Ex Parte Vyas et al

Board of Patent Appeals and Interferences

Dec 8, 2011

11172021 (B.P.A.I. Dec. 8, 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.
11/172,021 06/30/2005 Gayatri Vyas GP-306866 8300
65798 7590 12/08/2011
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
ENIN-OKUT, EDU E
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
12/08/2011 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 GAYATRI VYAS, MAHMOUD H. ABD ELHAMID, and
THOMAS A. TRABOLD
____________

Appeal 2010-008058
Application 11/172,021
Technology Center 1700
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-008058
Application 11/172,021

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 12-14, 16-21, and 28-31 under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement. (App.
Br.2 7.)3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 12, the sole independent claim, is reproduced below from the Claims
Appendix to the Appeal Brief:
12. A fuel cell comprising a flow field plate being made of a plate material,
said flow field plate including a plurality of flow channels responsive to a reactant
gas, said flow field plate further including a doped non-stoichiometric metal oxide
layer that makes the plate conductive, hydrophilic and stable in a fuel cell
environment.
The issue in this appeal is: did the Examiner reversibly err in determining
that the written description does not support the phrase “a doped non-
stoichiometric metal oxide layer” (claim 12 (emphasis added))?

1 Final Office Action mailed Aug. 18, 2009 (“Final”); Examiner’s Answer mailed
Mar. 30, 2010 (“Ans.”), 7 (withdrawing the Final rejection of claim 14 under 35
U.S.C. §112, second paragraph).
2 Appeal Brief filed Jan. 6, 2010 (“App. Br.”)
3 Appellants request that we address the Examiner’s statements regarding future
entry/non-entry of amendments and restriction/election requirements. (See App.
Br. 10-11.) These matters are not appealable issues. See In re Hengehold, 440
F.2d 1395, 1403 (CCPA 1971) (“There are a host of various kinds of decisions an
examiner makes in the examination proceeding—mostly matters of a discretionary,
procedural or nonsubstantive nature—which have not been and are not now
appealable to the board . . . when they are not directly connected with the merits of
issues involving rejections of claims, but traditionally have been settled by petition
to the Commissioner.”)

Appeal 2010-008058
Application 11/172,021

3
The Examiner maintains “[t]he specification, whether expressly, implicitly
or inherently, does not discuss the use of a metal oxide composed of a ‘doped non-
stoichiometric oxide.’” (Ans. 5.) The Examiner contends the Specification only
provides written description support for two separate fuel cell embodiments: one
in which the fuel cell comprises a doped stoichiometric metal oxide layer and an
alternative embodiment in which the fuel cell comprises a non-stoichiometric
oxide layer. (Ans. 4-5.)
Appellants rely on Specification paragraphs [0022-0025] and [0027] to
establish possession of the claimed “doped non-stoichiometric metal oxide layer”
(claim 12). (See generally, App. Br. 8-10.) The relied-upon paragraphs include
the following disclosure:
According to one embodiment of the present invention, the
bipolar plates 18 and 30 have a metal oxide layer 50 and 52,
respectively, that make the plates 18 and 30 conductive, corrosion
resistant, hydrophilic and stable in the fuel cell environment. In one
embodiment, the metal oxide layers 50 and52 are doped with a
suitable dopant.

(Spec. [0022].) “[T]he dopant in the metal oxide is selected to increase the
conductivity of the layers 50 and 52.” (Spec. [0023].) “Further, the dopant in the
layers 50 and 52 is selected to make the layers 50 and 52 stable, i.e., corrosion
resistant.” (Spec. [0024].)
In an alternate embodiment, the metal oxide layers 50 and 52
are non-stoichiometric metal oxide layers. The non-stoichiometric
metal oxide includes oxygen vacancies in the lattice structure of the
metal oxide. The metal oxide provides the hydrophilicity. The
vacancies allow electrons in the valence band to jump to the
conduction band of the metal oxide to provide the conductivity.
Further, the non-stoichiometric metal oxide reduces the hydrophobic
effect of contaminants adhering to the surface. Particularly, the non-
stoichiometric metal oxide acts as an oxidizing agent where the
Appeal 2010-008058
Application 11/172,021

4
contaminants get oxidized, similar to a self-cleaning window, making
the metal oxide layers 50 and 52 both hydrophilic and conductive.

(Spec. [0027].)
In addition, we note the Field of the Invention reads:
This invention relates generally to bipolar plates for fuel cells
and, more particularly, to a bipolar plate for a fuel cell that includes a
doped metal oxide coating or non-stoichiometric metal oxide coating
that makes the plate conductive, hydrophilic and stable in a fuel cell
environment.

(Spec. [0001].) The Summary of the Invention reads: “In one embodiment, the
metal oxide is a doped metal oxide. . . . In an alternate embodiment, the metal
oxide is a non-stoichiometric metal oxide that includes oxygen vacancies in the
lattice structure that provides the conductivity.” (Spec. [0014].)
Appellants argue, “while more than one embodiment of the invention is
described in the specification, nothing in the specification indicates that these
embodiments must be mutually exclusive.” (App. Br. 9.)
Based on our review of the Specification, we are in agreement with the
Examiner (see Ans. 6) that one of ordinary skill in the art would have understood
that Appellants, at the time of filing of the Application, were in possession of two
distinct types of metal oxide layers for achieving a bipolar plate which is
conductive, hydrophilic and stable in a fuel cell environment. (See Spec. [0001]
supra.) While the Specification may not expressly indicate these embodiments
must be mutually exclusive as argued by Appellants (App. Br. 9), such absence of
disclosure is insufficient to satisfy the written description requirement. Rather, 35
U.S.C. §112, first paragraph, requires an “applicant [] ‘convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention,’ and demonstrate that by disclosure in the
Appeal 2010-008058
Application 11/172,021

5
specification.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115,
1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64 (Fed. Cir. 1991)); see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
1299, 1306–07 (Fed. Cir. 2008) (explaining that § 112, ¶ 1 “requires that the
written description actually or inherently disclose the claim element”). At best,
Appellants’ Specification discloses that which would have rendered the claimed
invention obvious, which is insufficient to demonstrate possession of the invention
within the meaning of 35 U.S.C. §112, first paragraph. See Univ. of Rochester v.
G.D. Searle & Co., Inc., 358 F.3d 916, 923 (Fed. Cir. 2004).
In sum, because Appellants have not shown reversible error in the
Examiner’s determination that the written description does not support the phrase
“a doped non-stoichiometric metal oxide layer” (claim 12), we sustain the rejection
of claims 12-14, 16-21, and 28-31 under 35 U.S.C. §112, first paragraph, as failing
to comply with the written description requirement.
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).

AFFIRMED

kmm