Ex Parte Ruka et al

Board of Patent Appeals and Interferences

Oct 31, 2007

10663949 (B.P.A.I. Oct. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ROSWELL J. RUKA,
GEORGE R. FOLSER, and SRIKANTH GOPALAN
______________

Appeal 2007-4240
Application 10/663,949
Technology Center 1700
_______________

Decided: October 31, 2007
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner rejecting for at least the second time claims 1 through 18 in the
Office Action mailed August 25, 2006. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2006).
We reverse the decision of the Primary Examiner.

Appeal 2007-4240
Application 10/663,949
Claim 1 illustrates Appellants’ invention of a tubular solid fuel cell,
and is representative of the claims on appeal:
1. A tubular solid fuel cell, comprising:
an air electrode;
an electrolyte formed on at least a portion of the air electrode; and
a ceramic-metal fuel electrode having a microstructure characterized
by accumulated molten particle splats formed on at least a portion of the
electrolyte.
The Examiner relies upon the evidence in these references of record
(Answer 2-3):
Jensen 5,035,962 Jul. 30, 1991
Cable 5,589,285 Dec. 31, 1996

T.A. Ramanarayanan, S.C. Singhal, and E.D. Wachsman (Ramanarayanan),
“High Temperature Ion Conducting Ceramics,” Interface 22-24 (The
Electrochemical Society. Summer 2001).
R.M.C. Clemmer and S.F. Corbin (Clemmer1), “Processing and properties of
porous Ni-YSZ metal/ceramic composites,” Metal/Ceramic Interactions
241-243 (2002).
Appellants request review of the following grounds of rejection
advanced on appeal (Br. 3-4):
Claims 1 through 4, 9 through 12, and 15 through 17 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Ramanarayanan as evidenced by the prior art acknowledged by
Appellants at page 3 of the Specification (Answer 8);
Claims 1 through 8 and 12 through 18 under 35 U.S.C. § 103(a) as
unpatentable over Cable as evidenced by the prior art acknowledged by
Appellants at page 3 of the Specification (id. 6);

1 We do not find Clemmer listed on a PTO-892. However, this reference
was first applied in the Office Action mailed November 15, 2004 at 7, and is
contained in the electronic file as NPL Document dated November 15, 2004.
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Application 10/663,949
Claims 5 through 8 under 35 U.S.C. § 103(a) as unpatentable over
Ramanarayanan in view of Jensen (id. 7);
Claims 9 through 11 under 35 U.S.C. § 103(a) as unpatentable over
Ramanarayanan in view of Clemmer as evidenced by “INCO, Ltd.”2 (id. 8);
Claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Ramanarayanan (id. 9); and
Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Ramanarayanan in
view of Cable (id. 10).
The threshold issue in this appeal is whether, prima facie,
Ramanarayanan, Cable, Jensen, and/or the prior art acknowledged by
Appellants at page 3 of the Specification establish that Ramanarayanan
and/or Cable would have described to one skilled in the art, with respect to
anticipation, or would have suggested to one of ordinary skill in this art,
with respect to obviousness, a tubular solid fuel cell comprising at least,
among other things, a ceramic-metal fuel electrode having a microstructure
characterized by accumulated molten particle splats formed on at least a
portion of the electrolyte as specified by claim 1, the sole independent claim
on appeal, as the Examiner contends.

2 “INCO, Ltd.” is not listed on a PTO-892. “INCO, Ltd.” was first applied
along with Clemmer in the Office Action mailed November 15, 2004 at 7. A
copy of “INCOFIBER® Nickel Coated Carbon Fibers,” apparently from
www.incosp.com, is attached to the Answer as recorded in the USPTO
electronic file of this Application. This document does not appear to
disclose “NiGr” in Clemmer Table III, or correspond to “Nickel coated
graphite particles available from INCO” as relied on by the Examiner.
Answer 8-9; Clemmer 223. A copy of “INCO Special products” is present
in the NPL Document of November 15, 2004 which may correspond to
“INCO, Ltd.” as applied by the Examiner. In view of our disposition of this
appeal, we do not remand this Application to the Examiner for clarification.
See 37 C.F.R. § 41.50(a) (2007).
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Application 10/663,949
The plain language of product claim 1 specifies a tubular solid oxide
fuel cell (SOFC) comprising at least, with reference to Application Fig. 2,
any manner of tubular air electrode (cathode) 14, at least a portion of which
is surrounded by any manner of tubular electrolyte 16, that in turn is
surrounded by tubular ceramic-metal fuel electrode (anode) 18.
Specification, e.g., 7:18 to 10:17. The tubular ceramic-metal fuel electrode
is characterized in that it has any manner of microstructure characterized by
accumulated molten particle splats and is formed on at least a portion of the
electrolyte.
Appellants disclose that plasma spraying by art recognized methods,
e.g., by atmospheric plasma spraying (APS), vacuum plasma spraying
(VPS), and flame spraying, a mixture of a metal powder and a ceramic
powder will “form a generally uniform layer having a microstructure
characterized by accumulated molten particle splats.” Specification, e.g.,
13:10 to 15:19. No other description of a method of providing a ceramic-
metal layer having a microstructure characterized by accumulated molten
particle splats is provided in the Specification.
We find the term “splat” is defined in context as “vi 1: To flatten on
impact .” Webster’s Third New International Dictionary 2200 (Philip
Babcock Gove, ed., Springfield, Mass. Merriam-Webster Inc. 1993).
Accordingly, on this record, we determine that the claimed ceramic-
metal electrode has a microstructure characterized by a surface having
flattened areas of accumulated molten particle splats formed by plasma
spraying a mixture of metal powder and ceramic powder, and thus, contrary
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Application 10/663,949
to Appellants’ arguments (Reply Br. 1-3), claim 1 is couched in product-by-
process format even if a plasma spraying method is not specified per se.
See, e.g., In re Thorpe, 777 F.2d 695, 696-97 (Fed. Cir. 1985). We will not,
of course, read illustrative embodiments into the claims as limitations. See,
e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
We find Ramanarayanan would have disclosed to one of ordinary skill
in this art a tubular SOFC having an anode fuel electrode prepared “by
forming a skeleton of [yttria-stabilized zirconia (YSZ)] around nickel
particles” on the YSZ electrolyte. Ramanarayanan 23.3 The YSZ
electrolyte can be formed by, among other things, an electrochemical vapor
deposition process (EVD) and “a more cost-effective non-EVD technique,
such as plasma spraying or colloidal/electrophoretic deposition followed by
sintering.” Id. 23-24. The anode fuel electrode is a
layer of nickel/YSZ . . . deposited by first applying nickel
powder slurry over the electrolyte and then growing YSZ
around the nickel particles by the same EVD process as used
for depositing the electrolyte. Deposition of a Ni-YSZ slurry
over the electrolyte followed by sintering has also yielded
anodes that are equivalent in performance to those fabricated by
the EVD process; use of this non-EVD process results in a
substantial reduction in the cost of manufacturing SOFCs.
Id. 24.

3 We note here that, as pointed out by the Examiner, the Folser Declaration
under 37 C.F.R. § 1.131 filed February 28, 2005, does not apply with respect
to any of the references relied on in the grounds of rejection advanced on
appeal because the references qualify as prior art under
35 U.S.C. § 102(b). See Answer 17; 37 C.F.R. § 1.131(a)(2) (September
2004). We further note Appellants did not cite this document in the
Evidence Appendix to the Brief. Br. 18. Thus, we do not further consider
this document.
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Application 10/663,949
We find Jensen would have disclosed to one of ordinary skill in this
art that an anode fuel electrode can be formed in a manner “significantly less
expensive than EVD” by “sintering a mixture of nickel and [YSZ] onto the
electrolyte” in forming a SOFC. Jensen, e.g., col. 1, ll. 11-14, and col. 2, l.
40 to col. 3, l. 19.
We find Cable would have disclosed to one of ordinary skill in this art
tubular SOFCs but illustrates the invention with planar SOFCs. Cable col. 6,
ll. 13-22, col. 6, l. 55 to col. 7, l. 65, and Fig. 1. Electrolyte 6 can be YSZ
that has a cathode electrolyte interfacial layer 18 of substantially cathode
material applied thereto in the form of a paint or ink to form a contact zone.
Id. col. 8, ll. 11-26. The
anode electrolyte interfacial layer 19 may be applied to the
surface of the electrolyte adjacent or proximate to the anode as
a paint or ink containing, in one embodiment, substantially
anode material such as nickel or nickel oxide, to form . . . an
electrical contact zone . . . [and] may be applied by other
conventional techniques also, such as plasma deposition, spin
casting, spraying or screen printing.
Id. col. 8, ll. 26-34. The “[a]node 4 is a porous body, and may comprise a
finely divided, compressed metallic powder such as nickel or cobalt blended
with a stable oxide powder such as zirconia, ceria, yttria or doped ceria.” Id.
col. 10, ll. 18-21. There is no disclosure that “plasma deposition” includes
plasma spraying and the Examiner admits Cable “does not explicitly teach
plasma spraying the actual fuel electrode layer.” Answer 6.
A discussion of Clemmer is not necessary to our decision.
Appellants acknowledge it was known in the art to form an anode fuel
electrode by EVD of YSZ “within and surrounding nickel particles, thereby
forming a [YSZ] ‘skeleton’ within and around a matrix of nickel particles.”
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Application 10/663,949
Specification 3:1-5. Appellants acknowledge the sintering process of
forming the anode fuel electrode from a mixture of nickel and YSZ as
disclosed by Jensen. Id. 3:11-14. Appellants acknowledge forming the
anode fuel electrode by plasma spraying, including APS, VPS, and flame
spraying “a molten powdered metal or metal oxide onto an underlying
substrate surface using a plasma thermal spray gun to form a deposited layer
having a microstructure generally characterized by accumulated molten
particle splats.” Id. 3:16-4:6.
We, like Appellants, find no disclosure in Ramanarayanan which
would have described to one skilled in this art or suggested to one of
ordinary skill in this art that the anode fuel electrode of nickel in the YSZ
skeleton for the SOFCs disclosed therein can be formed on the surface of the
YSZ electrolyte by plasma spraying a mixture of nickel and YSZ powders as
the Examiner contends. See Answer, e.g., 4-5, 7-8, 9-10, 12-13, and 15-16;
Br. 6-7; Reply Br., e.g., 4. Indeed, neither of the two specific methods
disclosed by Ramanarayanan to deposit the specific anode fuel electrode
skeletal structure involves plasma spraying, and Ramanarayanan’s statement
that the deposition of the Ni-YSZ skeletal structure by depositing a slurry of
the materials followed by sintering is less costly compared to EVD is further
supported by the same disclosure in Jensen. Appellants acknowledge that
the EVD method of depositing the Ni-YSZ skeletal structure was known.
Cable does not disclose forming any layer of SOFC by plasma spraying.
Thus, we are further not convinced by the Examiner’s contention that one
skilled in the art and one of ordinary skill in the art would have formed the
Ni-YSZ skeletal structure because of the knowledge in the art that YSZ can
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Application 10/663,949
be cost effectively deposited as the electrolyte by plasma spraying compared
to EVD as disclosed by Ramanarayanan, and that plasma spraying of metals
was known as Appellants acknowledge. Cf., e.g., In re Graves, 69 F.3d
1147, 1152 (Fed. Cir. 1995), and cases cited therein (a reference anticipates
the claimed method if the step that is not disclosed therein is within the
knowledge of the skilled artisan). Indeed, the Examiner adduces no
reference establishing that plasma spraying a mixture of metal-ceramic
powders can provide Ramanarayanan’s Ni-YSZ skeletal structure, and mere
cost-benefit analysis alone does not established that this structure would be
formed in this manner.
We determine the ground of rejection over Cable is not supported by
evidence establishing obviousness in the same respects. See Br., e.g., 10;
Reply Br., e.g., 5. Indeed, the Examiner admits Cable does not explicitly
teach plasma spraying the actual furl electrode layer, and thus, this reference
alone provides no support for the Examiner’s contention that “it would be
obvious to one skilled in the art at the time of the invention to recognize
plasma spraying as a viable option for applying the anode material” in
Cable. See Answer 6. Indeed, the Examiner’s contention that “Cable further
teaches applying a substantially furl electrode material (anode) to the
electrolyte using plasma spraying (8:30-35)” is not supported by that
disclosure. See Answer 16. In this respect, the “substantially anode
material” disclosed by Cable at col. 8, ll. 30-35, is nickel and nickel oxide,
and Cable at col. 10, ll. 18-21 (emphasis supplied), discloses that the anode “
is a porous body and may comprise a finely divided, compressed metallic
powder,” such as nickel blended with a stable oxide powder, such as zirconia
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Application 10/663,949
or yttria. The Examiner does not establish that Cable’s thus described
porous body anode fuel electrode has a metal-ceramic microstructure
characterized by accumulated molten particle splats formed on at least a
portion of the electrolyte as claimed.
Accordingly, the Examiner has not established a prima facie case of
anticipation or of obviousness under 35 U.S.C. §§ 102(b) and 103(a) in the
grounds of rejection applying Ramanarayanan, and of obviousness under
35 U.S.C. § 103(a) in the ground of rejection over Cable alone, and
accordingly, we reverse the grounds of rejection of claims 1 through 18.
The Primary Examiner’s decision is reversed.
REVERSED

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Appeal 2007-4240
Application 10/663,949

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