Ex Parte Newman et al

Board of Patent Appeals and Interferences

Jul 18, 2011

10842788 (B.P.A.I. Jul. 18, 2011)

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.
10/842,788 05/11/2004 Keith E. Newman 8540G-000208 3923
27572 7590 07/18/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
07/18/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEITH E. NEWMAN, MICHAEL K. BUDINSKI,
and BRIAN K. BRADY
____________

Appeal 2009-014674
Application 10/842,788
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, STEFAN STAICOVICI,
and KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Keith E. Newman et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting: claims 1, 6, 8, and 9 under 35
U.S.C. § 103(a) as being unpatentable over Appleby (U.S. Pat. No.
6,828,054 B2 iss. Dec. 7, 2004); claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Appleby and ASM Handbooks Online
(http://products.asminternational.org/hbk/do/highlight/content/V18/D08/A05
Appeal 2009-014674
Application 10/842,788

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/S0010086.hmtl, last access Jan. 14, 2008); claim 7 under 35 U.S.C. § 103(a)
as being unpatentable over Appleby and Baker (U.S. Pat. No. 3,522,095, iss.
Jul. 28, 1970); claims 4-5, 10, 12-17, and 19-26 under 35 U.S.C. 103(a) as
being unpatentable over Appleby and Schlag (U.S. Pat. Pub. No.
2004/0072053 A1, pub. Apr. 15, 2004); and claims 18 and 27 under 35
U.S.C. § 103(a) as being unpatentable over Appleby, Schlag, and Baker.
Claims 2 and 11 stand cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
The Invention
The claims on appeal relate to processes to weld together coated
metallic plates in order to form a bipolar plate of a fuel cell. Spec. 1, para.
[0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of making a fuel cell stack
having at least two metallic members that are
attached together, each of the metallic members
having opposite major surfaces separated by a
peripheral edge and at least one of the metallic
members having an electrically conductive coating
thereon, the method comprising:
(a) positioning a first one of the metallic
members adjacent a second one of the metallic
members with one of said major surfaces of each
of said metallic members facing one another, said
first metallic member having a first electrically
conductive coating thereon;
(b) melting adjacent intermediate portions of
said major surfaces of each of said adjacent
metallic members and contemporaneously
removing a portion of said first electrically
conductive coating proximate to said melting
Appeal 2009-014674
Application 10/842,788

3
portions of said adjacent metallic members,
thereby resulting in at least one area on at least one
of the major surfaces of said first metallic member
where previously present first electrically-
conductive coating has been removed, said
intermediate portions being disposed between the
associated peripheral edge; and
(c) solidifying said melted portions of said
adjacent metallic members thereby forming a
fusion bond through said intermediate portions of
said adjacent metallic members.

OPINION
We have carefully reviewed the Examiner’s rejections in light of the
Appellants’ arguments and the response from the Examiner. As a result of
this review, we conclude that the claimed processes would not have been
obvious to a person having ordinary skill in the art given the disclosures,
teachings, and suggestions from the prior art used to ground the obviousness
rejections. Our reasons follow.
We conclude that all of the process claims require removing a portion
of an electrically conductive coating proximate the portions of the metallic
members at the time of applying energy sufficient to melt the portions of the
metallic members in order to form a fusion bond through the metallic
members.
We find Appleby discloses, teaches, and suggests application of the
electrically conductive coating subsequent to construction of the assembly of
the metallic members that constitute the monolithic assembly. We find that
Appleby clearly discloses, teaches, and suggests that applying the
electrically conductive coating subsequent to construction of the assembly is
advantageous to Appleby’s invention. Col. 15, ll. 25-29. We acknowledge
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Application 10/842,788

4
the Examiner’s argument that a disclosure, teachings, and suggestions of a
prior art invention should not be limited to a specific embodiment, (Ans. 12).
However, the Examiner has not nor can we find any other explicitly
disclosed embodiments where the coating is applied preceding the
construction of the assembly. As such, we find no disclosure, teaching, or
suggestion in Appleby to support the Examiner’s position that an electrically
conductive coating is present prior to assembly. Accordingly, we conclude
that Appleby cannot render obvious the claimed subject matter of removing
a portion of an electrically conductive coating proximate the portions of the
metallic members at the time of applying energy sufficient to melt the
portions of the metallic members in order to form a fusion bond through the
metallic members as called for in the claims, since Appleby does not
disclose, teach, or suggest applying the coating prior to assembly.
The Examiner has not used Schlag, ASM Handbooks Online, or Baker
to remedy this deficiency within Appleby.

DECISION
For the reasons above, we are constrained to reverse the Examiner’s
decision to reject all claims on appeal as unpatentable under 35 U.S.C.
§ 103(a).

REVERSED

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