Ex Parte Rodak et al

Patent Trial and Appeal Board

Jun 27, 2013

11459950 (P.T.A.B. Jun. 27, 2013)

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.
11/459,950 07/26/2006 Daniel E. Rodak GP-307470-GAPW-CHE 1207
65798 7590 06/28/2013
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
ARCIERO, ADAM A
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
06/28/2013 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 DANIEL E. RODAK, YANG T. CHENG,
MEI CAI and MARTIN S. RUTHKOSKY
______________

Appeal 2012-002012
Application 11/459,950
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN and
ROMULO H. DELMENDO, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 1-12, requesting
review of the rejection of claims 1-12 under 35 U.S.C. § 112, first
paragraph, enablement requirement, and of claims 1-3 and 8-12 under
35 U.S.C. § 103(a): claims 1, 2, 8 and 10-11 over Ohara (US 2003/0003345
A1), Rapaport (US 2003/0203261 A1) and Xu (US 2005/0277015 A1);
claims 3 and 9 over Ohara, Rapaport, Xu, Busenbender (US 2002/0081478
A1) and Mantese (US 2004/0058205 A1); and claim 12 over Ohara,
Appeal 2012-002012
Application 11/459,950
2
Rapaport, Xu and Zuber (US 6,309,772 B1). App. Br1. 6; Ans. 4, 5, 7, 8.
We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2010).
We reverse the decision of the Primary Examiner.
OPINION
We agree with Appellants that the Examiner erred in maintaining that
Ohara, Rapaport and Xu, the basic combination in each of the obviousness
rejections, would have led one of ordinary skill in the art to a method of
forming a hydrophilic and electrically conductive layer of a bipolar plate by
depositing a solution of a hydrophilic and electrically conductive material on
a substrate, evaporating the solution to form a coating of the material, and
embedding the coated material into the substrate to form the layer when the
coated substrate is stamped to form the bipolar plate, thus arriving at a
method falling within representative claim 1. App. Br. 17 (Claim App’x);
Spec. 8-9 (¶ 0030), Figs. 3a-e. Ans. 5-7, 10-11 (citing Ohara ¶¶ 0070, 0154;
Rapaport ¶¶ 0004, 0010; Xu ¶¶0029, 0030, 0032); App. Br. 11-12, 13, 14-16
(citing Ohara ¶¶ 0070, 0154; Rapaport ¶¶ 0004, 0010; Xu ¶ 0032); Reply Br.
3-4 (citing Ohara ¶¶ 0154, 0157).
Appellants’ principal contention is the Examiner has not established
that the combination of Ohara, Rapaport and Xu would have disclosed to
one of ordinary skill in the art that the method step of stamping Ohara’s
metal oxide film coated substrate would inherently embed the metal oxide
film into the substrate, thus forming the plate with an embedded layer as
specified in claim 1. App. Br. 9, 11-12, 13 (citing Ohara ¶ 0154; Rapaport ¶

1 Appeal Brief filed May 2, 2011,
Appeal 2012-002012
Application 11/459,950
3
0004; Xu ¶ 0032); Reply Br. (citing Ohara ¶¶ 0154, 0157). In this respect,
Appellants contend the Examiner has not established that Xu’s disclosure of
a smooth dense coating on a substrate would have led one of ordinary skill
in the art to evaporate a coating of hydrophilic and electrically conductive
material on a substrate and then stamp the substrate to embed the coating.
App. Br. 12 (Xu ¶ 0032).
We initially note that, contrary to Appellants’ position, Ohara’s
method steps of applying resists to parts of the substrate prior to forming the
metal oxide film is not precluded by the claim 1 language “said method
comprising,” among other things, “depositing the solution on a surface of a
substrate” (App. Br. 17 (Claim App’x (emphasis supplied)), which permits
the additional step of applying a resist to the surface of the substrate and
does not require depositing the solution on the entire surface of the substrate.
Reply Br. 3-4. See, e.g., KCJ Corp. v. Kinetic Concepts Inc., 223 F.3d 1351,
1356 (Fed. Cir. 2000); In re Baxter, 656 F.2d 679, 686 (CCPA 1981).
We are of the view that the issue of whether Ohara’s stamping of the
metal oxide film coated substrate would necessarily embed the metal oxide
into the substrate entails whether the metal oxide film coating can be
embedded in the substrate. As Appellants point out, Ohara would not have
disclosed that the metal oxide film would be embedded into the substrate,
and in fact discloses that “direct formation of the metal oxide on the metal
base plate gives the stronger adhesion.” Ohara ¶¶ 0154, 0157.
On this record, the Examiner has not established that as a matter of
fact, Ohara’s metal oxide film formed by the combination of Rapaport’s
brushing method, for applying a non-conductive metal oxide coating to a
substrate (¶ 0004), followed by Xu’s step of heating, to dry a sol-gel coating
Appeal 2012-002012
Application 11/459,950
4
to form a thin coating of a conductive ceramic on a substrate (¶¶ 0029, 0030,
0032), would inherently be embedded into the substrate during Ohara’s
stamping step (¶ 0154), thus forming a hydrophilic and electrically
conductive layer. Ans. 6-7, 10-11. See, e.g., In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The
inherent teaching of a prior art reference, a question of fact, arises both in
the context of anticipation and obviousness.” (citation omitted)); Continental
Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)
(silence in a reference about an inherent characteristic may be explained by
extrinsic evidence which “must make clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill”); In re Oelrich, 666
F.2d 578, 581 (CCPA 1981) (“Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”).
Accordingly, in the absence of a prima facie case of obviousness
based on Ohara, Rapaport and Xu, we reverse the grounds of rejection of
claims 1-3 and 8-12 under 35 U.S.C. § 103(a).
We also reverse the ground of rejection of claims 1-12 under
35 U.S.C. § 112, first paragraph, enablement requirement. We agree with
Appellants that the Examiner erred in maintaining this ground of rejection
because the Examiner has not carried the burden of supporting the
contention that “the specification does not reasonably provide enablement
for all compositions of all material which are hydrophilic and electrically
conductive mixed into any solution” by establishing that, based on the
record as a whole, the assertions as to the scope of objective enablement set
Appeal 2012-002012
Application 11/459,950
5
forth in the Specification are in doubt in this respect, and thus would not
have enabled one of ordinary skill in this art to practice the claimed
invention encompassed by representative claim 1 without undue
experimentation. Ans. 4-5, 9-10; App. Br. 7-8; Reply Br. 1-2. See, e.g., In
re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); In re Wands, 858 F.2d 731,
737 (Fed. Cir. 1988); In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971).
Accordingly, in the absence of a prima facie case of non-enablement,
we reverse the rejection of claims 1-12 under 35 U.S.C. § 112, first
paragraph, enablement requirement.
The Primary Examiner’s decision is reversed.
REVERSED

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