Ex Parte James et alDownload PDFPatent Trial and Appeal BoardJun 30, 201611643178 (P.T.A.B. Jun. 30, 2016) Copy Citation 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. 11/643,178 12/21/2006 Ronald L. James GP-306666-FCAR-CHE 3969 65798 7590 07/01/2016 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD AVENUE SUITE 300 BLOOMFIELD HILLS, MI 48304 EXAMINER AKHTAR, KIRAN QURAISHI ART UNIT PAPER NUMBER 1726 MAIL DATE DELIVERY MODE 07/01/2016 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 RONALD L. JAMES, IVAN D. CHAPMAN, STEVEN J. SPENCER, and SITIMA R. FOWLER ____________ Appeal 2014-008864 Application 11/643,178 Technology Center 1700 ____________ Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s December 18, 2013 decision finally rejecting claims 1, 3–7, and 9–19. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as GM Global Technology Operations, LLC, a Delaware Limited Liability Company. (Br. 3). Appeal 2014-008864 Application 11/643,178 2 CLAIMED SUBJECT MATTER Appellants’ invention is directed to a fuel cell stack, which includes a non-functional fuel cell for improved thermal and water management (Spec. ¶¶ 1, 5–6). Claim 1 is representative and is reproduced below from the Claims Appendix of the Appeal Brief (key claim limitations shown in italics): 1. A fuel cell stack, comprising: a plurality of stacked fuel cells including a plurality of membrane-electrode-assemblies where each fuel cell in the stack includes a membrane-electrode assembly; a plurality of gas diffusion media, where each fuel cell includes an anode side gas diffusion media at an anode side of the fuel cell and a cathode side diffusion media at a cathode side of the fuel cell; a plurality of bipolar plates, where a separate bipolar plate is positioned between the fuel cells in the stack adjacent to the anode side gas diffusion media and the cathode side diffusion media; an end fuel cell at an end of the fuel cell stack, said end fuel cell including one of the plurality of membrane- electrode-assemblies, a first gas diffusion media, one of the plurality of bipolar plates adjacent to the first gas diffusion media, a second gas diffusion media, and a unipolar plate adjacent to the second gas diffusion media; and a non-functional fuel cell, said non-functional fuel cell including a shim disposed between first and second gas diffusion media, a bipolar plate adjacent to the first gas diffusion media, and a bipolar plate or a unipolar plate adjacent to the second gas diffusion media, wherein the shim comprises a corrosion-susceptible metal substrate and an electrically conductive, corrosion-resistant protective coating on a working face to protect said substrate from a corrosive environment of said fuel cell stack. Appeal 2014-008864 Application 11/643,178 3 REJECTIONS I. Claims 1, 5–7, and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kato2 in view of Nishiyama.3 II. Claims 1, 3, 4, 7, 9, 10, 17, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kato in view of Nishiyama, and further in view of Fronk.4 III. Claims 12–16, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson in view of, Nishiyama, Fronk, and further in view of Budinski.5 With the exception of separately argued claims 17–19, Appellants’ arguments focus mainly on limitations recited in each of independent claims 1, 7, and 12 (see generally, Appeal Br. 6–13). Accordingly, our discussion will focus on the rejections of claim 1. Claims 17–19 will be addressed separately. Claims 3–6 will stand or fall with claim 1; claims 9–11 will stand or fall with claim 7; and claims 13–16 will stand or fall with claim 12. 37 C.F.R. § 41.37(c)(1)(iv). DISCUSSION Regarding Rejection I, the Examiner finds that Kato teaches each of the limitations of claim 1, with the exception that Kato’s fuel cell stack “does not disclose a non-functional cell including a shim disposed between first and second gas diffusion media, a bipolar plate adjacent to the first gas diffusion media, and a bipolar plate or a unipolar plate adjacent to the 2 Kato et al., US 2004/0265667 A1, published Dec. 30, 2004. 3 Nishiyama et al., US 2006/0110649 A1, published May 25, 2006. 4 Fronk et al., US Patent No. 6,372,376 B1, issued Apr. 16, 2002. 5 Budinski, US 2005/0037212 A1, published Feb. 17, 2005. Appeal 2014-008864 Application 11/643,178 4 second gas diffusion media” (Final Act. 4, citing Kato Figs. 1–2; ¶ 37; Abstract). The Examiner finds that Nishiyama discloses the claimed elements missing from Kato, including “[d]ummy cells 16a/16b/16c/16d (non-functional fuel cells) including a metal plate 86 (shim) interposed between the anode carbon paper 88 and the cathode carbon paper 90 (first and second gas diffusion media), []separators (bipolar plates) adjacent to the anode carbon paper and the cathode carbon paper (first and second gas diffusion media)” (Final Act. 5, citing Nishiyama, Figs. 1–7; ¶¶ 16, 38, and 49). The Examiner concludes that it would have been obvious to modify Kato’s fuel cell stack to incorporate Nishiyama’s non-functional cells “in order to effectively prevent the delay in raising the temperature of the power generation cells provided at ends of the stack body, and prevent the decrease in the voltage of the power generation cells” (Final Act. 5). The Examiner finds that Nishiyama’s disclosure provides for use of electrically conductive metal shim 86 (Ans. 3, citing Nishiyama ¶ 64). The Examiner further finds Kato teaches that its shim 52 is formed of a metallic plate (Ans. 3, citing Kato ¶ 41). The Examiner determines that although Nishiyama and Kato are silent to a shim comprising a corrosion-susceptible metal substrate and a corrosion-resistant coating, “it is well known in the art to use metals that are corrosion-resistant to the fuel cell atmosphere. If . . . a material that is not corrosion-resistant is chosen, coating the material in a corrosion-resistant material is known” (Final Act. 5). Therefore, according to the Examiner, it would have been obvious to the ordinary skilled artisan to modify Kato’s and Nishiyama’s fuel cell stacks to incorporate the Appeal 2014-008864 Application 11/643,178 5 Nishiyama’s non-functional cells with a shim comprising corrosion susceptible metal substrate and a corrosion-resistant coating (id.). Appellants argue that because Nishiyama specifically describes anti- corrosive surfaces on certain fuel cell elements, but not on the shim, this indicates that it is not common sense nor would it have been obvious to have included an anti-corrosive on the shim surface (Appeal Br. 8). Appellants do not offer a persuasive rebuttal to the Examiner’s reasoned explanation that it is well known in the art to use metals that are corrosion-resistant to the fuel cell atmosphere. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants’ argument, which is focused solely on Nishiyama’s disclosure, is misplaced because it ignores the Examiner’s rationale for the proposed combination of Kato’s fuel cell stack and Nishiyama’s non- functional cell. In determining whether it would have been obvious to the skilled artisan to modify Kato’s fuel cell stack with a non-functional cell, as suggested by Nishiyama, complete with an anti-corrosive coated shim (Ans. 3), the Examiner is not limited to only considering the specific teachings of the references. The Examiner can also consider the inferences the skilled artisan would reasonably be expected to draw from the prior art. In re Preda, 401 F.2d 825, 826 (CCPA 1968). Appellants’ arguments have not identified reversible error in the Examiner’s determination that Nishiyama provides sufficient suggestion for the skilled artisan to provide anti-corrosive Appeal 2014-008864 Application 11/643,178 6 coating to Kato’s and Nishiyama’s metallic shims—the record evidence provides that Nishiyama’s other fuel cell elements have anti-corrosive surfaces by surface treatment (Ans. 3, citing Nishiyama ¶ 36; Kato 41). Accordingly, we sustain the Examiner’s § 103(a) rejection of claims 1, 5–7, and 11. With regard to Rejection II, the Examiner finds that Fronk teaches “a PEM fuel cell with a contact element comprising a corrosion-susceptible metal substrate having an electrically conductive, corrosion resistant, protective polymer coating on a working face to protect the substrate from the corrosive environment of the fuel cell” (Final Act. 8, citing Fronk 1:50– 2:15; 2:19–35). Therefore, according to the Examiner, it would have been obvious to the ordinary skilled artisan to modify Kato’s fuel cell stack to incorporate the Nishiyama’s non-functional cells with Kato’s and Nishiyama’s metallic shims comprising corrosion susceptible metal substrate and Fronk’s corrosion-resistant coating (id.). Appellants argue that Fronk does not cure the deficiencies of Nishiyama and Kato, because none of these references discloses a shim with an electrically conductive, corrosion-resistant protective coating (Appeal Br. 9). According to Appellants, Fronk is deficient because it only teaches that bipolar plates and end plates may have such coatings (id.). Appellants’ arguments are not persuasive for the reasons set forth above in Rejection I. We discern no reversible error in the Examiner’s determination that Fronk provides sufficient suggestion for the skilled artisan to provide an anti-corrosive coating to Kato’s and Nishiyama’s metallic shims. Appeal 2014-008864 Application 11/643,178 7 Appellants separately argue the Examiner’s rejections to the product- by-process claims 17 and 18 (Appeal Br. 10). Appellants assert that replacing the membrane electrode assembly of a functional fuel cell with the claimed shim further limits independent claims 1 and 7 (id.) Appellants further argue that claims 17 and 18 should be provided patentable weight because the replacing feature can only be defined by the claimed process steps (id.). Appellants’ arguments are not persuasive because it is settled that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); see also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (“[O]nce a product is fully disclosed in the art, future claims to that same product are precluded, even if that product is claimed as made by a new process.”). In this instance, claims 17 and 18 both result in the obvious combination of a fuel cell stack comprising a non-functional cell with a shim comprising a corrosion susceptible metal substrate and a corrosion-resistant coating. Accordingly, we affirm the Examiner’s § 103(a) rejection of claims 1, 3, 4, 7, 9, 10, 17, and 18. Regarding Rejection III, the Examiner finds that neither Kato, Nishiyama, nor Fronk discloses a cathodic cleaning process (Final Act. 14). The Examiner finds that Budinski discloses the claimed elements missing from these references, namely a fuel cell with a metallic substrate that is prepared for a corrosion resistant coating by removing the oxide layer removed through cathodic cleaning (id., citing Budinski, Abstract; ¶¶ 20, 33, Appeal 2014-008864 Application 11/643,178 8 58, 59, 53, 55, and 60). Therefore, according to the Examiner, it would have been obvious to the ordinary skilled artisan to modify the shim of Kato with the treatment method of Budinski to protect the substrate from the corrosive environment of the fuel cell (id., citing Budinski ¶ 20). Appellants argue that Budinski does not cure the deficiencies of Nishiyama, Kato, and Fronk, because none of these references discloses a shim with an electrically conductive, corrosion-resistant protective coating (Appeal Br. 11). Appellants’ arguments are not persuasive for the reasons set forth above in Rejections I and II. We discern no reversible error in the Examiner’s determination it would have been obvious to the ordinary skilled artisan to modify Kato’s shim with Budinski’s treatment method to protect the substrate from the corrosive environment of the fuel cell. Appellants separately argue the Examiner’s rejections to method claim 19 (Appeal Br. 10). According to Appellants, “[n]othing in Nishiyama discloses replacing a membrane-electrolyte-assembly from one or more stacked fuel cells with the shim to create the non-functional fuel cell” (id. at 11–12 (emphasis in original)). Appellants’ argument is not persuasive because it ignores the Examiner’s rationale for the proposed combination of Kato’s fuel cell stack, Nishiyama’s non-functional cell, with either reference’s metallic shim coated with Fronk’s anti-corrosive coating provided by Budinski’s treatment method to protect the substrate from the corrosive environment of the fuel cell. Accordingly, we affirm the Examiner’s § 103(a) rejection of claims 12–16 and 19. Appeal 2014-008864 Application 11/643,178 9 CONCLUSION We AFFIRM the rejection of claims 1, 5–7, and 11 under 35 U.S.C. § 103(a) as obvious over Kato in view of Nishiyama. We AFFIRM the rejection of claims 1, 3, 4, 7, 9, 10, 17, and 18 under 35 U.S.C. § 103(a) as obvious over Kato in view of Nishiyama, and further in view of Fronk. We AFFIRM the rejection of claims 12–16, and 19 under 35 U.S.C. § 103(a) as obvious over Kato in view of Nishiyama, Fronk, and further in view of Budinski. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation