Ex Parte Thompson et al

Patent Trial and Appeal Board

Dec 12, 2016

12719642 (P.T.A.B. Dec. 12, 2016)

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.
P006878-CIP-FCA-CHE 7433
EXAMINER
DOMONE, CHRISTOPHER P
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
12/719,642 03/08/2010
104102 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
12/12/2016
Eric L. Thompson
12/12/2016 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 ERIC L. THOMPSON, ANUSORN KONGKANAND, and
FREDERICK T. WAGNER
Appeal 2015-006446
Application 12/719,642
Technology Center 1700
Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JEFFREY R. SNAY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006446
Application 12/719,642
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claim 1—13 and 21—27. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
The invention relates to “thin film electrodes and more particularly to
fuel cell electrodes including Proton Exchange Membrane (PEM) nano-
structured electrodes.” Specification filed Mar. 8, 2010 (“Spec.”) 12.
Claims 1,11 and 12 are reproduced below:
I. A product comprising:
an electrode comprising:
catalyst; and
a plurality of hydrophilic particles dispersed on said
catalyst.
II. A product as set forth in claim 1, wherein said thin film
catalyst is attached to a proton exchange membrane.
12. A product as set forth in claim 1, wherein said electrode
comprises a fuel cell proton exchange membrane electrode.
App. Br. (Claims App’x), 40-41. Claims 21 and 23, the only other
independent claims on appeal, are identical to claim 1, but further include
the following wherein clauses: “wherein the hydrophilic particles have a
size variation of less than 20 percent” (claim 21) and “wherein the
hydrophilic particles are provided as a cladding” (claim 23). App. Br.
(Claims App’x), 42.
1 Appellants identify the real party in interest as General Motors LLC.
Appeal Brief filed Jan. 5, 2015 (“App. Br.”), 4.
2 Final Office Action mailed Aug. 5, 2014 (“Final Act.”).
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Appeal 2015-006446
Application 12/719,642
The claims stand rejected as follows (see Final Act. 3—11):
1. claims 1, 2, 5—8, 10, and 26 under pre-AIA 35 U.S.C § 102(b)
as anticipated by Vyas et al. (US 2007/0298309 Al, pub. Dec. 27, 2007
(“Vyas”));
2. claims 3,21, and 22 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Vyas;
3. claim 4 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Vyas in view of Ogawa (WO 2007/029607, pub. Mar. 15, 2007 (as
translated in US 7,754,644 B2));
4. claim 9 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Vyas in view of Niu et al. (US 2008/0280169 Al, pub. Nov. 13, 2008
(“Niu”));
5. claims 11—13 and 23 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Vyas in view of Kim et al. (US 2005/0287419 Al, pub.
Dec. 29, 2005 (“Kim”));
6. claim 24 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Vyas in view of Prinz et al. (US 2006/0251950 Al, pub. Nov. 9, 2006
(“Prinz”));
7. claim 25 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Vyas in view of Prinz and Kim; and
8. claim 27 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Vyas in view of Prinz, Kim, and Tani et al. (US 7,306,876 B2, iss. Dec.
11,2007 (“Tani”)).
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Appeal 2015-006446
Application 12/719,642
Vyas discloses fuel cell 10 that includes “cathode side 12” and “anode
side 14” respectively. Vyas 121 (emphasis added). Vyas discloses that
cathode side 12 and anode side 14 are separated by perfluorosulfonic acid
membrane 16. Id. Vyas further discloses that:
A cathode side diffusion media layer 20 is provided on the
cathode side 12, and a cathode side catalyst layer 22 is provided
between the membrane 16 and the diffusion media layer 20.
Likewise, an anode side diffusion media layer 24 is provided on
the anode side 14, and an anode side catalyst layer 26 is
provided between the membrane 16 and the diffusion media
layer 24. The catalyst layers 22 and 26 and the membrane 16
define an MEA.
Id. Vyas discloses bipolar plates 18, 30, that are positioned on cathode side
12 and anode side 14, respectively, and constructed of “any suitable material
that can be stamped, such as stainless steel, titanium, aluminum, etc.” Id.
|| 22—23. Bipolar plates 18, 30 are described as including sheets that define
flow channels for the cathode and anode sides of adjacent fuel cells to fuel
cell 10, as well as flow channels for the flow of a hydrogen reactant gas and
air that react with catalyst layers 26, 22, respectively. Id. Vyas discloses
that bipolar plates 18, 30 include outer layers 50, 52 that make plates 18, 30
“conductive, corrosion resistant, hydrophilic and stable in the fuel cell
environment,” and that “[a]ny combination of suitable hydrophilic and
electrically conductive materials can be used in the layers 50 and 52.” Id. |
24. Vyas discloses that layers 50, 52 can be formed by depositing a solution
of gold particles and silicon dioxide dispersed in ethanol on the sheets of
bipolar plates 18, 30, and then drying to form a dense hydrophilic and
electrically conductive film. Id. || 25—26.
Each of independent claims 1,21, and 23 recites: “A product
comprising:” “an electrode comprising: catalyst; and a plurality of
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Appeal 2015-006446
Application 12/719,642
hydrophilic particles dispersed on said catalyst” (emphasis added). The
Examiner finds Vyas discloses the above-recited claim limitations because
(1) Vyas discloses “a fuel cell 10 comprising a cathode 12 and an anode 14,”
and (2) “gold has catalytic properties” and Vyas discloses “hydrophilic
silicon dioxide particles . . . dispersed on gold particles.” Final Act. 3.
“‘Comprising’ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.” In re Crish, 393 F.3d
1253, 1257 (Fed. Cir. 2004) (quoting Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997)). The claim recitation “an electrode
comprising: catalyst” (claims 1,21, 23) is, therefore, interpreted as requiring
that the electrode itself include the catalyst. From the Examiner’s statement
of the rejection, it is clear that the Examiner finds the recitation of a catalyst
and a plurality of hydrophilic particles dispersed on the catalyst (claims 1,
21, 23) is met by outer layers 50, 52 of Vyas’ bipolar plates 18, 30. It is
unclear, however, precisely which component(s) on “cathode side 12” and
on “anode side 14” the Examiner contends meet the limitation of “an
electrode.” It is impossible to determine, therefore, whether the Examiner
has identified an electrode that includes a catalyst, as required by the
claims.3
In sum, we agree with Appellants that the Examiner has failed to
identify a teaching or suggestion of all the limitations recited in independent
claims 1, 21, and 23. See, e.g., App. Br. 19. Accordingly, the Examiner’s
decision to reject claims 1—13 and 21—27 is:
3 As an additional matter, we note there is no antecedent basis in claims 10,
11 and 25 for the recitation of “said thin flim catalyst” (emphasis added).
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Appeal 2015-006446
Application 12/719,642
REVERSED
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