Ex Parte Yan et al

Patent Trial and Appeal Board

Oct 25, 2012

11762103 (P.T.A.B. Oct. 25, 2012)

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.
11/762,103 06/13/2007 Susan G. Yan 8540G-000169/DVA 1174
27572 7590 10/25/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
MCCLELLAND, KIMBERLY KEIL
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
10/25/2012 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 SUSAN G. YAN, MICHAEL SCOZZAFAVA, and
ZHILEI (JULIE) WANG
____________

Appeal 2011-006438
Application 11/762,103
Technology Center 1700
___________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-13 under 35 U.S.C. § 103(a). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.1

1 Our decision makes reference to Appellants’ Brief (App. Br.) filed
September 10, 2010, Appellants’ Reply Brief (Rep. Br.) filed January 10,
2011, and the Examiner’s Answer (Ans.) mailed November 9, 2010.
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The rejections
In the Answer, the Examiner has maintained the following rejections:
Rejection 1: Claims 1, 3-8, and 10-11 have been rejected under 35
U.S.C. § 103(a) as unpatentable over Wilson2 in view of Fujita3 and Afzali-
Ardakani4. Ans. 4-7.
Rejection 2: Claim 2 has been rejected 35 U.S.C. § 103(a) as
unpatentable over Wilson in view of Fujita and Afzali-Ardakani as applied
against claim 1, and further in view of Oh5. Ans. 7-9.
Rejection 3: Claim 9 has been rejected 35 U.S.C. § 103(a) as
unpatentable over Wilson in view of Fujita and Afzali-Ardakani as applied
to claim 1, and further in view of Grot6. Ans. 9-10.
Rejection 4: Claims 12-13 have been rejected 35 U.S.C. § 103(a) as
unpatentable over Wilson in view of Fujita and Afzali-Ardakani as applied
to claim 1, and further in view of Tou7. Ans. 11.
Claim 1 is illustrative of the subject matter on appeal:
1. A method of fabricating an assembly comprising an
electrode in a continuous process comprising:
moving a continuous strip of a non-porous polymeric
substrate along a feed path;
forming a slurry comprising an ionically conductive
material, an electrically conductive material, a catalyst, and a
casting solvent at a first station along said feed path;

2 Wilson, M.S. et al., Thin-film catalyst layers for polymer electrolyte fuel
cell electrodes, Journal of Applied Electrochemistry 22 (1992), at 1-7.
3 WO 03/073440 A1, published Sep. 4, 2003.
4 US 5,591,285, issued Jan. 7, 1997.
5 US 2003/0121603, published Jul. 3, 2003 (incorrectly identified as US
2003/012603 in the Answer).
6 US 5,330,860, issued Jul. 19, 1994.
7 US 5,518,831, issued May 21, 1996.
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advancing said continuous strip of said non-porous
polymeric substrate to said first station;
applying said slurry at said first station to one or more
discrete regions on a surface of said continuous strip of said
non-porous polymeric substrate;
drying said slurry to form a film at each of said discrete
regions;
advancing said continuous strip to position a membrane
adjacent a respective one of said films at said discrete regions;
bonding said film to said membrane to form an electrode;
removing said electrode from said continuous strip;
advancing said continuous strip to a cleaning station to
clean said discrete regions of said surface from which said
electrode was removed; and
advancing said cleaned continuous strip of said substrate
to said first station.

App. Br., Claims App’x.

PRINCIPLES OF LAW

"In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of
the patentee controls . . . . The first error of the Court of Appeals in
this case was . . . by holding that courts and patent examiners should
look only to the problem the patentee was trying to solve." KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 419-420 (2007). The Supreme
Court explained that “[w]hen a work is available in one field of
endeavor, design incentives and other market forces [(not the
subjective intent of inventors provided in the Specification)] can
prompt variations of it, either in the same field or a different one.” Id.
at 417. In other words, a prior art reference is analogous under 35
U.S.C. §103(a) if it is reasonably pertinent to any problem with which
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one of ordinary skill in the art is concerned. Further, “[w]hen there is
a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary
skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense. In
that instance the fact that a combination was obvious to try might
show that it was obvious under § 103.” Id. at 421.

ANALYSIS

Appellants do not set forth separate, substantive arguments for any
particular claim on appeal except claim 1. Accordingly, all of the appealed
claims stand or fall together with independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
Appellants’ main argument in the Appeal Brief is that Wilson and
Afzali-Ardakani are non-analogous prior art. App. Br. 7. Appellants’ argue
that Wilson and Afzali-Ardakani have different functions and uses (App. Br.
7-10), and are directed to different problems (App. Br. 10-11). In particular,
Appellants argue that Afzali-Ardakani’s Teflon® carrier substrate is formed
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on a copper substrate and is more akin to Wilson’s electrode slurry, not
Wilson’s Teflon® carrier substrate. App. Br. 8. In addition, Appellants
argue that Afzali-Ardakani is concerned with the porosity of the Teflon®
carrier substrate merely because the substrate is exposed to metal plating
baths, whereas Wilson’s Teflon® carrier substrate is not. Id. As such,
Appellants argue that Wilson would not be concerned with excess ion
buildup, the problem for which Afzali-Ardakani provides the solution of a
non-porous Teflon® carrier substrate. Id. at 11.
This argument is unpersuasive. The Examiner found that Wilson’s
Teflon® carrier substrate must either be porous or nonporous. Ans. 12. The
Examiner found that Afzali-Ardakani identified these two as the only
predictable solutions for the carrier substrate. Id. With regard to
Appellants’ argument that Wilson is not concerned with the problem of ion
permeation, the Examiner found, and Appellants do not contest, that it was
well-known in the art that porous carriers collect particles and ions during
coating, whether by metal plating or slurry coating. Id. at 13. Indeed, not
only do Appellants not contest this finding, but Appellants disclose that one
of skill in the art has recognized that there is always some loss of the catalyst
layer into the pores when using a porous substrate. Spec. 15:1-5. The
Examiner concluded that one of ordinary skill in the art would recognize the
advantage of using a non-porous substrate as taught by Afzali-Ardakani to
prevent such accumulation in Wilson’s substrate. Id.
We agree. Afzali-Ardakani discloses that there are a finite number
of predictable solutions to the problem of substrate contamination. In a
situation in which the art recognizes the problem of substrate contamination
when using porous substrates, as both the Examiner found and Appellants
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disclosed, it would have been obvious for one skilled in the art to try the
other predictable solution, a non-porous substrate, as suggested by Afzali-
Ardakani. Moreover, because the art had recognized the problem of
substrate contamination, Afzali-Ardakani’s teaching of the advantage of
non-porous substrates over porous substrates for this problem is analogous
prior art under the test set forth in KSR Int’l Co., supra. Ans. 15.
Appellants further argue that unexpected results have been presented
in their Specification with regard to the use of a non-porous substrate versus
a porous substrate. App. Br. 12. This argument is unavailing for the reasons
stated by the Examiner. Ans. 15-16. In particular, the Examiner correctly
notes that “the current claim language does not limit the method to a specific
operating pressure.” Id. at 15. Also, Figure 8 demonstrates similar
performance using either porous or non-porous. Id. at 15-16. Only Figure 9
demonstrates any performance difference, but only “at a specific operating
pressure, which is not required by the current claim language.” Id. at 16.
Therefore, unexpected results, for the claimed method using a non-porous
substrate, has not been established on this record.
Accordingly, the preponderance of the evidence supports all of the
Examiner’s rejections on appeal.
DECISION
The decision of the Examiner is affirmed.

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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