AUDI AG et al.

Patent Trials and Appeals Board

Apr 2, 2021

2021000162 (P.T.A.B. Apr. 2, 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.
16/077,002 08/09/2018 Adel JILANI 120339.434USPC 5989
136767 7590 04/02/2021
SEED IP LAW GROUP LLP/GENERAL FIRM (EMAIL)
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
BAKHTIARI, NIKI
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADEL JILANI
Appeal 2021-000162
Application 16/077,002
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
SHELDON M. McGEE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 2, 4, and 7–10 under 35 U.S.C. § 103

1 Disposition of this Appeal was taken out of turn because the underlying
application was granted “special” status due to the granting of a petition
filed under the Patent Prosecution Highway program. See Decision on
Request to Participate in the PPH Program and Petition to Make Special
Under 37 C.F.R. § 1.102(a) mailed October 15, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Audi AG and Volkswagen AG as the
real parties in interest. Appeal Brief (“Appeal Br.”) filed April 30, 2020, 1.
Appeal 2021-000162
Application 16/077,002

2
as unpatentable over Farrington (WO 2010/030654 A1, pub. Mar. 18, 2010).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a bipolar plate for a fuel stack having
asymmetrical sealing sections. Specification (“Spec.”) filed August 9, 2018,
1:1–2.3
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter. Limitations at issue are
italicized.
1. A bipolar plate for a fuel cell stack, comprising:
an anode half-plate on which an anode flow field is
formed, and a cathode half-plate on which a cathode flow field
is formed; and
a first elastic seal and a second elastic seal;
wherein the anode half-plate includes an anode sealing
section of the anode half-plate that surrounds the anode flow
field;
wherein the cathode half-plate includes a cathode sealing
section of the cathode half-plate that surrounds the cathode flow
field;
wherein the anode sealing section of the anode half-plate
is in direct contact with the first elastic seal and the cathode
sealing section of the cathode half-plate is in direct contact with
the second elastic seal; and
wherein the anode sealing section of the anode half-plate
includes one or more sealing projections having a first height
greater than the rest of the anode half-plate of the bipolar
plate, and the cathode sealing section of the cathode half-plate
is formed without a sealing projection and/or is substantially

3 This Decision also cites to the Examiner’s Answer (“Ans.”) dated August
7, 2020, and the Reply Brief (“Reply Br.”) filed October 5, 2020.
Appeal 2021-000162
Application 16/077,002

3
flat and has a second height greater than the rest of the cathode
half-plate of the bipolar plate.
Independent claim 8 recites a fuel cell stack comprising a plurality of
bipolar plates alternatingly arranged on each other, wherein the bipolar
plates are substantially as recited in claim 1 and the seal elements are
designed flat, at least in the area of the anode and cathode sealing sections.
OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies, 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 record
before us, we are not persuaded of reversible error in this rejection.
Therefore, we affirm the Examiner’s obviousness rejection for substantially
the fact findings, reasoning, and conclusions set forth in the Examiner’s
Answer, which we adopt as our own. We add the following for emphasis.
Appellant separately argues independent claims 1 and 8, but does not
otherwise separately argue any of the dependent claims. Appeal Br. 11–13.
In addition, Appellant relies on the same arguments against claims 1 and 8.
Id. Accordingly, we focus on the limitations of claim 1 in addressing
Appellant’s arguments. Claims 2, 4, and 7–10 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner finds that Farrington teaches a bipolar plate comprising
an anode half-plate 5 including an anode sealing section surrounding an
anode flow field, a cathode half-plate 6 including a cathode sealing section
Appeal 2021-000162
Application 16/077,002

4
surrounding a cathode flow field, and a first elastic seal 7 in direct contact
with the anode sealing section, wherein the anode sealing section includes
one or more sealing projections 10 and the cathode sealing section is
substantially flat. Ans. 3–4. The Examiner further finds that Farrington
teaches that a plurality of fuel cell bipolar plates may be stacked in series in
order to deliver a greater output voltage, wherein the anode and cathode
half-plates are alternatingly stacked on one another such that a second elastic
seal 7 is in direct contact with the cathode sealing section. Id. at 4. The
Examiner refers to an annotated figure, reproduced below, modified from
Farrington’s Figure 2 to reflect such an arrangement consistent with
Farrington’s disclosure.

Examiner’s Annotated Figure showing a cross-section of
Farrington’s fuel cell stack

The Examiner concludes that it would have been obvious to have stacked a
plurality of Farrington’s bipolar plates as shown in the annotated figure
above in order to deliver a greater output voltage. Id. at 4–5.
Appellant argues that Farrington fails to teach, and indeed teaches
away from, two limitations of claim 1: 1) a cathode sealing section that is
formed without a sealing projection and/or is substantially flat; and 2) the
Appeal 2021-000162
Application 16/077,002

5
anode sealing projection has a first height greater than the rest of the anode
half-plate and the cathode sealing section has a second height greater than
the rest of the cathode half-plate. Id. at 11–12. Appellant notes that
Farrington teaches that the anode and cathode plates each have peripheral
projections and that it may be advantageous to limit the maximum height of
the projections to that of the other features on the plates. Id. at 12.
Appellant’s arguments are not persuasive of reversible error for the
following reasons. In response to Appellant’s arguments, although the
Examiner acknowledges Farrington teaches that each of the anode and
cathode half-plates has a projection, the Examiner finds that the portions of
the anode and cathode half-plates in direct contact with gaskets 7
correspond, respectively, to the anode and cathode sealing sections of claim
1, as shown in the annotated figure. Ans. 6. Referring to the above annotated
figure, the Examiner finds that anode sealing projection 10 has a first height
greater than the rest of anode half-plate 5, whereas the cathode sealing
section is substantially flat and has a second height greater than the rest of
cathode half-plate 6. Id. at 6–7. As the Examiner notes, claim 1 does not
limit or define the anode and cathode sealing sections other than to recite
that each surrounds the anode or cathode flow fields, respectively. Nor does
Appellant direct our attention to any evidence in the record limiting these
sealing sections in a manner contrary to the Examiner’s construction.4

4 In this regard, we note that claim 2 requires that the cathode sealing section
is formed without a sealing projection and/or is substantially flat over an
entire width of the cathode sealing section. Because dependent claims must
further limit the claim from which they depend (35 U.S.C. § 112(d)), claim 1
must be broader in scope than claim 2, with respect to this further limitation,
implying a broader scope for the sealing sections of claim 1.
Appeal 2021-000162
Application 16/077,002

6
Therefore, even though Farrington teaches that the cathode half-plate
includes projection 11, Appellant has not identified reversible error in the
Examiner’s finding that the top of projection 11 is the cathode sealing
section which surrounds the cathode flow field and is clearly shown to be
substantially flat as required by claim 1.
With regard to Farrington’s teaching that it may be advantageous to
limit the maximum height of the projections to that of the other features on
the plates, the Examiner correctly notes that a reference is not limited to its
preferred embodiments, but must be considered for all that it teaches and
reasonably suggests to one of ordinary skill in the art. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures
of the prior art, including unpreferred embodiments, must be considered.”
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art
reference’s disclosure is not limited to its examples).
Here, Farrington merely expresses a preference for a maximum height
of projections 10, 11 to be the same as other features on the plates. In other
words, Farrington recognizes that it may be advantageous to provide such a
maximum height to these projections, but also recognizes the possibility that
the maximum height of the projections may extend higher than the other
features on the plates. Such a preference is not a teaching away. DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)) (“A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.”). Appellant
Appeal 2021-000162
Application 16/077,002

7
does not dispute or otherwise address the Examiner’s position that
Farrington’s teaching of a preference for maximum projection heights being
the same as other plate features suggests maximum projection heights
greater than other plate features, albeit as non-preferred embodiments.
Therefore, Appellant has not identified reversible error in the Examiner’s
finding that it would have been obvious to provide Farrington’s projections
with heights greater than other features on the half-plates.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1, 2, 4, and 7–10 over Farrington.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1, 2,
4, and 7–10 under 35 U.S.C. § 103 as unpatentable over Farrington is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7–10 103 Farrington 1, 2, 4, 7–10

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