Ex Parte Ruka et al

Board of Patent Appeals and Interferences

Dec 30, 2011

10663949 (B.P.A.I. Dec. 30, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/663,949 09/16/2003 Roswell J. Ruka 2003P07614US 3856
7590 12/30/2011
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
WALKER, KEITH D
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
12/30/2011 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 ROSWELL J. RUKA,
GEORGE R. FOLSER, and SRIKANTH GOPALAN
______________

Appeal 2010-003074
Application 10/663,949
Technology Center 1700
_______________

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 1-18 in the Office
Action mailed November 13, 2007. In the Brief filed February 13, 2008
(Br.), Appellants stated that “Applicants do not dispute the rejection of
claims 1-4” and “the rejection of claims 16-17” with respect to several
grounds of rejection. Br., e.g., 6 and 7. In the Board Order entered March
10, 2009, the Application was remanded to the Examiner “to notify
Appellant to file an amendment cancelling claims 1-4 and 16-17, and to have
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the remaining claims on appeal (5-15 and 18) rewritten in independent
form,” citing Ex parte Ghuman, 88 USPQ2d 1478 (BPAI 2008)
(precedential). In response, Appellants filed an Amendment on July 2, 2009,
canceling claims 1-4, 16, and 17, and amending claims 5, 7, 9, 12, and 18,
but not claim 15, all directly dependent on claims 1 or 4, which Amendment
was entered sub silentio by the Examiner in the Office Action mailed August
12, 2009. Accordingly, claims 5-15 and 18 remain for consideration on
appeal, a correct copy of which appears in the Brief filed July 2, 2009
(Brief). 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2009).
We affirm-in-part the decision of the Primary Examiner.
Claims 5, 9, and 12 illustrate Appellants’ invention of a tubular solid
oxide fuel cell (SOFC), and are representative of the claims on appeal:
5. A tubular solid oxide fuel cell, comprising:
an air electrode;
an electrolyte formed on at least a portion of the air electrode; and
a ceramic-metal fuel electrode comprising at least 60% nickel and at
least 15% zirconia and having a microstructure characterized by
accumulated molten particle splats formed on at least a portion of the
electrolyte.
9. A tubular solid oxide fuel cell, comprising:
an air electrode;
an electrolyte formed on at least a portion of the air electrode; and
a ceramic-metal fuel electrode comprising nickel and zirconia and
having a microstructure characterized by accumulated molten particle splats
formed on at least a portion of the electrolyte,
wherein a nickel graphite powder is used to obtain at least a portion of
the nickel.
12. A tubular solid oxide fuel cell, comprising:
an air electrode;
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an electrolyte formed on at least a portion of the air electrode; and
a ceramic-metal fuel electrode comprising nickel and zirconia and
having a microstructure characterized by accumulated molten particle splats
formed on at least a portion of the electrolyte,
wherein a yttria stabilized zirconia powder is used to obtain at least a
portion of the zirconia.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: claims 9-12 and 15 under 35 U.S.C. § 102(b) or 35
U.S.C. § 103(a) over Tsukuda1 in view of admitted prior art in the
Specification;2 claims 5-15 and 18 under 35 U.S.C. § 103(a) over Cable (US
5,589,285) in view of admitted prior art in the Specification;3 claims 5-15
and 18 under 35 U.S.C. § 103(a) over Cable in view of Tsukuda; claims 5-8
under 35 U.S.C. § 103(a) over Tsukuda; claims 5-8 under 35 U.S.C. § 103(a)
over Tsukuda in view of Jensen (US 5,035, 962); claims 9-11 under 35
U.S.C. § 103(a) over Tsukuda in view of Clemmer4 and Inco;5 and claim 18

1 H. Tsukuda, A. Notomi, and N. Hisatome, “Application of Plasma
Spraying to Tubular-Type Solid Oxide Fuel Cells Production,” Journal of
Thermal Spray Technology, Vol. 9(3) 364-368 (September 2000).
2 Specification 3:16-21. See Ans. 5.
3 The Examiner cites the prior art acknowledged at p. 3 of the Specification
as establishing that plasma spraying “is a well known method of fabricating
the fuel electrode.” Ans. 5; see also Ans. 7, citing Spec. 3 and 4.
4 R.M.C. Clemmer and S.F. Corbin, “Processing and properties of porous
Ni-YSZ metal/ceramic composites,” Metal/Ceramic Interactions 241-243
(2002).
5 Inco Special Products, an unincorporated business unit of Vale Inco.,
www.incosp.com. A copy of the document relied on is of record and
Appellants have not disputed the Examiner’s reliance thereon. Brief 14-15.
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under 35 U.S.C. § 103(a) over Tsukuda in view of Cable. Brief 6-7; Ans. 5,
6, 7, 8, 9, 11, and 12.6,7
Opinion
We initially note that appealed claim 15 remains dependent on
cancelled claim 1 in Appellants’ Amendment filed July 2, 2009.
Consequentially, claim 15 is indefinite under 35 U.S.C. § 112, second
paragraph, to the extent that it is impossible to ascertain the propriety of the
Examiner’s grounds of rejection thereof under 35 U.S.C. §§ 102(b) and
103(a) over the applied prior art without undue speculation. Thus, we
reverse all of the grounds of rejection of claim 15 under §§ 102(b) and
103(a) pro forma. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970);
In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
In considering the grounds of rejection in the present Appeal, we
remain of the opinion we expressed in our decision in Appeal 2007-4240
entered in this Application on October 31, 2007 (Decision), that the claim
limitation “a ceramic-metal fuel electrode” “having a microstructure
characterized by accumulated molten particle splats formed on at least a
portion of the electrolyte,” appearing in claims 5-14 and 18 now before us,
specifies that “[t]he 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.”

6 We considered the Answer mailed September 21, 2009.
7 We have not considered references which have not been cited in the
statements of the grounds of rejection. Ans. 16 and 18. See In re Hoch,
428 F.2d 1341, 1342 n. 3, (CCPA 1970); cf. Ex parte Raske, 28 USPQ2d
1304, 1304-05 (BPAI 1993).
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Dec. 4. We further found that the only relevant disclosure in the Application
with respect to this limitation is “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.’” Dec.
4, citing Spec., e.g., 13:10 to 15:19. Thus, we gave the term “splat” its
customary, dictionary definition of “[t]o flatten on impact.” Dec. 4, citing
Webster’s Third New International Dictionary 2200 (Philip Babcock Gove,
ed., Springfield, Mass. Merriam-Webster Inc. 1993). On this basis, we
determined “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.” Dec. 4.
Thus, on the record before us, which has not materially changed with
respect to the issue of claim interpretation, we hold again here that contrary
to Appellants’ contentions, claims 5-14 and 18 are couched in product-by-
process format even if a plasma spraying method is not specified per se.
Dec. 4-5, citing, e.g., In re Thorpe, 777 F.2d 695, 696-97 (Fed. Cir. 1985).
Brief, e.g., 7-8. In this respect, we further determine that in independent
claims 9 and 12, and claims dependent thereon, the specified nickel graphite
powder and the yttria stabilized zirconia (YSZ) powder, respectively, must
be used with plasma spraying methods to form at least a portion of the nickel
and a portion of the zirconia, respectively, of the specified ceramic-metal
fuel electrode. Appellants further disclose “the graphite burns off relatively
easily during the APS and subsequent fuel cell fabrication processes and
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assists in attaining suitable fuel electrode porosity.” Spec. 13-15.
Consequently, as Appellants contend and contrary to the Examiner’s
position, the respective powders used in the plasma spraying methods further
characterized the claimed product. Brief, e.g., 7; Ans., e.g., 4, 5-6, and 7.
Accordingly, it is the product characterized by the process limitations
in claims 5-14 and 18 which must be compared against the prior art in
determining patentability. See, e.g., Thorpe, 777 F.2d at 697, and cases cited
therein (“even though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself”).
Claims 9-12: § 102(b) or § 103(a) over Tsukuda
We agree with Appellants’ contention that the Examiner erred in
finding that Tsukuda would have described to one of ordinary skill in the art
a tubular SOFC comprising a ceramic-metal fuel electrode specified in
claims 9-12, and in concluding that one of ordinary skill in the art would
have been led to such an electrode by Tsukuda. Ans. 5-6 and 14-15; Brief
7-9. According to Appellants, the Examiner has ignored the nickel graphite
powder limitation in claims 9-11 and the YSZ limitation in claim 12.
We find that Tsukuda would have disclosed to one of ordinary skill in
the art in the “Principle and Features of SOFCs” section, that a tubular
SOFC can be formed by plasma spraying, that “[a]s metallic material for the
fuel electrode in a reducing atmosphere, a Ni alloy cermet with YSZ is
used,” and that “[t]he electrode structure is required to be porous.” Tsukuda
p. 364, second col. to p. 365, first col. Tsukuda’s Table 1 shows “the main
SOFC components,” including a “fuel electrode” that has a “porous”
structure and is made of “Ni-ZrO2” material. Tsukuda p. 364, second col.,
and Table 1. Tsukuda discloses that “[t]he sectional structure of a cell
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portion with coatings formed by plasma spraying is shown in Fig. 6,” which
structure has a “Fuel Electrode (Ni/YSZ).” Tsukuda p. 365, second col, first
full paragraph, and p. 366, Fig. 6.
We find that the Examiner has not established that Tsukuda would
have described in the disclosure in the second column on page 364 and in
Table 1, a fuel electrode prepared by plasma spraying with nickel graphite
powder, with respect to claims 9-11, or YSZ powder, with respect to claim
12, to form a ceramic-metal fuel electrode comprising nickel and zirconia
and having a microstructure characterized by accumulated molten particle
splats formed on at least a portion off the electrolyte, as specified by claims
9-12. Ans. 5-6 and 14-15. Indeed, the Examiner has neither considered the
powder limitations in the claims with respect to the structure of the ceramic-
metal fuel electrode, nor relied on and explained how the SOFC to the
extend described in Tsukuda Fig. 6 anticipates or renders obvious the
claimed SOFCs. See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990);
Thorpe, 777 F.2d at 697.
Accordingly, in the absence of a prima facie case of anticipation and
of obviousness, we reverse the grounds of rejection of claims 9-12 under
§ 102(b) and § 103(a) over Tsukuda.
Claims 5-14 and 18: § 103(a) over Cable and Admitted Prior Art
and over Cable and Tsukuda
We agree with Appellants’ contention that the Examiner erred in
concluding that Cable, either combined with the admitted prior art (see
above n. 3) or with Tsukuda, would have led one of ordinary skill in the art
to use known plasma spraying methods to fabricate the fuel electrode in
Cable’s SOFC for purposes of either reducing fabrication costs (admitted
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prior art) or to improve adhesion to other components (Tsukuda). Ans. 6-9
and 17-21; Brief 9-11. According to Appellants, Cable does not disclose
forming a fuel electrode by plasma spraying in fabricating SOFCs that
accommodate sulfur bearing fuels. Brief 9-10. Appellants contend that
contrary to the Examiner’s position, the Specification at page 4 discloses it
was known that plasma spraying methods resulted in low adhesion. Brief 9-
10. Appellants further contend that the statement in Tsukuda that plasma
spraying results in adhesion between coatings that is “reliable” does not
mean adhesion is improved, and point to the disclosure in the Specification
at page 4 that plasma spraying resulted in low adhesion. Brief 11.
As Appellants further point out, we previously reversed a ground of
rejection of claims 5-8, 12-14, and 18 over Cable and admitted prior art at
page 3 of the Specification. Dec. 6 and 8-9; Brief 9. We find here, as we
did before, that Cable would have disclosed tubular SOFCs but illustrates
planar SOFCs, wherein fuel “[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.” Dec. 6 and 9, quoting Cable col. 10, ll. 18-21 (emphasis supplied).
We also find again here that Cable does not disclose fabricating the fuel
electrode by plasma spraying methods and the Examiner again admits as
much. Dec. 9; Ans. 6-8 and 17-21.
In the present Appeal, the Examiner contends that Cable would have
disclosed plasma spraying as an application technique to form “a microslip
zone” from the same materials comprising the fuel anode. Ans. 17, citing
Cable col. 12, ll. 29-35. However, we determine that neither this disclosure
in Cable with respect to a different element of an SOFC, nor the evidence in
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the Specification and Tsukuda that plasma spraying methods are well known
support the Examiner’s contention that “it would have been obvious to one
skilled in the art at the time of the invention to use a different method of
applying the fuel electrode” of Cable with “known plasma spraying
techniques.” Ans. 7-8 and 17-20.
Thus, with respect to claims 5-14 and 18, the Examiner has not
established that one of ordinary skill in the art would have used plasma
spraying methods to obtain Cable’s porous fuel anode described as formed
from finely divided, compressed metallic powder, or why one of ordinary
skill in the art would have been led by Cable to form a fuel cell anode that
has the microstructure characterized by accumulated molten particle splats
as claimed. Further, there is no evidence in Cable to support the Examiner’s
contention that Cable would have taught the claimed ceramic-metal fuel
electrode encompassed by claims 9-11. Ans. 7.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the grounds of rejection based on Cable as the primary reference.
Claims 5-8: § 103(a) over Tsukuda alone and with Jensen
We disagree with Appellants that the Examiner erred in concluding
that Tsukuda would have led one of ordinary skill in the art to adjust the
ratio of nickel to zirconia in the fuel electrode, thus establishing the ratio as a
result effective variable. Ans. 9-10 and 21-22, citing Tsukuda pp. 365-66,
Table 1 and Fig. 7; Brief 12-14. According to Appellants, the Examiner has
not established that the claimed “nickel and zirconia percentage limitations
are recognized as results-effective variables,” pointing out that Tsukuda
Figure 7 shows the effect of alumina on resistivity in a nickel alloy sprayed
coating, which is irrelevant to claims 5-8. Brief 12.
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We, like the Examiner, find that Tsukuda Table 1 teaches fuel
electrodes comprised of plasma sprayed nickel-zirconia and nickel-alumina;
Tsukuda Table 1 teaches an interconnector of plasma sprayed nickel alloy-
alumina; and that Tsukuda Figure 7 shows mixing ratios of nickel alloy-
alumina which Tsukuda describes as “control of this ratio allows the
achievement of both compatibly between the coefficients of linear expansion
[of the components of the SOFC] and acceptable conductivity.” Tsukuda
pp. 365-66. Ans. 9 and 20-21. The Examiner concludes that this disclosure
in Tsukuda would have led one of ordinary skill in the art to consider the
ratios of other combinations of metal and ceramic as result effective
variable, including nickel-zirconia for the fuel electrode. Ans. 10 and 21.
A discussion of Jensen is unnecessary to our decision in this Appeal.
On this record, we agree with the Examiner that one of ordinary skill
in the art routinely following the teachings of Tsukuda would have
recognized that the ratios of metal, such as nickel and nickel alloy, to
ceramic, such as alumina and zirconia, are result effective variables. See,
e.g., KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007) (“[A]nalysis
[of whether the subject matter of a claim would have been obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”). Thus, one of
ordinary skill in the art would have determined workable and optimum ratios
of nickel to zirconia for the fuel electrode. See, e.g., In re Aller, 220 F.2d
454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
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Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
teachings of Tsukuda alone and as combined with Jensen with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 5-8 would have been obvious as
a matter of law under 35 U.S.C. § 103(a).
Claims 9-11: § 103(a) over Tsukuda, Clemmer, and Inco
For the reasons we set forth with respect to the grounds of rejection of
claims 9-11 over Tsukuda, we agree with Appellants that the Examiner erred
in concluding that Tsukuda would have led one of ordinary skill in the art to
the ceramic-metal fuel electrode specified in claims 9-11. See above pp. 6-7.
Ans. 11-12 and 23-24; Brief 14-15. A discussion of Clemmer and Inco is
unnecessary to our decision in this Appeal.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse this ground of rejection.
Claim 18: § 103(a) over Tsukuda and Cable
We cannot agree with Appellants’ position that the Examiner erred in
concluding the Tsukuda and Cable would have led one of ordinary skill in
the art to modify Tsukuda’s tubular SOFC by inserting Cable’s interfacial
layer, that is, precursor layer, between Tsukuda’s electrolyte and fuel
electrode layer in order to arrive at the claimed tubular fuel cell
encompassed by claim 18. Brief 15; Ans. 13. According to Appellants,
Cable would have disclosed planar fuel cells and would have taught away
from tubular fuel cells because “tubular fuel cells are intolerant of sulfur
bearing fuels.” Brief 15, citing Cable col. 1, ll. 25-30, and col. 1, l. 55 to
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col. 2, l. 59; see also Brief 10.
In our prior decision, we found that “Cable would have disclosed to
one of ordinary skill in this art tubular SOFCs but illustrates the invention
with planar SOFCs.” Dec. 6, citing Cable col. 6, ll. 13-22, col. 6, l. 55 to
col. 7, l. 65, and Fig. 1. See also above p. 8. Thus, contrary to Appellants’
position, one of ordinary skill in the art would have considered Cable for all
that it teaches, including tubular SOFCs, and not just the illustrative planar
SOFC embodiments. See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (explaining “[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)
(“[T]he fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Tsukuda and Cable with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claim 18 would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
Accordingly, we have affirmed at least one ground of rejection of
claims 5-8 and 18 and reversed the grounds of rejection of claims 9-14.
The Primary Examiner’s decision is affirmed-in-part.
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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).

AFFIRMED-IN-PART

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