporates a selectively conductive component that is said to prevent
temporary high cathode potentials during fuel cell start-up and shut-down. Id. at 2.
Of the appealed claims, claim 30, reproduced below, is the sole independent
claim. See generally Appeal Br. 24—26 (Claims Appendix)
30. A solid polymer electrolyte fuel cell, the fuel cell comprising a
solid polymer electrolyte, cathode components, and anode
components connected in series electrically, wherein:
the cathode components comprise a cathode electrode, a
cathode gas diffusion layer, and a cathode fuel flow plate;
the anode components comprise an anode electrode, an anode
gas diffusion layer, and an anode fuel flow plate; and
a selectively conducting material is provided in at least one of
the anode components in an amount sufficient to render the electrical
resistance of the anode component containing the selectively
conducting material in the presence of air is greater than 10'3 ohm
over 1 square meter area and in the presence of hydrogen is more than
100 times lower than the electrical resistance of the anode component
containing the selectively conducting material in the presence of air.
Id. at 24.
Rejection under 35 U.S.C. § 112, written description requirement
Claim 30 recites “the electrical resistance of the anode component
containing the selectively conducting material in the presence of air is greater than
10'3 ohm over 1 square meter area.” The Examiner found the written description
discloses that the selectively conducting material may have an electrical resistance
3
Appeal 2018-006119
Application 13/518,435
in air of greater than 10'3 ohm over 1 square meter. Final 2—3 (citing Spec. 9—10).
The Examiner found no support, however, for an anode component having this
electrical resistance. Id. at 3. The Examiner thus determined the claims fail to
comply with the written description requirement of 35 U.S.C. § 112 .Id. at 2. In the
Answer, the Examiner clarifies that the written description describes only the
selectively conducting material or layer, but not the anode component containing
the selectively conducting material or layer, as having an electrical resistance in air
of greater than 10'3 ohm over 1 square meter. Ans. 6.
The Appellants argue it is not the selectively conducting material, but “the
‘anode component containing the selectively conducting material’ that must be
formulated to have the selectively conducting properties.” Appeal Br. 8. The
Appellants contend “[t]he ‘component’ may be a solid coating, or it may be
embodied in the anode or the anode gas diffusion layer (GDL).” Id. (emphasis
omitted).
As further discussed below, the Appellants misapprehend the Examiner’s
position, and their arguments are not persuasive of reversible error in the
Examiner’s rejection of claims 30-38, 43—45, and 59 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
The Specification discloses that the selectively conducting component may
comprise a layer of the selectively conducting material, and that the layer can be
incorporated in numerous ways within the anode components of the fuel cell.
Spec. 3. “For instance, the layer may be part of the anode and thus the selectively
conducting component is the anode itself.'’'’ Id. (emphasis added). The Specification
discloses that “the selectively conducting component may be the anode flow field
plate itself with the layer of the selectively conducting material incorporated on the
4
Appeal 2018-006119
Application 13/518,435
side of the anode flow field plate adjacent the anode gas diffusion layer. Id. at 4.
The Specification also discloses that it is “possible to employ a discrete selectively
conducting layer within the series connected anode components. In such a case,
the selectively conducting component is the discrete selectively conducting layer.'1'’
Id. (emphasis added). From this disclosure, one of ordinary skill in the art would
understand that the selectively conducting component may be a component made
up in part, or in its entirety, of a layer of the selectively conducting material. Thus,
we disagree with the Appellants that the selectively conducting component may be
a coating. Rather, in the case of a GDL coated with a selectively conducting
material, for example, one of ordinary skill in the art would understand from the
Specification that the selectively conducting component is the GDL plus the
coating. See, e.g., Spec. 12 (describing preparation of selectively conducting GDL
components by coating selectively conducting layers onto test GDL samples).
Turning to the claims, we note that claim 45, which depends from claim 30,
recites that the selectively conducting material is provided on a side of the anode
GDL, on a side of the anode flow field plate, or as a separate discrete layer.
Therefore, the broadest reasonable construction of the claim 30 recitation “a
selectively conducting material is provided in at least one of the anode
components” encompasses embodiments wherein the selectively conducting
component is made up of a layer of the selectively conducting material either in
part (i.e., a layer on the side of the GDL or anode flow field plate) or in its entirety
(i.e., a separate discrete layer). From the Specification disclosure cited in the
paragraph below, however, we find the written description supports the claim 30
recitation requiring that “the electrical resistance of the anode component
containing the selectively conducting material in the presence of air is greater than
10'3 ohm over 1 square meter area” (emphasis added), only in the case where the
5
Appeal 2018-006119
Application 13/518,435
selectively conducting layer makes up the entirety of the selectively conducting
component.
The Specification discloses that “[t]he properties of the selectively
conducting layer, regardless of where and in what form it appears, need to be
tailored to certain specific system needs. . . . [T]he layer has to be engineered . . .
such that it has acceptable conductance in the presence of hydrogen and yet is
sufficiently resistive in the presence of oxygen (air).” Spec. 9 (emphasis added).
“The layer must have sufficient resistance to prevent local high voltages and
reduce corrosion currents in practice during the startup and shutdown transitions.”
Id. According to the Specification, “[f]or certain commercial applications,
modelling suggests for instance that good resistance targets may involve a three
order of magnitude change in resistance, such as over 10'3 ohms/m2 in air and less
than 10'6 ohms/m2 in hydrogen.” Id. The Specification describes preparation of
selectively conducting components by coating solid-liquid dispersions of metal
oxide compositions onto GDL samples. Id. at 12. To obtain “information on the
actual resistance characteristics expected of the selectively conducting layer on
these GDLs,” resistance measurements were made on several related samples in a
closed, environmentally controlled chamber. Id. at 14 (emphasis added).
In sum, based on our review of the claim language in light of the
Specification, we determine the written description fails to support the entire genus
of anode components containing a selectively conducting material that is
encompassed by claim 30. We sustain the rejection of claims 30—38, 43—45, and 59
under 35U.S.C. § 112(a)or35U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement.
6
Appeal 2018-006119
Application 13/518,435
Rejections under 35 U.S.C. § 102(b)
The Examiner’s rejections under 35 U.S.C. § 102(b) are based on a finding
that each of the cited references (Lee, Ye, or Hill), uses a metal oxide (i.e., a
selectively conducting material as claimed) as a coating layer, and, therefore, the
anode components containing the metal oxide in each of the references inherently
possesses the claimed electrical resistance characteristics. See Final 3^4; Ans. 10—
12.
To establish inherency, the extrinsic evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency,
however, may not be established by probabilities or possibilities. Id. The mere fact
that a certain thing may result from a given set of circumstances is not sufficient.
Id.
The Appellants argue that the “[m]ere presence of metal oxide does not
impart selective conductivity.” Appeal Br. 13. The Appellants direct us to the
disclosure at pages 9—10 of the Specification (Appeal Br. 9), which supports this
argument:
Because the change in resistance with surrounding atmosphere is
associated with changes at the surface of the metal oxide particles as
opposed to the bulk, the choice of metal oxide material, its particle
size and shape, the thickness and porosity of the fabricated layer,
along with other variables are all important considerations.
(Spec. 9). “Layer thicknesses may for instance be expected in the range from about
1 pm to 300 pm. And particle sizes may be in the range of 10—25 nm with surface
areas of 40 m2/g to 200 m2/g.” Id. The Appellants argue the applied prior art does
not distinguish between use of the coating materials used at the anode or cathode.
Appeal Br. 16. The Appellants contend, therefore, that the prior art coating
materials cannot have the same electrical resistance characteristics as claimed
7
Appeal 2018-006119
Application 13/518,435
because the resistance would be unacceptably high in the presence of air and the
prior art fuel cells would not work properly when the coating was used on the
cathode side where the selectively conducting component would always be in air.
Id.
The Appellants have argued persuasively that the Examiner has failed to
provide sufficient evidence to support a finding that the claimed electrical
resistance characteristics are necessarily present in the prior art coatings.
Accordingly, we do not sustain the rejections of claims 30-38, 43—45, and 59
under 35 U.S.C. § 102(b) as anticipated by (a) Lee, (b) Ye, and (c) Hill.
ORDER
We affirm the rejection of claims 30-38, 43—45, and 59 under 35 U.S.C.
§ 112(a)or35U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
the written description requirement.
We reverse the rejections of claims 30-38, 43—45, and 59 under 35 U.S.C.
§ 102(b).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
8