Ex Parte Wieser

Board of Patent Appeals and Interferences

Sep 20, 2011

11341292 (B.P.A.I. Sep. 20, 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.
11/341,292 01/27/2006 Christian Wieser GP-305500 3216
65798 7590 09/20/2011
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
RYAN, PATRICK J
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
09/20/2011 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 CHRISTIAN WIESER
____________

Appeal No. 2010-007265
Application 11/341,292
Technology Center 1700
____________

Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A fuel cell system, comprising:
a flow field channel operable to receive a fluid flow therethrough;

Appeal 2010-007265
Application 11/341,292

2
a diffusion medium adjacent to the flow field channel; and
a coating disposed on a surface of the flow field channel;
wherein at least a portion of the coating is selectively and reversibly
operable to absorb moisture contained in the fluid flow so as to form a
swollen coating and selectively control the size of the flow field channel.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Forte US 2004/0151965 A1 Aug. 5, 2004
Miyazawa 6,921,600 B2 Jul. 26, 2005

THE REJECTIONS
1. Claims 1-8, 10-16, and 18-23 rejected under 35 U.S.C. §102(b) as
being anticipated by Miyazawa.
2. Claims 9, 17, and 24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Miyazawa in view of Forte.
ISSUE
Did the Examiner err in determining that Miyazawa teaches a coating
disposed on a surface of the flow field channel “wherein at least a portion of
the coating is selectively and reversibly operable to absorb moisture
contained in the fluid flow” as recited in claim 1.1

1 Independent claims 10 and 18 each similarly recites “wherein the coating
is selectively and reversibly operable to swell as the coating absorbs
moisture contained in the fluid flow.”

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Application 11/341,292

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We answer this question in the negative and AFFIRM.

ANALYSIS
(with Findings of Fact and Principles of Law)

As an initial matter, Appellant has not presented separate arguments
for all of the rejected claims. Rather, with regard to Rejection 1, Appellant’s
arguments are principally directed to common subject matter recited in
independents claim 1, 10, and 18, and we select claim 1 as representative.
With respect to Rejection 2, Appellant’s arguments are principally directed
to common subject matter recited in claims 9, 17, and 24, and we select
claim 9 as representative. Any claim not separately argued will stand or fall
with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).
We essentially adopt the Examiner’s findings pertinent to the issue
raised by Appellant. We, therefore, incorporate the Examiner’s position as
set forth in the Answer. We add the following for emphasis only.
It is the Examiner’s position that Miyazawa’s hydrophilic membrane
14 acts to absorb water, and therefore would inherently form a swollen
coating as claimed. Ans. 5, and 9-11.
On the other hand, Appellant argues that Miyazawa cannot anticipate
the claims because Miyazawa does not expressly or inherently disclose that
the hydrophilic membrane coating 14 is capable of swelling and contracting.
Br. 6-7. Reply Br. 2-4. Appellant asserts that the Examiner’s statement that
because the hydrophilic membrane taught by Miyazawa includes a
component with water-swellable properties, the mixture would exhibit
water-swellable properties, is conclusory. Reply Br. 4.
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Application 11/341,292

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As admitted by Appellant on page 9 of the Brief, Miyazawa teaches
that the hydrophilic membrane facilitates discharge of melted water.
Miyazawa, col. 5, ll. 18-40. Miyazawa teaches that the hydrophilic
membranes are formed by coating slurry or a coating containing a
hydrophilic material. Miyazawa, col. 5, ll. 18-20. It is thus evident that the
material on the walls of the gas flow groove of Miyazawa is hydrophilic
otherwise it would not facilitate discharge of melted water. Hence, we agree
with the Examiner’s position.
Appellant argues that “the term ‘hydrophilic’ includes an affinity for
water, ability to absorb, or be wetted by water.” Reply Br. 2. Appellant
states that thus water absorption is not necessarily a property of a
hydrophilic substance. Id. However, it is difficult for us to agree with this
position because Appellant has not explained why any one of the properties
of having an affinity for water, or of the ability to absorb, or of being wetted
by water, would not involve some degree of swelling with regard to the
hydrophilic membrane of Miyazawa. Furthermore, Appellant’s claims do
not require a certain degree of swelling as stated by the Examiner on page 10
of the Answer.
In view of the above, we are not convinced of error in the Examiner’s
Rejection 1.
With regard to Rejection 2, Appellant argues that Miyazawa does not
teach a coating that is a hydrocarbon polymer, but a chemical compound
made of carbon black, liquid phenol, and polyvinyl alcohol dissolved in
methanol. Br. 13. Appellant also argues that Forte does not cure the
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Application 11/341,292

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deficiency of Miyazawa regarding a coating that is selectively and reversibly
operable to absorb moisture in the flow field. Br. 13-14.
The Examiner recognizes that the coating in Miyazawa includes other
ingredients, in addition to the hydrocarbon polymer (the polyvinyl alcohol).
Ans., paragraph bridging pages 9-10. The Examiner proposes to substitute
one hydrocarbon polymer (the polyvinyl alcohol) for another (the
perfluorinated polymer of Forte). Ans. 9. Appellant has not provided
arguments to convince us of error regarding the Examiner’s proposed
substitution. With regard to the alleged deficiency of Miyazawa, we refer to
our analysis set forth in Rejection 1. Hence, we also affirm Rejection 2.
CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.

TIME PERIOD FOR RESPONSE
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

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