Ex Parte Beutel et al

Patent Trial and Appeal Board

Oct 25, 2016

11972817 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111972,817 0111112008 Matthew J. Beutel
104102 7590 10/26/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GP-308213-FCAR-CHE 7421
EXAMINER
USYATINSKY, ALEXANDER
ART UNIT PAPER NUMBER
1726
MAILDATE DELIVERY MODE
10/26/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. BEUTEL and TIMOTHY J. FULLER
Appeal2015-002032
Application 11/972,817
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5-11, 13-15, 18-24, and 26-28, 41, and 42. 3
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 We cite to the Specification ("Spec.") filed Jan. 11, 2008; Final Office
Action ("Final Act.") mailed Jan. 28, 2014; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify General Motors LLC as the real party in interest. App.
Br. 4.
3 Claims 4, 16, 17, and 29-40 were withdrawn from consideration and are
not before us.
Appeal2015-002032
Application 11/972,817
BACKGROlH~D
The subject matter involved in this appeal relates to a method for
forming a membrane electrode assembly, such as a proton exchange
membrane fuel cell. Spec. 1. Claims 1 and 18 are illustrative and
reproduced from the Claims Appendix of the Appeal Brief as follows:
1. A method comprising:
providing a first catalyst coated gas diffusion media layer
comprising a first catalyst coating over a gas diffusion media
layer; depositing a wet first proton exchange membrane layer
over the first catalyst coated gas diffusion media layer, the
proton exchange membrane layer comprising an ionomer and a
support comprising a sheet; and drying said first proton
exchange membrane to form a dried first proton exchange
membrane layer.
18. A method comprising:
providing a first catalyst coated gas diffusion media layer
and a second catalyst coated gas diffusion media layer;
depositing a wet first proton exchange membrane layer
over the first catalyst coated gas diffusion media layer and
drying the first proton exchange membrane layer to form a
first proton exchange membrane layer;
depositing a wet second proton exchange membrane
layer over the second catalyst coated gas diffusion media layer
and drying the second proton exchange membrane layer
to form a second proton exchange membrane layer; and
hot pressing the first proton exchange membrane layer
formed over the first catalyst coated gas diffusion media layer
and the second proton exchange membrane layer formed over
the second catalyst coated gas diffusion media layer together.
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Appeal2015-002032
Application 11/972,817
REJECTIONS
The Examiner maintained the following grounds of rejection: 4
I. Claims 1, 2, 9-11, 13-15, and 41 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kakutani, 5 Cavalca, 6 and Gascoyne. 7
II. Claims 3 and 5-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kakutani, Cavalca, Gascoyne, and Steinbach. 8
III. Claims 8 and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kakutani, Cavalca, Gascoyne, and Yan. 9
IV. Claims 18-21, 26, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kakutani and Steinbach.
V. Claims 22-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kakutani, Steinbach and Cavalca.
VI. Claim 27 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kakutani, Steinbach, and Yan.
DISCUSSION
Rejection I
With regard to Rejection I, Appellants argue the rejected claims as a
group. App. Br. 19-35; Reply Br. 5-24. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 1 as representative and decide the
propriety of Rejection I based on the representative claim alone.
4 Final Act. 2-15; Ans. 3-16.
5 US 2005/0019649 Al, published Jan. 27, 2005 ("Kakutani").
6 US 2004/0214064 Al, published Oct. 28, 2004 ("Cavalca").
7 US 2005/0233067 Al, published Oct. 20, 2005 ("Gascoyne").
8 US 2008/0143061 Al, published Jun. 19, 2008 ("Steinbach").
9 US 2005/0164072 Al, published Jul. 28, 2005 ("Yan").
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Appeal2015-002032
Application 11/972,817
The Examiner found that Kakutani discloses a method compnsmg
depositing a wet ion-exchange film over a catalyst-coated diffusion layer,
Final Act. 4, followed by drying, id. at 7. These findings are supported by a
preponderance of the evidence. Kakutani, at paragraph 27, provides:
Accordingly, the present invention provides a fuel cell electrode
manufacturing method including: a step of applying a solution
for making a first electrode of positive and negative electrodes
of a fuel cell to a sheet to form a first electrode layer; a step of,
before this electrode layer has dried, applying a solution for
making an ion exchange film to this first electrode layer to form
an ion exchange film; a step of, before this ion exchange film
has dried, applying a solution for making the second electrode
to the ion exchange film to form a second electrode layer; and a
step of hardening the first electrode layer, the second electrode
layer and the ion exchange film by drying them.
The Examiner found that Kakutani does not include an ion-exchange
film support sheet in the above-noted method, but discloses that use of such
a sheet was k_nown in the art Final Act 4 (citing Kakutani at i-f 29). The
Examiner further found that one of ordinary skill in the art would have had
reason to include a sheet in Kakutani's ion-exchange film in light of
Cavalca, which also discloses a method for forming a fuel cell and teaches
that the ion-exchange film may advantageously be formed by impregnating
the ion-exchange solution into a support sheet of expanded
polytetrafluoroethylene. Id. at 4--5 (citing Cavalca at i-f 166).
Appellants argue that Kakutani teaches away from use of a sheet in
connection with forming the ion-exchange film. App. Br. 19--29.
Particularly, Appellants contend that "Kakutani specifically teaches that in
[the] prior art, a sheet was used for the ion exchange film, which lessened
productivity and efficiency because the sheet needed to have handlability
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Appeal2015-002032
Application 11/972,817
and this made it difficult to make the electrode structure and resulting fuel
cell thin and small." App. Br. 23. Appellants additionally contend that
Kakutani teaches that use of a sheet "allowed for lessened efficiency through
defective intimacy between the layers, which decreased performance." Id.
In support of these contentions, Appellants point us to paragraphs 7-10 and
28 ofKakutani. Id. at 51.
We find Appellants' arguments unpersuasive of reversible error.
Paragraph 28 of Kakutani makes no mention of a sheet. In their Reply Brief,
Appellants additionally point to paragraph 29 of Kakutani. Reply Br. 13.
There, Kakutani states that "when a sheet is used for the ion exchange film,
it is necessary for the ion exchange film to be made somewhat thick, to keep
the handlability of the sheet-form ion exchange film good." Kakutani at
i-f 29. However, claim 1 neither requires nor excludes an ion-exchange film
based on thickness. Nor do Appellants present persuasive evidence or
technical reasoning to show that one of ordinary skill would have viewed
Kakutani's above-quoted statement as teaching away from the use of a
support sheet where thickness of the device were not a concern.
Paragraphs 7-10 of Kakutani generally relate to a known method in
which an ion exchange film "in the form of a sheet" was prepared before
being positioned and compressed between already hardened electrode layers.
In connection with that known process, Kakutani explains that because the
various layers are already hardened before they are assembled and
compressed, "there is a risk of areas of defective intimacy arising at the
interfaces of the layers." Id. at i-f 7. To address the noted risk of interfacial
defects, Kakutani teaches that by applying the electrode and ion exchange
layers in an undried state, mixing occurs at their interfaces. Id. at i-f 28. See
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Application 11/972,817
also id. at i1 24 ("The present inventors discovered that the cause of areas of
defective intimacy arising between the layers is that when a next solution is
applied after a previously applied film has hardened, this solution does not
permeate the previously applied film, and defective intimacy arises as a
result."). Thus, while we agree with Appellants' characterization of
Kakutani as teaching that providing electrode and ion-exchange layers in an
undried state "provides advantages over the prior art method of combining
solid layers (including a solid ion exchange membrane sheet)," App. Br. 38,
we find no persuasive support in Kakutani for Appellants' contention that
Kakutani teaches away from the use of an impregnated support sheet, such
as that disclosed in Cavalca, e.g., where the impregnated support is applied
in an undried state or where one were willing to forego the risk of interfacial
defects in lieu of obtaining the advantages provided by the support material.
Appellants' additional arguments that the use of such a support sheet
would destroy the purpose or change the principle of operation of Kakutani,
or would constitute a regression rather than an improvement, are premised
on the same contention that Kakutani teaches away from use of a sheet.
App. Br. 30-35. These arguments are unpersuasive for the reasons set forth
above.
Accordingly, we sustain Rejection I.
Rejections II and III
Appellants do not present any argument particularly addressing either
Rejection II or III, other than an implicit reliance on the arguments
addressed above in connection with Rejection I. Accordingly, we also
sustain Rejections II and III.
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Application 11/972,817
Rejections IV-VI
Rejection IV addresses independent claim 18 along with claims
depending therefrom. Claim 18 requires, inter alia, a step of hot pressing
dried first and second proton exchange membrane layers. See App. Br. 61-
62 (claim 18). In support of Rejection IV, the Examiner principally relied
on Kakutani, and found that Kakutani "does not expressly disclose the steps
of hot-pressing [recited in claim 18], the interposing and positioning of the
subgasket [recited in claims 19, 20] and material of the subgasket [recited in
claim 21 ]." Final Act. 11. Those features, the Examiner found, would have
been obvious in light of Steinbach's teaching that it was known to hot press
a gasket material between a proton exchange membrane layer and a catalyst
coated gas diffusion layer. Final Act. 11.
Appellants argue that Kakutani's method involves applying each of
the first and second electrode layers and the ion exchange layer "in an
undried state." App. Br. 38. Appellants further argue that Kakutani teaches
that only after these undried layers are deposited, they then are dried
together, arguably "without a load being applied." Id. at 38, 52 (citing
Kakutani at i-f 31 ). The Examiner's reasoning in support of Rejection IV as
applied to claim 26 is consistent with Appellants' characterization of the
drying sequence in Kakutani. See Final Act. 11 ("With regard to claim 26,
Kakutani discloses the steps wherein before a solution for making one of the
positive or negative electrodes has dried, a solution for making the ion
exchange film is applied to it ... and then a solution for making the other
electrode is applied while the solution for making the ion exchange film is
not yet dry.") (Emphasis added). Thus, irrespective of whether a pressing
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Application 11/972,817
load is applied, we find that the Examiner erred in rejecting claim 18 based
on a process in which the electrode and ion exchange layers are combined in
an undried state, whereas claim 18 requires assembly of first and second ion
exchange layers each in a dried state.
Because the Examiner's reasoning does not address this distinction
between the applied prior art and claim 18, we do not sustain Rejection IV.
Because neither of Rejections V and VI addresses this aspect of the rejected
claims, these rejections also are not sustained.
DECISION
The Examiner's decision rejecting claims 1-3, 5-11, 13-15, 41, and
42 is affirmed.
The Examiner's decision rejecting claims 18-24 and 26-28 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED-IN-PART
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