The Boeing Company

Patent Trials and Appeals Board

Oct 20, 2021

2020004955 (P.T.A.B. Oct. 20, 2021)

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.
15/475,782 03/31/2017 Josè Antonio Blanco B16-0496-US/M17-244-US 5355
121171 7590 10/20/2021
McDonnell Boehnen Hulbert & Berghoff LLP/BOEING
300 South Wacker Drive,
Suite 3100
Chicago, IL 60606
EXAMINER
LAIOS, MARIA J
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
10/20/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mbhb.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSÈ ANTONIO BLANCO, NIEVES LAPEÑA,
JOSE L. LEMUS, ENRIQUE EMILIO SERROT HAUKE, and
EDUARDO G. FERREYRA
Appeal 2020-004955
Application 15/475,782
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
JEFFREY R. SNAY, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 4–9, 15, 16, 19, 20, and 23–26 under
35 U.S.C. § 103 as unpatentable over Jones (US 2016/0372765 A1, published
December 22, 2016) in view of Wozniczka (US 2009/0130500 A1, published

1 The following documents are of record: Specification filed March 31, 2017
(“Spec.”); Final Office Action dated April 24, 2019 (“Final Act.”); Appeal
Brief filed January 27, 2020 (“Appeal Br.”), citations to pages 11–14 being
to the Claims Appendix; Examiner’s Answer dated April 21, 2020 (“Ans.”);
and Reply Brief filed June 11, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as The Boeing Company.
Appeal Br. 1.
Appeal 2020-004955
Application 15/475,782

2

May 21, 2009).3, 4 Claims 2, 3, 21, and 22 are also pending but have been
withdrawn from consideration as directed to non-elected inventions. See
Appeal Br. 10.
We reverse.
CLAIMED SUBJECT MATTER
The invention relates to “a hydrogen fuel cell stack with a channel for
hydrogen inflow inside at least a bipolar plate of the stack.” Spec. ¶ 2. Of the
appealed claims, claims 1 and 15 are independent. See generally Appeal Br.
11–14. Claim 15 is reproduced below.
15. A hydrogen fuel cell stack comprising:
one or more hydrogen fuel cells comprising:
a Proton Exchange Membrane;
a bipolar plate split into a first part and a second
part;
a hydrogen reaction layer configured for receiving
an hydrogen inflow included on an outside of the first
part of the bipolar plate; and
an oxygen reaction layer included on an outside of
the second part of the bipolar plate,
wherein the first part and the second part comprises an
engraving inside such that connecting the first part and the
second part forms a channel inside the bipolar plate via the
engraving inside the first part and the second part, wherein the
channel is connected to the hydrogen inflow of the hydrogen
reaction layer, the channel comprising an inlet configured for
receiving super cooled hydrogen gas and an outlet connected to
the hydrogen inflow.

3 The Examiner has withdrawn the rejection under 35 U.S.C. § 112(b). See
Ans. 3.
4 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2020-004955
Application 15/475,782

3

OPINION
The Appellant contends that the Examiner relied on improper hindsight
reasoning in determining that Jones’s and Wozniczk’s combined teachings
disclose or suggest a two-part bipolar plate as recited in claims 1 and 15. The
Appellant’s argument is persuasive of reversible error for the reasons
discussed below.
The Examiner finds that Jones discloses a bipolar plate (assembly 10)
comprising a first part (anode flow field plate 12) and a second part (cathode
flow field plate 16). Ans. 3; see also Final Act. 4. Jones’s first and second
parts are separated by heat exchanger plate 14. Jones ¶ 83. The Examiner
finds that the independent claims’ limitation, “a channel inside the bipolar
plate,” reads on heat exchanger plate 14’s fluid channel 25. Ans. 4; see also
Final Act. 4. The Examiner finds that the ordinary artisan would have formed
Jones’s heat exchanger plate and cathode flow field plate as a single plate
having a liquid hydrogen channel (a cooling channel) formed on one side of
the plate and an oxidant fluid channel disposed on the other side,
because:
(a) Wozniczka teaches that a cathode flow field plate including
cooling channels can be effectively employed in a fuel cell; (b)
th[e] skilled artisan would appreciate that minimizing the
number of components used to make the fuel cell stack can
improve both the ease and speed of its manufacture; and, (c)
forming in one piece an article which has formerly been formed
in several pieces and put together involves only routine skill in
the art.
Ans. 5 (citing In re Larson, 340 F.2d 965, 968 (CCPA 1965)); see also Final
Act. 5.
Appeal 2020-004955
Application 15/475,782

4

The Appellant argues that Wozniczka does not utilize a heat exchanger
plate and, therefore, would not have led the ordinary artisan to combine
Jones’s heat exchanger plate 14 and cathode flow field plate 16 into a single
plate. Appeal Br. 6. The Appellant further argues that the Examiner has not
identified evidence to support findings that combining Jones’s heat exchanger
plate 14 and cathode flow field plate 16 would have improved the ease and
speed of manufacture and involved only routine skill in the art. Reply Br. 2;
see also Appeal Br. 6 (“[T]here is no reason to minimize the components in
Jones.”).
In response, the Examiner provides a more detailed explanation of how
Jones could have been modified to achieve the claimed bipolar plate, but does
not identify evidence supporting the stated reasons for modifying Jones. See
Ans. 8–10. Therefore, we agree with the Appellant that the Examiner has not
met the initial burden to establish a prima facie case of obviousness.
We add that the Examiner’s reasons for modifying Jones appear
contrary to Jones’s teachings. Jones teaches that “the plates can be
manufactured with a high volume manufacturing process (reciprocal or rotary
die-cutting commonly used in label making) therefore reducing overall part
cost” (¶ 96), and “[p]arts can be manufactured using very low cost tooling
(flat or cylindrical flexible dies)” (¶ 97). Jones also teaches that “instead of
using a separate heat exchanger fluid flow field plate, the heat exchanger
section can be incorporated into the anode fluid flow field plate in a section
outside of the active area, but in the same plane.” Jones ¶ 100. “This
alternative design would also permit the fuel cell stack to be shorter by
removing the separate heat exchanger plate, but would increase the overall
area of the flow field plates, end plates, and the like.” Id.
Appeal 2020-004955
Application 15/475,782

5

The Examiner has not explained why the ordinary artisan would have
ignored those teachings and instead attempted to improve the ease and speed
of manufacture by combining Jones’s heat exchanger and cathode plates in a
different arrangement than Jones’s proposed anode flow field-heat exchanger
plate combination. Compare Ans. 8 (“By combining [heat exchanger] plate 14
and [cathode flow field plate] 16 as shown below (from figures 3 and 4), fluid
channels would be formed on each side of a single plate since the sides facing
each other are both smooth.”), with Jones ¶ 100 (“[T]he heat exchanger
section can be incorporated into the anode fluid flow field plate in a section
outside of the active area, but in the same plane.”).
In sum, because the Examiner has not met the initial burden to establish
a prima facie case of obviousness, we do not sustain the rejection of claims 1,
4–9, 15, 16, 19, 20, and 23–26.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–9, 15,
16, 19, 20,
23–26
103 Jones, Wozniczka 1, 4–9, 15,
16, 19, 20,
23–26

REVERSED