Ex Parte Iwanschitz et al

Patent Trial and Appeal Board

Feb 20, 2015

12151439 (P.T.A.B. Feb. 20, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BORIS IWANSCHITZ, JOSEF SFEIR,
UELI WEISSEN, and ANDREAS KAISER
____________________

Appeal 2013-001571
Application 12/151,439
1

Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK,
and JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
The claims are directed to a fuel cell battery and process for
constructing a fuel cell battery made up of a stack of planar fuel cells. Br.
4–7. Claims 1 and 9 illustrate the subject matter on appeal and are
reproduced below:

1
According to Appellants, the real party in interest is Hexis AG. Br. 3.
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1. A method for the manufacture of contacts between
electrochemically active discs and interconnectors in planar
high temperature fuel cells the interconnectors of which have
air-side and gas-side surface profiles with contact surfaces on
raised portions, with the raised portions of each surface profile
having the contact surfaces approximately spanning a plane and
with deviations in this arrangement lying within a
predetermined tolerance, in which method a layer is applied
onto the electrodes of the electrochemically active discs, with
the layer consisting of a contact mixture which contains
electrically conductive particles and a medium embedding the
particles, the surface profiles or the electrodes are brought into
contact with the applied layer at a working temperature so that
the raised portions penetrate into this layer and thus connections
are formed between the contact surfaces and the electrically
conductive particles and thus discrete homogeneously
structured connections are formed between the contact surfaces
and the electrodes, and finally the medium embedding the
particles is removed under thermal part treatments and the
discrete connections are solidified, wherein the medium
embedding the particles is a hot melting composition which is
solid at room temperature and wherein, at the said working
temperature, the hot melting composition is in a liquid or plastic
state,

wherein the medium embedding the particles is applied
to the electrode at or above the working temperature and then
brought to a solidifying temperature to solidify the hot melting
composition, or is applied as a solidified foil between the
electrodes and the raised portions, and

wherein the applied layer or foil is subsequently heated to
said working temperature to form the discrete homogeneously
structured connections.

9. A fuel cell battery having high temperature fuel
cells including electrochemically active discs and
interconnectors which have air-side and gas-side surface
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profiles with contact surfaces on raised portions, and discrete
homogeneously structured connections formed between the
contact surfaces and electrodes of the electrochemically active
discs, wherein the fuel cell battery has contacts which are
manufactured in accordance with the method in accordance
with claim 1, wherein the contacts are manufactured by
applying a layer consisting of a contact mixture onto the
electrodes, and wherein all cell voltages in the fuel cell battery
are substantially identical during operation.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Barp US 5,116,696 May 26, 1992
Barp US 5,264,300 Nov. 23, 1993
McVicker US 2004/0046154 A1 Mar. 11, 2004
Hansen US 2004/0081893 A1 Apr. 29, 2004
Brückner DE 4436456 A1 Apr. 18, 1996
Batawi EP 0 714 147 A1 May 29, 1996

Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner’s Non-final Office Action:
I. Claims 1–5, 7–9, 11–17, 19, and 20 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brückner and McVicker.
II. Claim 6 rejected under 35 U.S.C. § 103(a) as unpatentable over
Brückner, McVicker, and Hansen.
III. Claims 10 and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Brückner, McVicker, and the Barp references.
IV. Claims 9, 10, 18, and 19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Batawi and Brückner.
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OPINION
Rejections of Method Claims 1–8, 11–17 and 20
2

The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Brückner and McVicker would
have led one skilled in the art to a method of making contacts between
electrochemically active discs and interconnectors in planar high
temperature fuel cells using a contact mixture containing electrically
conductive particles and a hot melting composition as required by the
subject matter of independent claim 1?
3

After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejections of claims 1–
6, 8, 11–15 and 17 (rejections I and II) for the reasons presented by the
Examiner and reverse the prior art rejection of claims 7, 16 and 20
(Rejection I) for the reasons presented by Appellants.
Appellants’ invention is directed to a method of making contacts
between electrochemically active discs and interconnectors in planar high

2
While claim 18 is directed to a method, it is dependent from product claim
10. The Examiner appears to have treated this claim as a product claim.
Ans. 9–10. Accordingly, our opinion will address claim 18 as a product
claim.
3
For Rejection I, Appellants present arguments only for independent method
claim 1 and dependent method claims 7 and 20 and do not separately argue
dependent method claims 2–5, 8, and 11–17. See Appeal Brief, generally.
Accordingly, we limit our discussion to claims 1, 7, and 20. Dependent
claims 2–5, 8, and 11–17 stand or fall together with independent claim 1. In
addition, Appellants present no arguments with respect to separately rejected
method claim 6 (Rejection II), which relies on an additional secondary
reference to address additional claim limitations. Id. Therefore, our
discussion of Rejection I also applies to Rejection II and, thus, claim 6 also
stands or falls with independent claim 1.
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temperature fuel cells using a contact mixture containing electrically
conductive particles and a hot melting composition. Claim 1; Subst. Spec
¶ 2. Appellants use this contact mixture to provide discrete homogeneously
structured connections between the contact surfaces and the electrodes in the
fuel cell after the hot melt composition is burned off to minimize the
detrimental impact of deviations present in the interconnector. Subst. Spec
¶ 5.
The Examiner found Brückner teaches applying an electrically
conductive functional layer to an interconnector and/or an electrode in a high
temperature fuel cell where the layer is a paste comprising a conductive
metallic or ceramic powder and an organic binder and solvent. Ans. 4;
Brückner ¶¶ 9, 23, 24. The Examiner found Brückner discloses the use of
this layer mitigates loss of electrical conductivity between the electrode and
the interconnector due to surface deviations present in the interconnector, the
electrode surface, or both. Ans. 4–5; Brückner ¶ 5. The Examiner further
found Brückner burns the organic material out of the functional layer after
assembly. Ans. 5; Brückner ¶ 25. The Examiner found Brückner does not
disclose the use of a hot melting composition as the embedding medium for
the electrically conductive particles where the composition is solid at a
temperature below 40 °C. Ans. 5. The Examiner found McVicker teaches
forming electrically conductive patterns using a hot melt composition
including conductive particles, where the hot melt composition solidifies at a
temperature below 40 °C. Ans. 5; McVicker ¶¶ 6, 22. The Examiner found
McVicker further teaches firing the composition at 650–950 °C to burn out
all organic material. Ans. 5; McVicker ¶¶ 20, 28.The Examiner found this
heating step includes reheating the hot melt composition to the working
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temperature of the composition. Ans. 5. The Examiner found it would have
been obvious to one of ordinary skill in the art to substitute the organic
binder system of Brückner with the hot melt portion of McVicker’s hot melt
composition to provide an increase in production time by eliminating the
drying steps required by paste compositions and the production of volatile
organic compounds during fabrication. Ans. 5; Brückner ¶¶ 22, 23.
Appellants argue that Brückner and McVicker use different
compositions for the conductive layer (solvent-based binder system vs. hot
melt composition) and employ different methods to apply their respective
conductive layer compositions (spraying vs. screen printing). Br. 11.
Appellants additionally argue that Brückner and McVicker are directed to
different types of cells (high temperature fuel cells vs. photovoltaic cells).
Id. at 15. Thus, according to Appellants, there would be no reasonable
expectation of success that McVicker’s hot melt compositions for
photovoltaic cells would be appropriate for the manufacture of discrete
homogeneously structured connections in planar high temperature fuel cells.
Id. at 15–16.
We are unpersuaded by these arguments and agree with the
Examiner’s obviousness determination. Ans. 5. As noted by the Examiner,
Brückner discloses forming an electrically conductive layer by spraying or
screen printing the conductive layer composition. Ans. 4–5, 10; Brückner 1.
Appellants also recognize these methods were known alternative methods of
manufacturing a conductive layer in high temperature fuel cells. Subst.
Spec. ¶ 3. The Examiner reasoned that it would have been obvious for one
skilled in the art to use known techniques for making an electrically
conductive layer on a film, such as the one disclosed by McVicker (screen
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printing with a hot melt composition), as an alternative to the technique of
Brückner (spraying of a solvent based binder). Ans. 4–5, 10; Brückner 1;
McVicker ¶ 20. That is, the Examiner determined that one of ordinary skill
in the art would have been led to either the known technique of McVicker
for providing a conductive layer or the known technique of Brückner for
providing a conductive layer, with the reasonable expectation of successfully
providing an electrical connection (discrete homogeneously structured
connections) between the electrodes and the interconnector of the fuel cell of
Brückner. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)); In re Fout, 675 F.2d
297, 301 (CCPA 1982) (“Express suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.”); In re
Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants
merely substituted one element known in the art for a known equivalent, this
court affirms [the rejection for obviousness].”). On this record, Appellants
have not adequately explained why one skilled in the art would not have
substituted McVicker’s technique for Brückner’s.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–6, 8, 11–15 and 17 (Rejections I and II) for the reasons presented by the
Examiner and given above.
However, we reverse the prior art rejection of claims 7, 16
4
and 20
(Rejection I) for the reasons presented by Appellants.

4
Claim16 is dependent from claim 7.
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Dependent claim 7 requires alternate stacking of the interconnectors
and active discs and applying heat and pressure (via a clamping apparatus)
to reduce the stack height and thermally remove the hot melt composition.
The Examiner found Brückner discloses a reduction in the functional
layers and thereby the stack height during assembly upon high temperature
treatment (i.e. sintering). Ans. 6; Brückner 2–3. The Examiner reasons the
stack must necessarily be clamped (to maintain alignment) and compressed
during sintering for the layer thickness reduction to occur. Ans. 6, 16.
Appellants argue the Examiner provided no factual basis to support
the speculatory finding that the combined teachings of Bruckner and
McVicker teaches a stack of electrodes and interconnectors must necessarily
be alternately stacked and compressed as required by the subject matter of
dependent claim 7. Br. 21–22
On this record, we agree with Appellants that the Examiner has not
proffered any evidence to show why one skilled in the art would have
understood the combined teachings of the cited art to necessarily teach or
suggest a stack of alternating electrodes and interconnectors clamped and
compressed as claimed.
Dependent claim 20 requires the hot melting composition to be in a
plastic state at a working temperature when the surface profiles or the
electrodes are brought into contact with the applied layer.
The Examiner found McVicker teaches applying a hot melt
composition at a temperature above the melting point via a variety of
processes including screen printing and other conventional application
processes. Ans. McVicker ¶ 21.
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Appellants argue, and we agree, the Examiner has not shown that the
combined teachings of Brückner and McVicker would have suggested
heating the hot melting composition to a plastic state when the surface
profiles or the electrodes are brought into contact with the conductive layer.
Br. 23–24.
Accordingly, we reverse the Examiner’s prior art rejection of claims
7, 16 and 20 (Rejection I) for the reasons presented by Appellants and given
above.

Rejections of Product-By-Process Claims 9, 10, 18, 19
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejections of product
claims 9, 10, 18, and 19 (Rejections I and III) for the reasons presented by
the Examiner.
Claim 9 is directed to a fuel cell battery made in accordance to the
method of independent claim 1. Claim 9.
Appellants present no arguments with respect to the rejection of
claims 9 and 19 under 35 U.S.C. § 103(a) as unpatentable over Brückner and
McVicker (Rejection I). See Appeal Brief, generally. Appellants also do
not separately argue dependent claims 10 and 18 (Rejection III). Id.
Accordingly, we affirm the Examiner’s prior art rejection of claims 9,
10, 18, and 19 (Rejections I and III) for the reasons presented by the
Examiner and given above.
Having determined that the subject matter of claims 9, 10, 18, and 19,
would have been obvious over the teachings of Brückner and McVicker or
Brückner, McVicker, the Barp references, as indicated above, we do not
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reach the decision on the rejection of claims 9, 10, 18, and 19 under 35
U.S.C. § 103(a) as unpatentable over Batawi and Brückner (Rejection IV).
Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) ( (ITC having
decided a dispositive issue, there was no need for the Commission to decide
other issues decided by the presiding officer); In re Basell Poliolefine, 547
F.3d 1371,1379 (Fed. Cir. 2008) (“Having concluded that the Board
properly affirmed the rejection of claims 1–52 of the ′687 patent based on
obviousness-type double patenting in view of the ′987 patent, we need not
address the remaining issues raised by Basell regarding the §§102(b) and
103(a) rejections, as well as the additional double patenting rejections.
Accordingly, the Board's decision is affirmed.”)

ORDER
The Examiner’s prior art rejections of claims 1–6, 8–15 and 17–19
under 35 U.S.C. § 103(a) (Rejections I–III) are affirmed.
The Examiner’s prior art rejection of claims 7, 16 and 20 under 35
U.S.C. § 103(a) (Rejection I) is reversed.
We do not reach the Examiner’s rejection of claims 9, 10, 18, and 19
under 35 U.S.C. § 103(a) based on the primary reference to Batawi
(Rejection IV).

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

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AFFIRMED-IN-PART
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