TOYOTA JIDOSHA KABUSHIKI KAISHA

Patent Trials and Appeals Board

Apr 6, 2021

2020002579 (P.T.A.B. Apr. 6, 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.
15/027,072 04/04/2016 Yukihiro SHIBATA 10820.0112-00000 6408
22852 7590 04/06/2021
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
04/06/2021 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKIHIRO SHIBATA
Appeal 2020-002579
Application 15/027,072
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 7. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a method of making a
gas diffusion layer used for a gas diffusion electrode of a solid electrolyte
fuel cell. Spec. ¶ 2. Appellant seeks to reduce production time and reduce
manufacturing cost while maintaining quality. Id. at ¶ 9. Claim 1 is the only
independent claim on appeal and is illustrative:
1. A manufacturing method of a gas diffusion layer for fuel cell
having a substrate layer and a microporous layer, the manufacturing
method comprising:
coating a first coating fluid for forming the microporous layer
on one surface of a porous base material used for formation of the
substrate layer, and
coating a second coating fluid for water repellent treatment
having a lower viscosity than viscosity of the first coating fluid on the
other surface of the base material facing downward in a direction of
gravity,

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as TOYOTA JIDOSHA KABUSHIKI
KAISHA. Appeal Br. 3.
2 In this Decision, we refer to the Final Office Action dated April 23, 2019
(“Final Act.”), the Appeal Brief filed October 9, 2019 (“Appeal Br.”), the
Examiner’s Answer dated December 12, 2019 (“Ans.”), and the Reply Brief
filed February 11, 2020 (“Reply Br.”).
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wherein the first coating fluid and the second coating fluid are
paste or slurry,
wherein the second coating fluid is a dispersion of a water
repellent agent excluding a conductive material included in the first
coating fluid,
wherein the water repellant agent moves up from the other
surface of the base material by capillarity to penetrate into the base
material to provide water repellency to the base material,
wherein the coating of the first coating fluid and the coating of
the second coating fluid are performed continuously in a single pass
process,
wherein the second coating fluid is applied after the first
coating fluid, and
wherein the second coating fluid does not reach a surface of the
first coating fluid.
Appeal Br. 20. (Claims App.)3

REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1, 3, and 7
under 35 U.S.C. § 103 as obvious over Ji et al., US 2007/0087260 A1, Apr.
19, 2007 (“Ji”) in view of DeMarinis et al., US 6,103,077, Aug. 15, 2000
(“DeMarinis”) and Zuber et al., US 2002/0041992 A1 (Apr. 11, 2002)
(“Zuber”) as evidenced by Gorse, Dictionary of Construction, Surveying and
Civil Engineering, 316 (2012) (“Gorse”).

3 Note that the Claims Appendix incorrectly states the final two lines of
claim 1 as stating “wherein the second coating fluid does not reach the
coated surface of the first coating fluid.” Claims App. 20 (emphasis added);
see also Ans. 3 (explaining the error); Appeal Br. 8 (arguing based on the
correct recitation).
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant argues all claims as a group. We therefore limit our
discussion to claim 1. Claims 3 and 7 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(1)(iv) (2013).
The Examiner finds that Ji teaches a method of manufacturing a gas
diffusion layer for fuel cells including, for example, providing a first layer
and hydrophobic second layer that may comprise polytetrafluroethylene
(“PTFE”). Final Act. 3–5 (citing Ji). The Examiner finds that DeMarinis
teaches that a TEFLON coating for a gas diffusion electrode membrane
assembly can be formed using a gravure coating process. Id. at 5–6 (citing
DeMarinis). The Examiner finds that Gorse teaches that TEFLON is also
known as PTFE. Id. at 6 (citing Gorse). Based on DeMarinis and Gorse, the
Examiner determines that it would have been obvious to modify Ji to
provide a first coating by slot die coating to one side of the substrate and the
second coating on the opposite side by gravure coating. Id. at 6–8.
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The Examiner also finds that Ji teaches a carbon fiber paper substrate
preferably from about 100 microns to about 500 microns. Final Act. 9. The
Examiner finds that Ji teaches that the first coating fluid “is applied to be up
to 100 microns deep.” Id. The Examiner finds that Ji does not teach the
specific depth penetration of the second fluid. Id. The Examiner finds that
Zuber teaches a hydrophobic layer for a fuel cell gas diffusion structure that
penetrates between 5 and 40 microns. Id. (citing Zuber). The Examiner also
finds that Zuber teaches that depth penetration can be fixed by “suitable
choice of process parameters.” Id. at 10. The Examiner determines that it
would have been obvious to combine the references’ teachings regarding
depth penetration because a person of skill in the art would expect the
combination of teachings to “provid[e] a desirable gas diffusion media.” Id.
at 11.
Appellant argues that the combined references do not teach or suggest
claim 1’s recitation of “wherein the second coating fluid does not reach a
surface of the first coating fluid.” Appeal Br. 9–13. Appellant argues, for
example, that the references suggest a wide range of possible penetration (id.
at 11), that the Examiner engages in too much picking and choosing of
isolated parts of the references (id.), that Ji suggests a 100 micron thick
paper that could be completely penetrated by the first fluid thus requiring an
overlap of the fluids (id. at 12), and that changing the method of application
of the second fluid would change penetration of the second fluid (id. at 15).
Appellant’s argument is not persuasive of error because a
preponderance of the evidence supports that the combined art suggests
embodiments where the second coating fluid does not reach the first coating
fluid. In particular, Ji teaches that its substrate (carbon fiber paper) may be
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100 to 1000 microns thick. Ans. 6 (citing Ji ¶ 23). Ji also teaches that its first
fluid penetrates “up to about 100 µm.” Ji ¶ 36; see also Ans. 6. Ji does not
expressly discuss penetration of its water repellant second fluid. Zuber,
however, suggests that a hydrophobic coating that penetrates 5–40 microns
is appropriate and teaches how depth of penetration may be controlled.
Ans. 7–9; Zuber ¶ 37. Thus, the maximum substrate thickness suggested by
Ji (whether 1000 microns or, more preferably, 500 microns) is much greater
than twice the thickness of the maximum first fluid penetration (100
microns) and is far greater than the penetration of Zuber’s hydrophobic
coating (40 microns). With, for example, a 1000 micron substrate, 100
micron first fluid penetration, and 40 micron second fluid penetration, there
would be a gap of 860 microns preventing the fluids from reaching each
other.
Appellant identifies no convincing evidence suggesting that the first
and second fluids would penetrate so much that a 500 or 1000 micron
substrate would result in fluids overlapping. Appellant focuses on overlap
that may result when a thin (100 micron) substrate is chosen. See, e.g.,
Appeal Br. 12; Reply Br. 3. Ji’s entire disclosure, however, must be
considered including the thicker substrates. See In re Lamberti, 545 F.2d
747, 750 (CCPA 1976) (“all disclosures of the prior art, including
unpreferred embodiments, must be considered”).
Regarding Appellant’s argument that changing Zuber’s application
method to DeMarinis’s coating process could change depth penetration,
Appellant’s factual position generally makes sense. Appeal Br. 15. But the
preponderance of the evidence—based on Ji’s first fluid penetration (100
micron maximum) and Zuber’s penetration (40 micron maximum)—
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nonetheless suggests that penetration of the second fluid will not be so great
that it would reach the first fluid when, for example, a 1000 micron substrate
is utilized. Moreover, Zuber teaches that a 40 micron penetration is
sufficient and desirable for a diffusion layer, and, as the Examiner explains,
Zuber also teaches what variables can be controlled to reach a desired
penetration. Ans. 8. A person of skill in the art utilizing Ji’s second fluid,
thus, would have understood that variables could be controlled to reach an
appropriate penetration (for example, 40 microns as taught by Zuber).
Appellant’s argument is, thus, unpersuasive. The preponderance of the
evidence, as explained above, supports the Examiner’s position that,
following the references’ teachings, it would have been obvious to reach a
gas diffusion layer for a fuel cell “wherein the second coating fluid does not
reach the coated surface of the first coating fluid.”
Appellant further argues that one skilled in the art would not have a
reasonable expectation of success in using DeMarinis’s gravure coating
method in conjunction with Zuber’s hydrophobic coating. Appeal Br. 13–15.
This argument is unpersuasive because it does not squarely address the
Examiner’s stated rejection. The Examiner’s rejection uses Ji’s hydrophobic
coating rather than Zuber’s hydrophobic coating. Ans. 11. Zuber is used by
the Examiner to, for example, establish what penetration of hydrophobic
coating would have been desirable. Ans. 7–9.
Appellant also argues unexpected results. Appeal Br. 17. Appellant,
however, does not present evidence establishing unexpected results relative
to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991). Moreover, Appellant does not present evidence
establishing that the results are unexpected rather than merely superior.
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Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny
superior property must be unexpected to be considered as evidence of non-
obviousness.” (emphasis in original)).
After carefully considering Appellant’s unexpected results argument
and evidence in conjunction with the record as a whole, we are not
persuaded that Appellant identifies error in the Examiner’s rejection. We,
thus, sustain the rejection.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 7 103 Ji, DeMarinis, Zuber,
Gorse
1, 3, 7

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED