Ex Parte Andreas-Schott et al

Board of Patent Appeals and Interferences

May 23, 2012

11434386 (B.P.A.I. May. 23, 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.
11/434,386 05/15/2006 Benno Andreas-Schott GP-307191 4028
65798 7590 05/23/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
RYAN, PATRICK J
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
05/23/2012 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 BENNO ANDREAS-SCHOTT, ROGER M.
BRISBANE, and MAHMOUD H. ABD ELHAMID
____________________

Appeal 2010-007941
Application 11/434,386
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
GEORGE C. BEST, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to a fuel cell stack (Spec. ¶ [0001]).
According to the Specification, proton exchange membrane fuel cells are a
popular fuel cell for vehicles (Spec. ¶ [0003]). These fuel cells are typically
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Application 11/434,386

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combined in a fuel cell stack to generate the desired power (id.). Such
stacks include unipolar plates at both ends of the fuel cell stack and a
terminal plate positioned at an opposite side of the unipolar plate from the
stack (Spec. ¶ [0007]). However, there is a leakage problem when
composite unipolar plates are used (id.). Cooling fluid leaks from channels
within the unipolar plate and corrodes the coating on the terminal plate (id.).
Appellants solve this problem by inserting a non-permeable shim plate made
of non-corrosive material between the unipolar plate of the fuel cell stack
and the terminal plate (Spec. ¶ [0008]). The shim plate prevents the cooling
fluid from contacting the terminal plate (id.). Claim 1 is illustrative of the
claimed invention:
1. A fuel cell stack comprising:
a unipolar plate positioned at both ends of the stack;
a non-permeable shim plate positioned adjacent to each
unipolar plate; and
a terminal plate positioned adjacent to each shim plate
and opposite to the unipolar plate, said non-permeable shim
plate being sealed to the unipolar plate so that cooling fluid that
may permeate through the unipolar plate is trapped between the
unipolar plate and the shim plate.
(Claims App at Br. 31.)
The Examiner maintains, and Appellants appeal, the following
rejections:
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Application 11/434,386

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1. The rejection of claims 1, 3, 4, and 8 under 35 U.S.C. §§ 102(a)
and 102(e) as anticipated by Raiser1 as evidenced by Appellants’ Admission
of Prior Art (AAPA2);
2. The rejection of claims 1, 3, 4, 8, 10, and 12 under 35 U.S.C.
§103(a) as obvious over AAPA in view of Raiser;
3. The rejection of claim 2 under 35 U.S.C. §103(a) as obvious over
AAPA and Raiser and further in view of Huang3;
4. The rejection of claims 5, 6, 9, and 11 under 35 U.S.C. § 103(a) as
obvious over AAPA and Raiser and further in view of May4;
5. The rejection of claim 7 under 35 U.S.C. § 103(a) as obvious over
AAPA, Raiser, and May, and further in view of Vyas5;
6. The rejection of claims 13, 14, 16, and 17 under 35 U.S.C. § 103(a)
as obvious over AAPA in view of Huang, Raiser, and May;
7. The rejection of claim 15 under 35 U.S.C. § 103(a) as obvious over
AAPA in view of Huang, Raiser, May, and further in view of Vyas;
8. The rejection of claim 18 under 35 U.S.C. § 103(a) as obvious over
AAPA in view of Huang and Raiser;
9. The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as
obvious over AAPA in view of Huang, Raiser and May;

1 Raiser et al., US 2005/0260479 A1, pub. Nov. 24, 2005.
2 Spec. ¶ [0007].
3 Huang, J. “Development of fuel cell bipolar plates from graphite filled wet-
lay thermoplastic composite materials” 150 J. Power Sources, 110-119
(2005).
4 May et al., US 6,790,554 B2, patented Sep. 14, 2004.
5 Vyas et al., US 2005/0100771 A1, pub. May 12, 2005.
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Application 11/434,386

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10. The rejection of claims 21, 22, and 24 under 35 U.S.C. §103(a) as
obvious over AAPA in view of Huang, Raiser, and May; and
11. The rejection of claim 23 under 35 U.S.C. § 103(a) as obvious
over AAPA in view of Huang, Raiser, and May, and further in view of Vyas.
Appellants address each rejection and some of the claims for each
rejection under separate headings. We have considered each grouping
separately. In so far as the arguments raise separate issues, we address them
separately.
OPINION
A. REJECTIONS 1 AND 2
The Examiner rejects claims 1, 3, 4, and 8 under 35 U.S.C. §§ 102(a)
and 102(e) as anticipated by Raiser as evidenced by Appellants’ Admission
of Prior Art (AAPA), and rejects claims 1, 3, 4, 8, 10, and 12 under 35
U.S.C. §103(a) as obvious over AAPA in view of Raiser.
With respect to the rejections over AAPA and Raiser, Appellants
argue the claims as a group and then discuss the dependent claims under a
separate heading. We select claim 1 as representative for the general
arguments for each of the two rejections (i.e., 1 and 2). While we discuss
the two rejections together, we have considered each separately.
1. CLAIM 1
For both rejections, the Examiner relies upon Raiser as teaching a
non-permeable shim plate (corrosion resistant member 48) between a fuel
cell stack 24 and a terminal plate 40 (Ans. 3 and 7; see also Raiser, Fig. 3A
and 3B). Raiser is silent with regard to the structure of the fuel cell stack 24.
The Examiner relies upon the Appellants’ Admitted Prior Art (AAPA) as
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Application 11/434,386

5
showing that it was known in the art that the plates at the ends of a fuel cell
stack are unipolar plates (Ans. 5 and 6, citing Spec. ¶ [0007])). On this
basis, the Examiner finds that Raiser anticipates the claimed fuel cell stack
apparatus (id.), or alternatively, based upon the combination of AAPA and
Raiser, it would have been obvious to one of ordinary skill in the art to
combine the AAPA fuel cell stack having unipolar plates on the ends with
the structure of Raiser having the corrosion resistant shim plate between the
fuel cell stack and terminal plate to prevent fluid from contacting and
corroding the terminal plate as taught by Raiser (Ans. 7).
With respect to the anticipation rejection, Appellants contend that
Raiser does not discuss a unipolar plate and does not expressly or inherently
disclose a non-permeable shim plate that is “sealed to the unipolar plate so
that cooling fluid that may permeate through the unipolar plate is trapped
between the unipolar plate and the shim plate” as required by claim 1
(Br.10-13; Reply Br. 2-4). According to Appellants, even if it was well
known that fuel cell stacks contain unipolar plates, Raiser does not expressly
or inherently disclose the claimed invention (Br. 12).
With respect to the obviousness rejection, Appellants argue that
nothing in Raiser teaches or suggests the non-permeability of the shim plate,
and nothing teaches or suggests that Raiser’s shim plate is sealed to a
unipolar plate to perform the function of trapping cooling fluid as recited in
claim 1 (Br. 14-16; Reply Br. 4).
Raiser describes a fuel cell assembly 20 including a plurality of fuel
cells 22 arranged in a stack 24 (Raiser, ¶ [0014]; Figs. 1 and 3). Such fuel
cell assemblies include a terminal plate (40) that conducts electrical current
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Application 11/434,386

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discussion of Figure 2 that Raiser uses the fuel cell stack structure known in
the prior art (id.).
Appellants’ Specification provides evidence that the known fuel cell
stack structure included unipolar plates at both ends of the stack (Spec. ¶
[0007]).
The first issue is: Does the evidence as whole support (1) the
Examiner’s finding that Raiser, as evidenced by the AAPA, describes a fuel
cell stack with unipolar end plates or (2) the Examiner’s conclusion that it
would have been obvious to one of ordinary skill in the art to use the known
stack with unipolar end plates in the assembly of Raiser?
With regard to that question, Appellants’ own admissions establish
that prior art fuel cell stacks contained unipolar plates on each end of the
stack (AAPA at Spec. ¶ [0007]). Raiser describes including “a fuel cell
stack.” The Examiner has cited the AAPA to explain the meaning of “fuel
cell stack” as that terminology was used in Raiser. That is a legitimate use
of extrinsic evidence in an anticipation rejection. See In re Baxter Travenol
Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (“extrinsic evidence may be
considered when it is used to explain, but not expand, the meaning of a
reference.”). The evidence supports a finding that “fuel cell stack” as used
by Raiser would have been understood to be referring to the known type of
fuel cell stack having unipolar plates on each end.
It is thus reasonable to conclude that Raiser described, within the
meaning of § 102, a fuel cell assembly with a corrosion resistant member
adjacent to the unipolar plate that would be on the end of the fuel cell stack.
The evidence further supports the Examiner’s conclusion that it would have
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Application 11/434,386

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been obvious to use the known fuel cell stack having unipolar end plates as
the fuel cell stack in Raiser’s fuel cell assembly such that the claimed plate
configuration would result. This would have been merely the use of a
known structure for its established function. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
The second issue is: Does the evidence support the Examiner’s
finding that Raiser’s corrosion resistant member 48 has the structure
required by the limitation “said non-permeable shim plate being sealed to the
unipolar plate so that cooling fluid that may permeate through the unipolar
plate is trapped between the unipolar plate and the shim plate” as recited in
claim 1?
As a first matter, we agree with the Examiner’s finding that stainless
steel, titanium, and graphite, i.e., the materials Raiser discloses for forming
the corrosion resistant member, are non-permeable materials. The corrosion
resistant member 48 serves to prevent fluid within the manifold 30 from
contacting the terminal plate 40. One of ordinary skill in the art would have,
therefore, formed the corrosion resistant member 48 of non-permeable
material to fulfill its barrier purpose.
As a second matter, the corrosion resistant member 48 is sealed to the
stack, and thus to the unipolar plate, by seal 46.
We are cognizant of the fact that the function described in Raiser for
the corrosion resistant member, i.e., preventing fluid within the manifold
from contacting the terminal plate, is somewhat different than the claimed
function of trapping cooling fluid that may permeate through the unipolar
plate. The question is whether this functional requirement of claim 1
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structurally distinguishes the fuel cell assembly of the claim from that
suggested by Raiser in combination with the AAPA. See In re Danly, 263
F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus must
distinguish from the prior art in terms of structure rather than function”);
In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“It is trite to state that
the patentability of apparatus claims must be shown in the structure claimed
and not merely upon a use, function, or result thereof.”).
Where there is reason to conclude that the structure of the prior art is
inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA
1981).
The corrosion resistant member 48 of Raiser is sealed to the
underlying fuel cell stack, i.e., to the unipolar plate that would be on the end
face of the stack as evidenced by AAPA or as obvious by the combination of
AAPA and Raiser. It is reasonable to conclude that the structure described
or rendered obvious by Raiser and AAPA would be capable of trapping any
coolant that might permeate through the unipolar plate as required by the
functional limitation of claim 1. The claim simply does not have sufficient
structural limitations to distinguish the claimed apparatus from the apparatus
of Raiser as evidenced by AAPA or the apparatus suggested by the
combination of AAPA and Raiser.
We sustain the rejection of claim 1 as anticipated by Raiser as
evidenced by AAPA and as obvious over AAPA in view of Raiser.
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2. CLAIMS 3 AND 4
Claim 3 requires that the shim plate is a stainless steel or stainless
steel alloy shim plate. Claim 4 requires that the shim plate is a titanium or
titanium alloy shim plate. We agree with the Examiner that Raiser’s
disclosure of forming the corrosion resistant member from stainless steel or
titanium suffices to render these claims anticipated or obvious (Ans. 5 and
7).
3. CLAIM 8
Claim 8 requires that the shim plate be “a sealed graphite shim plate.”
The Examiner finds that Raiser’s disclosure of forming the corrosion
resistant member of graphite and the disclosure of sealing by sealing
members 46 results in the claimed sealed graphite (Ans. 26).
Raiser discloses forming the corrosion resistant member from
graphite, but does not characterize that material as sealed graphite (Raiser, ¶
0018]). Appellants’ Specification discloses forming the shim plate of a
“sealed graphite material, such as Poco Graphite, available from the Poco
Corporation, that is both non-permeable and highly electrically conductive.”
(Spec. ¶ [0017].)6 Appellants’ Specification indicates that “sealed graphite”
is not merely any type of graphite.
To anticipate, a reference must “describe” within the meaning of
§ 102 what is claimed. We cannot say that the Examiner has provided
sufficient evidence or technical reasoning to establish that the “graphite”
disclosed in Raiser is the same as “sealed graphite” as that term is used by

6 We do not consider the argument and evidence cited in the Reply Brief at
page 4 discussing Grafoil®. Neither that evidence, nor the argument relying
upon it, was before the Examiner.
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Appellants. See, e.g., Atofina v. Great Lakes Chem. Corp., 441 F.3d 991,
999 (Fed. Cir. 2006) (“It is well established that the disclosure of a genus in
the prior art is not necessarily a disclosure of every species that is a member
of that genus.”).
The Examiner does not add any further rationale to support the
obviousness of selecting sealed graphite (Ans. 7 and 27). Therefore, we
cannot sustain the rejection of claim 8 as anticipated or the rejection of claim
8 as obvious.
In summary, we sustain the rejection of claims 1, 3, and 4 as
anticipated by Raiser as evidenced by the AAPA and the rejection of claims
1, 3, and 4 as obvious over the AAPA in view of Raiser. We also sustain the
rejection of claims 10 and 12 as obvious over the AAPA in view of Raiser.
Appellants rely upon the arguments advanced against claim 1 to overcome
the rejection of claims 10 and 12 (Br. 18). For the reasons presented above
with respect to claim 1, we do not find those arguments persuasive.
We do not sustain the rejection of claim 8 as either anticipated or
obvious.
B. REJECTION 3
The Examiner’s third rejection is a rejection of claim 2 under 35
U.S.C. § 103(a) as obvious over AAPA, Raiser, and Huang.
Appellants’ sole argument against the rejection of claim 2 is that
Huang fails to provide the teachings that Appellants argued were not
contained in AAPA and Raiser. For the reasons discussed above, we do not
find these arguments persuasive of error on the part of the Examiner.
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We sustain the rejection of claim 2 under 35 U.S.C. §103(a) as
obvious over AAPA, Raiser, and Huang.
C. REJECTIONS 4-7 AND 9-11
Rejections 4-7 and 9-11 rely upon May for evidence of obviousness
with respect to various coating, layer, and cladding limitations.
Claims 5-7 require that the shim plate of claim 1 include an outer
layer of an electrically conductive material (see claim 5). Claims 13-17 also
require the shim plate have an outer conductive layer (see claim 13) as do
claims 21-24 (see claim 21).
Claim 9 requires that the shim plate of claim 1 be cladded at the side
facing the terminal plate. Claim 20 similarly requires a cladded shim plate.
Claims 11 and 19 require a diffusion layer having an outer coating of
an electrically conductive material.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to include the coatings, layers, and cladding of the
claims based on the teachings of May (Ans. 10, 14, and 18). However, we
agree with Appellants that May’s teaching of coating bipolar plates with
electrocatalytically-active material that may also serve to impart corrosion
resistance, and coating fuel cell end plates to secure good conductivity fails
to provide an adequate reason or suggestion for coating the shim plate,
cladding the shim plate, or coating the diffusion layer for corrosion
resistance. The Examiner has not adequately explained why teachings with
regard to coating fuel cell stack plates would apply to shim plates or
diffusion layers.
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We do not sustain the rejections relying upon May for the teaching of
the claims coating, layer, and cladding, namely, the rejection of claims 5, 6,
9, and 11 over AAPA, Raiser, and May (Rejection 4); the rejection of claim
7 over those references further in view of Vyas (Rejection 5); the rejection
of claims 13, 14, 16, and 17 over AAPA, Huang, Raiser, and May (Rejection
6); the rejection of claim 15 over AAPA, Huang, Raiser, May, and Vyas
(Rejection 7); the rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as
obvious over AAPA in view of Huang, Raiser and May (Rejection 9); the
rejection of claims 21, 22, and 24 under 35 U.S.C. §103(a) as obvious over
AAPA in view of Huang, Raiser, and May (Rejection 10); nor the rejection
of claim 23 under 35 U.S.C. § 103(a) as obvious over AAPA in view of
Huang, Raiser, and May, and further in view of Vyas (Rejection 11).
D. REJECTION 8
The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as obvious
over AAPA in view of Huang and Raiser. Claim 18, like claim 8, requires a
sealed graphite shim plate. The Examiner finds that Raiser teaches a sealed
graphite shim plate (Ans. 17). However, Raiser only discloses graphite, not
sealed graphite. The Examiner has not cited any evidence, nor provided
technical reasoning, supporting a finding that Raiser’s disclosure of graphite
teaches or suggests using sealed graphite.
We do not sustain the rejection of claim 18 over AAPA, Huang, and
Raiser.
CONCLUSION
We sustain the rejection of claim 1, 3, and 4 as anticipated by Raiser
as evidenced by AAPA; the rejection of claims 1, 3, 4, 10, and 12 as obvious
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over AAPA in view of Raiser; and the rejection of claim 2 over Raiser,
AAPA, and Huang.
We do not sustain the Examiner’s rejection of claim 8 as anticipated
by Raiser as evidenced by AAPA; the rejection of claim 8 as obvious over
Raiser in view of AAPA; the rejection of claims 5, 6, 9, and 11 over AAPA,
Raiser, and May; the rejection of claim 7 over AAPA, Raiser, May, and
Vyas; the rejection of claims 13, 14, 16, and 17 over AAPA, Huang, Raiser,
and May; the rejection of claim 15 over AAPA, Huang, Raiser, May, and
Vyas; the rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as obvious
over AAPA in view of Huang, Raiser and May; the rejection of claims 21,
22, and 24 under 35 U.S.C. §103(a) as obvious over AAPA in view of
Huang, Raiser, and May; and the rejection of claim 23 under 35 U.S.C. §
103(a) as obvious over AAPA in view of Huang, Raiser, and May, and
further in view of Vyas.
DECISION
The Examiner’s decision is affirmed-in-part.
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)(1).

AFFIRMED-IN-PART
cam