Ex Parte Han et al

Patent Trials and Appeals Board

May 30, 2019

12703423 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/703,423 02/10/2010 Kook II Han
100807 7590 06/03/2019
Mintz Levin/Special Group
One Financial Center
Boston, MA 02111
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.
48268-26100 lUS 4084
EXAMINER
KURTZ, BENJAMIN M
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOOK IL HAN and BO KI HONG
Appeal2018-007689
Application 12/703,423
Technology Center 1700
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-007689
Application 12/703,423
Appellants 1 appeal under 35 U.S.C. § 134 the final rejection of claims
1, 4, 7, 8, 18, and 22-24. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants' invention is directed to a gas diffusion layer (GDL) in a
fuel cell. (Spec. 1:8-10; claim 1).
Claim 1 is illustrative of the issues on appeal:
1. A fuel cell, comprising:
a polymer electrolyte membrane having two side surfaces, wherein
each side surface includes:
a catalyst layer coated on the side surface of the polymer electrolyte
membrane,
a compressible gas diffusion layer (GDL) stacked on the catalyst
layer; and
a bipolar plate on the compressible GDL and comprises a major flow
field and a minor flow field,
wherein the compressible GDL comprises a dual layer structure
including a microporous layer having a pore size of less than 1 µm when
measured by mercury intrusion, the microporous layer composed of the
mixture of carbon powder and a hydrophobic agent; and a macroporous
substrate having a pore size of 1 to 300 µm, the macroporous substrate
composed of carbon fiber and a hydrophobic agent, and the compressible
GDL has a width direction perpendicular to a major flow field direction of
1 The Appeal Brief on page 1 indicates that "Hyundai Motor Company" is
the assignee of record.
2
Appeal2018-007689
Application 12/703,423
the bipolar plate and a length direction which is in parallel with the major
flow field direction of the bipolar plate, and
wherein the compressible GDL is prepared by cutting a rolled GDL
material at a certain angle in a range of 60 ° :S8<90° with respect to a
machine direction of the rolled GDL material as determined by the major
flow field direction of the bipolar plate, such that a high stiffness direction of
the compressible GDL as the machine direction of the rolled GDL material
is not parallel with the length direction of the compressible GDL, the
machine direction of the rolled GDL material is the high stiffness direction
of the compressible GDL,
wherein the high stiffness direction of the compressible GDL as the
machine direction of the rolled GDL material is arranged in one direction,
the high stiffness direction of the compressible GDL as the machine
direction of the rolled GDL material is not parallel with the length direction
of the compressible GDL at an angle (8) in a range of 60 °:S8<90 °, formed
by the high stiffness direction of the compressible GDL and the length
direction of the compressible GDL and, at the same time, with the major
flow field direction of the bipolar plate when the compressible GDL is
stacked on the bipolar plate to reduce intrusion of the compressible GDL
into flow field channels of the bipolar plate.
Appellants appeal the following rejections:
1. Claims 1, 4, 7, 8, 18, and 22-24 are rejected under 35 U.S.C. § 103 as
unpatentable over Mathias (US 2005/0042500 Al, pub. Feb. 24,
2005) in view of Mussell (WO 97/13287 pub. Apr. 10, 1997).
2. Claims 1, 4, 7, 8, 18, and 22-24 are provisionally rejected on the
ground of nonstatutory double patenting as being unpatentable over
3
Appeal2018-007689
Application 12/703,423
claims 1, 3-7, 10-12, and 19 of copending Application No.
13/078, 1682 and claims 1-8 of copending Application No.
14/182,436. 3
Regarding the provisional obviousness-type double patenting rejection,
we note that a Request for Continued Examination (RCE) was filed in
Application No. 13/078,168 after the Board's affirmance. Accordingly, that
application is still pending. Application No. 14/182,436 was allowed by the
Examiner on May 15, 2019 and is therefore in the process of being issued as
a patent. We reverse the § 103 rejection for reasons discussed infra.
Therefore, the obviousness-type double patenting rejection will be the only
rejection left remaining in this appeal. In light of these facts, we exercise
our discretion and decline to reach the obviousness-type double patenting
rejection. Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) ("The
only remaining rejection is a provisional non-statutory double patenting
rejection. We conclude that in this circumstance it was premature ... to
address the Examiner's provisional rejection of the claims."). Upon return
2 This application was the subject of Appeal No. 2017-003987 in which the
Board affirmed the Examiner's rejections. The Examiner's rejections
included a rejection based on primary reference Matthias US2005/0042500
Al, the same reference used in the rejections of the present appeal, in
combination with other references. We note, however, that Appellants'
arguments regarding Matthias in Appeal No. 2017-003987 were not the
same as presented in this appeal. A rehearing request was not filed in
Appeal No. 2017-003987.
3 This application was a divisional of Application No. 13/078, 168 and was
the subject of Appeal No. 2018-001196 in which the Board reversed the
Examiner's 35 U.S.C. § 103 rejections but affirmed the 35 U.S.C. § 112
rejections.
4
Appeal2018-007689
Application 12/703,423
of jurisdiction the Examiner may determine whether the obviousness-type
double patenting rejection should be maintained.
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding Mathias and
Mussell are located on pages 6 to 8 of the Final Action. The Examiner finds
that Mathias teaches a fuel cell with a gas diffusion layer (GDL) that may be
oriented so that the GDL is not parallel with the length direction of the
compressible GDL and at the same time is not parallel with the major flow
field of the bipolar plate when the compressible GDL is stacked on the
bipolar plate (Final Act. 6). The Examiner finds that Matthias teaches that
the GDL may be oriented at about 45° with the channels in the major flow
field of the bipolar plate (Final Act. 6). The Examiner finds that the claim
limitation of cutting the GDL at an angle between 60° and less than 90° is a
product-by-process limitation (Final Act. 6). The Examiner finds that as a
product-by-process limitation the process used to make the product is not
given patentable weight; only the resulting product limitations are given
weight (Final Act. 6-7). The Examiner finds that Matthias does not teach
the pore sizes in the GDL and the Examiner finds that Mussell teaches the
pore sizes that overlap those recited in claim 1 (Final Act. 7). The Examiner
concludes that it would have been obvious to use Mussell's pore sizes in
Matthias' s GDL in order to produce a fuel cell that operates with a high
current density (Final Act. 8). Appellants only argue that Mussell does not
cure alleged deficiencies with Matthias but do not dispute the Examiner's
findings regarding Mussell or the combination of Mussell and Mathias (App.
Br. 11).
5
Appeal2018-007689
Application 12/703,423
Appellants argue the claimed cutting of the GDL as specified in the
claims yields a structurally different fuel cell than the fuel cell disclosed by
Mathias (App. Br. 10). Appellants contend that Mathias teaches that the
cross machine direction of the GDL material has a high stiffness and the
machine direction in Mathias is more flexible (App. Br. 10). Appellants
argue that the claim requires that the machine direction of the rolled (i.e.,
precut) GDL and cut, compressible GDL has a higher stiffness relative to the
cross machine direction that is more flexible (App. Br. 10). Appellants
argue that the high stiffness direction of the compressible GDL is not
parallel with the length direction of the compressible GDL as a final product
(i.e., the cut GDL in the fuel cell) (App. Br. 10).
The preponderance of the evidence favors Appellants' arguments of
non-obviousness. Although the Examiner finds that Mathias' end product
(i.e., a fuel cell) would have a GDL oriented as required by the claims, the
Examiner does not persuasively explain why the end product would have the
orientation required by the claim (Ans. 9). The Examiner states that the
"critical portion of the invention is that the high stiffness direction of the
GDL material is oriented at an angle, not parallel, to the major flow field
direction of the bipolar plate to reduce intrusion of the GDL into the flow
field channels" (Ans. 9). Claim 1 requires that the machine direction of the
rolled and cut GDL has high stiffness and the compressible GDL cut from
rolled GDL at a 60° to 90° angle relative to the machine direction. In other
words, when the GDL is cut as, for example, shown in Appellants' Figure
4a, high stiffness will extend along the length of the GDL at the angle
selected with a more flexible property in the cross machine direction of the
cut GDL.
6
Appeal2018-007689
Application 12/703,423
In contrast, Mathias discloses that the GDL in the cross machine
direction (i.e., transverse) is stiffer than the machine direction (i.e., lateral) (i1
8). Mathias teaches that the x-direction is the transverse, cross machine
direction (i133). Therefore, Matthias' teaching in paragraph 38 that the x-
direction (i.e., the cross machine direction) of the diffusion media can be
skewed from perpendicular up to approximately± 45° means that the stiffer
direction will extend at an angle in the cross machine direction, which
appears to be different than Appellants' GDL where a piece is cut so that the
stiffer machine direction corresponds to the length direction of the
compressible GDL and the stiffer machine direction extends along the length
at an angle between 60° and 90° to the major flow field on the bipolar plate
( claim 1 ). The Examiner finds erroneously that:
The machine and cross machine directions are used to defined [sic]
directions during the processing and making of the GDL material but
have no bearing whatsoever in the final product of the claimed
invention, namely, a fuel cell. ... The final product does not depend
on which direction the machine or cross machine direction were
defined.
(Ans. 9).
Contrary to the Examiner's finding the process in which the rolled GDL
material is oriented and cut determines how the compressible GDL's (i.e.,
the GDL used in the fuel cell) stiffer direction is oriented.
We are persuaded by Appellants' argument that the manner in which
the GDL is made as stated in the claims yields a product that is different
from that disclosed by Mathias. The Examiner has not dispensed with the
7
Appeal2018-007689
Application 12/703,423
initial burden of showing that the claimed invention would have been
obvious over the combined teachings of Mathias and Mussell.
On this record, we reverse the Examiner's§ 103 rejection.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
8