Ex Parte Zhong et alDownload PDFPatent Trial and Appeal BoardApr 22, 201511259391 (P.T.A.B. Apr. 22, 2015) Copy Citation 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. 11/259,391 10/26/2005 Feng Zhong GP-307164 3233 104102 7590 04/22/2015 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 04/22/2015 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 FENG ZHONG, RICHARD H. BLUNK, and DANIEL J. LISI ____________ Appeal 2013-007420 Application 11/259,391 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, JEFFREY W. ABRAHAM, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 2 and 23–31 under 35 U.S.C. § 103(a) as unpatentable over Vyas et al. (US 2006/0216571 A1, published Sept. 28, 2006, filed Mar. 24, 2005, “Vyas”) in view of Ito et al. (EP 0 341 843 A2, published Nov. 15, 1 According to Appellants, the Real Party in Interest is General Motors LLC. App. Br. 3. Appeal 2013-007420 Application 11/259,391 2 1989, “EP 843”). Ans. 2–3. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The claimed subject matter relates to proton exchange membrane fuel cells, and more specifically, a method of making a bipolar plate of a fuel cell using a mask. App. Br. 14, 15 (claims 23, 27); Spec. Title, ¶¶ 5, 14. Claims 23 and 27 are representative of the subject matter on appeal and are reproduced below: 23. A process comprising: providing a bipolar plate having an upper surface that defines lands and channels; depositing a photoresist material over the upper surface of the bipolar plate so that the photoresist material rests on the lands; positioning a reticle that includes light transmitting portions and light blocking portions over the photoresist material; 2 Claim 31 appears to have been inadvertently omitted from the Examiner’s statement of rejection in the Answer. The Appeal Brief identifies the pending, rejected, and appealed claims as 2 and 23–31, App. Br. 1, 3, 5, 8, 10, 13, 14–16, and states that dependent claims 2, 24–26, and 28–31 stand or fall with their respective independent claims, id. at 5, 13. Claim 31 was added by amendment on June 8, 2011, and included in the lists of pending and rejected claims in a July 22, 2011 Non-Final Action (Form PTOL-326) and a January 9, 2012 Final Action (Form PTOL-326), but was omitted from the statements of rejection in those Actions and was also omitted from the lists of pending and rejected claims and the statement of rejection in an August 13, 2012 Non-Final Action from which the present appeal is taken. In none of these Actions is there any indication that claim 31 is allowed. Nor does the Examiner’s Answer contradict the indication in the Appeal Brief that claim 31 is also on appeal and stands or falls with claim 23. Appeal 2013-007420 Application 11/259,391 3 transmitting energy through the rectile 3 so that the energy that passes through the light transmitting portions renders the photoresist material underneath the light transmitting portions either easily removable or not removable by a developer; removing the photoresist material under the light transmitting portions or the light blocking portions of the reticle with the developer, depending on whether the energy passed through the light transmitting portions renders the photoresist material underneath the light transmitting portions easily removable or not removable by the developer, to form a plurality of remaining portions of the photoresist material covering the lands and leaving the upper surface of the bipolar plate exposed in the channels; depositing a hydrophilic coating over the plurality of remaining portions of the photoresist material on the lands and over the upper surface of the bipolar plate in the channels; curing the hydrophilic coating; and removing the plurality of remaining portions of the photoresist material to provide the upper surface of the bipolar plate with the hydrophilic coating only in the channels. 27. A process comprising: providing a metal substrate having an upper surface; depositing a photoresist material over the upper surface of the metal substrate; positioning a reticle that includes light transmitting portions and light blocking portions over the photoresist material; transmitting energy through the reticle so that the energy that passes through the light transmitting portions renders the photoresist material underneath the light transmitting portions either easily removable or not removable by a developer; 3 Appellants acknowledge there is a typographical error in claim 23, and “rectile” should be “reticle.” App. Br. 4. Appeal 2013-007420 Application 11/259,391 4 removing the photoresist material under the light transmitting portions or the light blocking portions of the reticle with the developer, depending on whether the energy passed through the light transmitting portions renders the photoresist material underneath the light transmitting portions easily removable or not removable by the developer, to form a plurality of remaining portions of the photoresist material that define a plurality of exposed portions of the upper surface of the metal substrate; flowing a hydrophilic coating between the plurality of remaining portions of the photoresist material and over the plurality of exposed portions of the upper surface of the metal substrate; curing the hydrophilic coating; removing the plurality of remaining portions of the photoresist material; and forming the metal substrate into a bipolar plate so that the upper surface defines lands and channels and the hydrophilic coating covers only the upper surface in the channels. App. Br. 14, 15. ANALYSIS Appellants’ arguments are directed to independent claims 23 and 27 only. No arguments are presented concerning the dependent claims. As acknowledged by Appellants, the dependent claims stand or fall with the parent independent claims, App. Br. 5, and we therefore confine our discussion to the independent claims. The Examiner finds that Vyas discloses a hydrophilic metal oxide coating applied to the channels and not on the lands of a bipolar plate for a Proton Exchange Membrane (PEM) fuel cell, where the coated bipolar plate is formed by removing the coating on the lands. Ans. 2 (citing Vyas Appeal 2013-007420 Application 11/259,391 5 Abstract, Fig. 3). The Examiner finds that, although Vyas does not disclose using a photolithographic process for forming the patterned hydrophilic coating, EP 843 discloses forming a patterned conductor on a substrate by applying a photoresist, patterning the photoresist using a mask, applying a conductor layer, and then removing the photoresist and conductor layer on the photoresist, to leave a patterned conductor. Id. at 2–3 (citing EP 843 Abstract, Figs. 1–4). The Examiner concludes that it would have been obvious to have modified the process disclosed by Vyas to utilize a photomask/reticle to form the hydrophilic coating only in the channels, as evidenced by EP 843, with the expectation of achieving similar success in forming a patterned coating, as well as eliminating the potentially harmful removal/etching step necessary to expose the lands, as taught in Vyas. Id. at 3. Appellants argue that the combination of Vyas and EP 843 does not result in the claimed subject matter and that the references are not combinable under the Examiner’s reasoning. App. Br. 5–13; Reply Br. 4–5. Upon consideration of the evidence presented in this Appeal and each of Appellants’ arguments, we are not persuaded that Appellants identify reversible error, and we determine that a preponderance of evidence supports the Examiner’s conclusion that the appealed claims are unpatentable over the applied prior art. The basis for this conclusion and the reasons Appellants’ arguments fail to reveal error are well expressed by the Examiner in the Answer, which we adopt as our own. The following comments are added for emphasis. Appeal 2013-007420 Application 11/259,391 6 Appellants concede that Vyas teaches depositing a metal oxide layer over the surface of a bipolar plate and removing the metal oxide layer from the lands, but argue that Vyas does not teach the depositing step of claim 23 or the flowing step of claim 27. App. Br. 8; Reply Br. 4. The Examiner, however, relies on a combination of Vyas and EP 843 to teach the process of claims 23 and 27. Ans. 2–4. Appellants’ argument does not address the combined teachings of Vyas and EP 843 and is therefore not persuasive to show error in the Examiner’s analysis. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Next, Appellants argue that EP 843 is directed to a semiconductor manufacturing process and does not suggest that the disclosed method should be used for making a fuel cell bipolar plate and therefore one of ordinary skill in the art would not have looked to EP 843 for a solution to a problem associated with selectively providing a hydrophilic coating in specific portions of a bipolar plate. App. Br. 9, 11, 17 (Evidence Appendix); Reply Br. 4. We agree with the Examiner that EP 843 is analogous art under the two-part analysis set forth in In re Wood. Ans. 4; In re Wood, 202 USPQ 171, 174 (CCPA 1979) (“First, we decide if the reference is within the field of the inventor’s endeavor. If it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved.”) According to the Examiner, The second of these test[s] is clearly met by the combination of art as the “particular problem” is forming a “patterned coating” in channels and not on the lands of the bipolar plate. The Vyas Appeal 2013-007420 Application 11/259,391 7 et al. (2006/0216571) reference is concerned with forming a patterned coating only in certain areas and not in other areas and does so by either applying the coating in a pattern (Fig. 2) or applying the coating and removing the areas where the coating is not desired by polishing or grinding (Fig. 3). EP 0341843 is concerned also with forming a patterned coating but does so by using a photoresist, exposing/developing the photoresist, removing undesired portions of the photoresist, coating over the remaining photoresist and areas without photoresist and removing the remaining photoresist along with coating thereon to form a desired pattern coating. Ans. 4. The Examiner’s analysis demonstrates that EP 843 is analogous art and articulates a reason why one of ordinary skill in the art of making fuel cell bipolar plates would have looked to EP 843 for teaching a process that could be used to form a hydrophilic coating only in the channels and not on the lands of a bipolar plate. Simply put, EP 843 addresses the problem of forming a patterned coating on a substrate and is therefore reasonably pertinent to the problem of forming a patterned coating on a bipolar plate. EP 843 Abstract, Figs. 1–4, 2:40–49; see also Vyas ¶ 30 (metal oxide layer can be removed from the lands “by any suitable process”). Finally, Appellants argue that the Examiner’s proposed modification of the referenced art would not eliminate the removal steps necessary to expose the lands of a bipolar plate as disclosed in Vyas. App. Br. 10; Reply Br. 5. That argument misstates the Examiner’s findings and is not persuasive to identify error in the Examiner’s finding of a motivation or reason to combine the prior art teachings. The Examiner does not find that the proposed modification would eliminate the removal step altogether. Instead, the Examiner instead finds that the removal step would be accomplished by removing the remaining photoresist along with a coating Appeal 2013-007420 Application 11/259,391 8 on the photoresist, as taught by EP 843, Ans. 3, 4, instead of by polishing or grinding, as taught by Vyas. See Vyas ¶ 30. Appellants do not dispute the Examiner’s finding that the use of a photoresist and removing the photoresist is less harmful/damaging to the substrate than using a polishing/grinding step. Ans. 4. That undisputed finding, together with the remainder of the Examiner’s findings, is sufficient to demonstrate a motivation or reason to combine EP 843’s teaching of a process for forming a patterned coating using a photoresist with Vyas’s teaching of a patterned coating on a bipolar plate. Accordingly, on this record, we are not persuaded that Appellants’ arguments and evidence are sufficient to outweigh the evidence of obviousness relied upon by the Examiner. CONCLUSION OF LAW AND DECISION The rejection is affirmed. 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 sl Copy with citationCopy as parenthetical citation