Ex Parte O et al

Board of Patent Appeals and Interferences

Sep 28, 2009

10697618 (B.P.A.I. Sep. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES O’NEIL, PETER MARDILOVICH,
GREGORY HERMAN, and DAVID CHAMPION
____________

Appeal 2008-004533
Application 10/697,618
Technology Center 1700
____________

Decided: September 28, 2009
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/697,618

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Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-11, 15-26, and 30-37. We have jurisdiction under 35 U.S.C. § 6.1
We REVERSE and ENTER A NEW GROUND OF REJECTION.
Appellants’ invention relates to a method of forming a fuel cell
electrode. (Spec. 3). Claim 1 is illustrative:
1. A method of forming a thin-film fuel cell electrode,
comprising:
providing a substrate and at least one deposition device;
developing a deposition characteristic profile having at least one
porous layer based on pre-determined desired electrode
properties; and
forming a film in accordance with said deposition characteristic
profile by depositing material from said deposition device while
varying a relative position of said substrate in relation to said
deposition device with respect to at least a first axis.

The following rejections are presented for our review:
1) Claims 1, 2, 5, 6, 9, 15, 16, 20, 21, 24, 31, 32, and 34-36 were
rejected under 35 U.S.C. § 103(a) based on the combined teachings of
Barnett, U.S. Patent No. 5,395,704, issued March 7, 1995, and Montcalm,
U.S. Patent No. 6,668,207, issued December 23, 2003.
(2) Claims 3 and 17 were rejected under 35 U.S.C. § 103(a) based on the
combined teachings of Barnett, Montcalm, and Tsai2.

1 Pending claims 12-14, 27-29, and 67-86 have been indicated as
containing allowable subject matter. (Final Office Action, p. 8;
App. Br. 2).
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(3) Claims 4 and 19 were rejected under 35 U.S.C. § 103(a) over the
combined teachings of Barnett, Montcalm, and Ueda Japanese Patent
Application JP 63-195263, published August 12, 1988 (translation of
record).
(4) Claims 7, 8, 10, 11, 18, 22, 25, 26, 30, and 33 were rejected under 35
U.S.C. § 103(a) over the-combined teachings of Barnett, Montcalm, and
Kobayashi, Japanese Patent Application JP 05-021347 A1, published
January 29, 1993 (translation of record).
(5) Claim 23 was rejected under 35 U.S.C. § 103(a) over the combined
teachings of Barnett, Montcalm, Kobayashi, and Wang, U.S. Patent No.
6,364,956 issued April 2, 2002.
(6) Claim 37 was rejected under 35 U.S.C. § 103(a) over the combined
teachings of Barnett, Montcalm, and Surampudi, U.S. Patent No.
5,773,162 issued June 30, 1998.
II. ISSUE
The main dispute between the Examiner and Appellants centers on
the question of whether there is a reason to combine the teachings of
Barnett and Montcalm in order to teach or suggest “developing a
deposition characteristic profile having at least one porous layer based on
pre-determined desired electrode properties” as recited in the claims. In
order to answer this question, it is necessary to understand the scope of
what is claimed. Because the claims do not particularly point out and

2 Tsai et al. “Bias Sputter Deposition of Dense Yttria-Stabilized Zirconia
Films on Porous Substrates”, J. Electrochem. Soc., Vol. 142, No. 9,
September 1995, pp.3084-3087.
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distinctly claim the subject matter which Appellants regard as their
invention, the scope of the claims cannot be ascertained without
considerable speculation and we cannot decide the question regarding the
reason to combine. Therefore, we procedurally reverse the obviousness
rejections and enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). See In re Steele, 305 F.2d 859, 862-
63 (CCPA 1962) (reversing § 103 rejection because the rejection was
based on considerable speculation as to the meaning of terms of the claims
and assumptions as to their scope). We emphasize that this is a technical
reversal of the rejection under 35 U.S.C. § 103(a), and not a reversal based
upon the merits of the rejection.
III. NEW GROUND OF REJECTION
We reject claims 1-11, 15-26, and 30-37 under 35 U.S.C. § 112, ¶ 2
as failing to particularly point out and distinctly claim the subject matter
which the applicant regards as his invention.
A. Findings of Fact
Appellants (App. Br. 5) contend that Specification paragraphs
[0030]-[0032] describe the language in question. Specifically the
Specification states:
[0030] FIG. 3 is a flowchart of a method of forming a thin-film
electrode having gradient properties. The first step of the process is
to determine the desired deposition characteristics including the
compositional and/or morphological characteristics of the electrode
(300) that form compositional and/or morphological characteristic
profiles in the film. Accordingly, this step includes a determination
of the desired profiles of the deposition characteristics and their
profiles. The next step in the process is to provide a substrate on
which the electrode is to be formed (step 310). The substrate may
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be any suitable substrate. Examples may include porous ceramic
substrates or dense electrolyte material.
[0031] Formation of the film on the substrate involves a
determination of the necessary thickness deposition profiles of each
of the sputter guns (step 320). The present process may utilize a
system that includes at least one material deposition device such as a
sputter gun. When sputtering material, each sputter gun creates a
sputter deposition thickness profile similar to those shown in FIGS.
1, 4A, 5A, and 6A.

[0032] This step also involves a determination of how the necessary
thickness deposition profiles created by at least one material
deposition device or sputter gun may vary with respect to time. For
example, in order to form a film with the desired characteristics
determined above (step 300) it may be necessary to vary the
thickness deposition profiles with respect to each other such that one
is larger than the other during the entire formation process or during
certain time periods of the formation process. In the case where a
first thickness deposition profile is larger than the other, a substrate
advancing between the sputter guns may experience Target 1
material from the first sputter gun before experiencing Target 2
material from the second sputter gun. This may allow for the control
of compositional gradients within the film. This compositional
control is due to less material being deposited at increased relative
distances from the sputter guns. By using the first deposition
thickness profile, the material from the first sputter gun will be
applied at a relatively large distance. The material deposited at this
distance will form a less dense layer, which may include pores, such
as nano-pores, meso-pores and/or micro-pores. Nano-pores are
pores of less than about 10 nm, mesopores are typically between
about 10-100 nm in size, and micropores are greater than about 0.1
µm in size. For convenience, the formation of these pores will be
collectively referred to as pores in the specification. The formation
of these pores results in nano-chambers formed in the resulting
layer, which are pore-sized chambers. These nano-chambers limit
the size of metal nano particles through agglomeration (which
improves their respective catalytic activity via higher surface area
and/or quantum confinement affects), affect mass transport of
reactants and products. Further, reduced pore size increases surface
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area, which increases the number of catalytic reaction sites. In
addition, strain related to the curvature of the material to form the
pores may affect the catalytic properties of the materials, etc.

B. Principles of Law
As stated in All Dental Prodx,
The primary purpose of the definiteness requirement is
to ensure that the claims are written in such a way that they
give notice to the public of the extent of the legal protection
afforded by the patent, so that interested members of the
public, e.g., competitors of the patent owner, can determine
whether or not they infringe.

All Dental Prodx, LLC v. Advantage Dental Products, Inc., 309 F.3d 774,
779-80 (Fed. Cir. 2002).
Claims are in compliance with 35 U.S.C. § 112, second paragraph, if
“the claims, read in light of the specification, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if
the language is as precise as the subject matter permits.” Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986), cert.
denied, 107 S. Ct. 1606 (1987).
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003).
C. Analysis
Appellants’ claims are directed to a method of forming a thin-film
fuel cell electrode, comprising, inter alia, “developing a deposition
characteristic profile having at least one porous layer based on pre-
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determined desired electrode properties.” The Specification provides a
general discussion of the variables of a process for producing a thin-film
electrode and film characteristics such as thickness, composition, gradient,
and porosity. However, there is no description of what process variables or
film characteristics are desirable or acceptable. That is, the Specification
does not provide a description of the desired compositional and/or
morphological characteristics of the electrode. The Specification does not
provide a description of the components utilized for deposition (e.g.,
copper, aluminum, or titanium), or the resulting properties of the deposited
film (e.g., film thickness, gradient or porosity). The Specification also
does not provide a description as to how the desired compositional and/or
morphological characteristics are determined. That is, Appellants have not
defined in the Specification how to determine the compositional and/or
morphological characteristics related to a predicated outcome. Moreover,
there is no discussion as to how to adjust the apparatus to achieve desired
or acceptable results.
The claimed invention is not limited to the application of a specific
type of thin-film electrode. The claimed invention is sufficiently broad to
encompass the application of any type of material layer suitable for
deposition to form an electrode. Appellants have not directed us to
portions of the Specification that adequately apprise one skilled in the art
of the conditions required for selecting the desired electrode properties.
That is, Appellants have not identified other characteristics that must be
met in order to determine the desired electrode properties. Moreover,
Appellants have not identified limits on the process variables that would be
required to produce desired electrode properties.
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A person of ordinary skill in the art designing a thin-film electrode
would not appreciate when the claimed invention has been infringed. See
Advantage Dental Prodx, 309 F.3d at 779-80. This is because the
Specification provides no description of specific desired electrode
properties or how to produce such electrodes.
D. Conclusion
Because we cannot determine the metes and bounds of the claimed
subject matter, we enter a new ground of rejection under 35 U.S.C. § 112,
second paragraph. Because deciding the issues relevant to the obviousness
rejections would require improper speculation with regard to the meaning
of the claims, we do not sustain the rejections under 35 U.S.C. § 103(a).
VII. DECISION
The decision of the Examiner is reversed and a new ground of
rejection entered with regard to all the claims on appeal.
VIII. TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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)(v).

REVERSED
NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b))

PL Initial:
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