Ex Parte Zobl et al

Board of Patent Appeals and Interferences

Feb 29, 2012

10533560 (B.P.A.I. Feb. 29, 2012)

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.
10/533,560 05/20/2005 Gebhard Zobl SB-514 4363
24131 7590 02/29/2012
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
02/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte GEBHARD ZOBL, WOLFGANG GLATZ,
WOLFGANG KRAUSSLER, and ROBERT OBERBREYER
______________

Appeal 2011-004353
Application 10/533,560
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 8-12 and 14-16 in the Office Action
mailed July 17, 2009. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a) (2009).
An oral hearing was held February 14, 2012.
We reverse the decision of the Primary Examiner.
Claim 8 illustrates Appellants’ invention of a process for producing a
molding with a basic body having a multiplicity of elevations, and is
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Application 10/533,560
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representative of the claims on appeal:
8. A process for producing a molding with a basic body having a
multiplicity of elevations merging into the basic body with inclined side
surfaces, the method which comprises the following steps:
providing a powdery alloy having at least 20% by weight of
chromium component and pressing the powdery alloy in a two-stage
pressing operation with a first pressing stage and a second pressing stage;
and
in the first pressing stage, pressing boundary surfaces of the basic
body to near final shape as far as transition regions of the elevations and
simultaneously pressing the elevations to an oversize, defined with a
projection height h’ from the basic body being greater than a projection
height h from the basic body in a finally pressed state by 10% - 150%, and
with side surfaces of the elevations enclosing an angle of inclination α’ in a
range from 90º - 150º with a respectively adjacent boundary surface of the
basic body, and
in the second pressing stage, pressing the elevations to near final
shape, with the angle of inclination α’ increased to a value α in a range from
95º - 170º; and
subsequently sintering the basic body to produce the molding.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 8-12 and 14-16 over
Yoshida (US 6,660,420 B1) in view of Koga (US 6,517,338 B1) and
Quadakkers (US 5,733,682). Br. 6;1 Ans. 3.
Opinion
The dispositive issue is whether, based on the evidence in the record,
the Examiner erred in determining that one of ordinary skill in the art would
have combined Yoshida, Koga, and Quadakkers, leading to the molding of a
fuel cell separator having elevations from a powdery high chromium-
containing iron-based alloy, containing 20 to 35 weight % chromium,

1 We considered the Appeal Brief filed July 23, 2010.
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disclosed by Quadakkers using Yoshida’s two-stage pressing process
disclosed as useful for forming a separator plate from graphite powder
containing a thermosetting resin. Ans. 3-5 and 7-10; Br. 7-9 and 15-17. See
Yoshida col. 4, ll. 5-37, and Quadakkers col. 3, ll. 29-38.
Appellants point out that Quadakkers would have disclosed to one of
ordinary skill in the art that the powdery high chromium-containing iron-
based alloy disclosed therein “can be fabricated [into a bipolar plate] by a
process yielding a shape close to the final form (near-net-shape process) by
powder metallurgical methods (MIM, WPP).” Br. 8-9, quoting Quadakkers
col. 3, ll. 34-38. Appellants contend that one of ordinary skill in the art “is
unambiguously directed to MIM or WPP as the only readily suitable
processes” for Quadakkers’ purpose. Br. 10 (emphasis omitted). In support,
Appellants submitted the declaration of their expert, Dr. Sigl.2 Br. 15-16.
We find that Dr. Sigl attest that as Quadakkers discloses, “the state of the art
knows of two processes that allow forming of chromium-containing alloys
to near-final-shape, namely, MIM (metal injection molding) and WPP (wet
powder pouring).” Sigl decl. ¶ 12. We find that Dr. Sigl further attests that
“[i]t is my professional opinion that Quadakkers describes the prior art
correctly. In other words, those of skill in the pertinent art had at their avail
only MIM and WPP as the available processes for molding Cr alloy powders
to near-final shape.” Sigl decl. ¶ 12.
The Examiner recognizes that a statement of fact of an expert must be
given weight in the absence of evidence to the contrary. Ans. 8-9. See, e.g.,
In re Reuter, 670 F.2d 1015, 1023 (CCPA 1981) (a factual statement by an

2 Declaration Under 37 CFR § 1.132 of Dr. Sigl executed “July 23, 2008”
and submitted August 7, 2008 (Sigl Declaration).
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Application 10/533,560
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expert in the art is entitled to full consideration in the absence of evidence to
the contrary); see also, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.” (citations omitted)).
However, the Examiner only contends that Dr. Sigl supplies no reason why
the two methods disclosed in Quadakkers would lead one of ordinary skill in
the art “away from other known powder metallurgy methods, such as
pressing,” further contending that “there does not appear to be any factual
basis underlying Dr. Sigl’s opinion.” Ans. 9. The Examiner contends “Dr.
Sigl also discusses (items 14-16) that one skilled in the art of powder
metallurgy would not have used a pressing method (which he admits was a
known powder metallurgy method) based on DIN 30910 detailing difficulty
pressing iron-based stainless steels with a Cr content of 16-19 mass%.”
Ans. 9. The Examiner further contends “[i]t is also not addressed if there are
any other differences between that of DIN 30910 and the current invention
(and the composition of Quadackers [sic, Quadakkers]) that may result in
expected differences from DIN 30910.” Ans. 10.
We find that Dr. Sigl attests that “[p]ersons of ordinary skill in the art
of powder metallurgy would not have used a known pressing method to
form interconnectors or similar moldings with a complex shape in a near
final shape from alloys with a high Cr-content, i.e. > 20 % by mass.” Sigl
decl. ¶ 14. We find that Dr. Sigl further attests that the position is
exemplified by DIN 30910 which shows forming iron-based sintered
“stainless” steels having a Cr content of 16-19 % in “DIN 30910, part 2
(sintered metals for filters), part 4 (materials for structured parts),” and
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Application 10/533,560
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high-density sintered metals or hot-forged sintered steels for structural parts
with a Cr content of 0.1-0.25% by mass in “DIN 30910, part 6 (sinter-forged
steels).” Sigl decl. ¶ 14; see also ¶ 15. We find that Dr. Sigl also attests that
“[i]t is also my professional opinion that, according to DIN 30910, structural
parts with a requisite high density such as an interconnector for a fuel cell
can only be sinter-forged with known methods from powders having a Cr
content of no more than 0.25 % by mass.” Sigl decl. ¶ 16.
The difficulty we have with the Examiner’s position with respect to
Dr. Sigl’s testimony, both opinion and with respect to evidence in
DIN 30 910, is that the Examiner does not cite to and describe the content of
any section of DIN 30 910 in support for the Examiner’s contention that Dr.
Sigl admits that “a pressing method” is a known powder metallurgy method
based on DIN 30 910, and does not address differences between DIN 30 910
and the current invention and the composition of Quadakkers. Indeed, we
find no translation in the record of the parts of DIN 30910 supplied with the
Sigl declaration. Thus, there is no basis in the record for the Examiner’s
position that contrary to Dr. Sigl’s opinion with respect to the metallurgical
methods MIM and WPP disclosed in Quadakkers, other methods for
pressing high chromium alloys were known in the art.
The Examiner also does not address Appellants’ further contention
that a comparison of the processes of Yoshida and Koga, which press
graphite powder mixed with a thermosetting resin, and “production of
complex moldings in conventional powder metallurgy” evinces that these
processes are different, and that one of ordinary skill would not look to
processes applied to graphite powder to mold chromium alloys. Br. 16-18.
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Thus, the Examiner has not adduced on the record scientific reasoning
and/or evidence establishing that one of ordinary skill in the art would have
been led to use Quadakker’s high chromium alloy powder in Yoshida’s two
step molding process, which is the thrust of the ground of rejection. Indeed,
the Examiner has not established that one of ordinary skill in the art would
have equated Quadakker’s high chromium alloy powder with the non-
metallurgical graphite powder containing a thermosetting resin. Thus, the
Examiner erred in maintaining the ground of rejection.
Accordingly, we have again considered the evidence in the totality of
the record, including the Sigl declaration, as a whole in view of Appellants’
arguments for nonobviousness, and based thereon, we concluded that to the
extent the Examiner’s combination of references initially established a prima
facie case of obviousness, the preponderance of evidence and weight of
argument rebuts the prima facie case. Thus, we reverse the ground of
rejection under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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