Ex Parte Abd Elhamid et al

Board of Patent Appeals and Interferences

Jul 27, 2012

11463614 (B.P.A.I. Jul. 27, 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.
11/463,614 08/10/2006 Mahmoud H. Abd Elhamid GP-307538-GAPW-CHE 7232
65798 7590 07/27/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
COLEMAN, RYAN L
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
07/27/2012 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 MAHMOUD H. ABD ELHAMID,
YOUSSEF M. MIKHAIL, and RICHARD H. BLUNK
____________

Appeal 2011-005726
Application 11/463,614
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN,
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005726
Application 11/463,614

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to methods for recycling bipolar
plates. App. Br. 4-6. Claim 1 is illustrative:

1. A method for recycling a bipolar plate including a
titanium or titanium oxide layer and a conductive layer
deposited on the titanium or titanium oxide layer, said method
comprising:

soaking the bipolar plate in a container including an acid
solution that dissolves the titanium or titanium oxide layer;

skimming conductive material from the conductive layer
that is floating on the acid solution to remove it from the
container after the titanium or titanium oxide layer has
dissolved;

heating the acid solution to evaporate the acid solution;
and

removing titanium oxide from the container after the acid
solution has evaporated.

The Examiner relied on the following references in rejecting the
appealed subject matter:

Zirngibl (Kappey)1 US 3,236,596 February 22, 1966
Entwisle US 3,761,313 September 25, 1973
DePablo US 4,132,569 January 2, 1979

1 The Examiner and Appellants refer to this reference as Kappey, the co-
inventor of the subject matter of US Patent No. 3,236,596. We also refer to
this reference as Kappey throughout our discussion to avoid any confusion.
Appeal 2011-005726
Application 11/463,614

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Unger US 4,584,095 April 22, 1986
Eisman US 5,133,843 July 28, 1992
May US 2001/0021470 A1 September 13, 2001
Hayfield EP 0 052 986 A1 June 2, 1982

Appellants request review of the following rejections (App. Br. 6)2
from the Examiner’s final office action:
1. Claims 1, 3-11, 14-17, 19 and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over May, Hayfield, Entwisle and Kappey.

2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over May, Hayfield, Eisman, Kappey and DePablo.

OPINION
The dispositive issue for this appeal is: Did the Examiner err in
determining that the combination of May, Hayfield, Entwisle and Kappey
would have led one skilled in the art to a method of recycling bipolar plates
including a titanium or titanium oxide layer and a conductive layer by
soaking a bipolar plate in an acid solution to dissolve the titanium or
titanium oxide layer, skimming the conductive material from the acid
solution and recovering the titanium oxide after evaporating the acid
solution as required by the subject matter of independent claims 1, 11 and
17?3, 4

2 Appellants also appealed the rejection of claims 1-20 under 35 U.S.C.
§ 112, second paragraph. App. Br. 6. However, this rejection was
withdrawn by the Examiner (Ans. 3) and is not before us for consideration.
3 We will limit our discussion to independent claim 1.
4 A discussion of the Eisman and DePablo references applied to a separate
rejection of dependent claim 12 is unnecessary for disposition of the present
appeal. The Examiner relied upon these references to describe a different
element of independent claim 12 not related to the dispositive issue.
Appeal 2011-005726
Application 11/463,614

4
After thorough review of the respective positions provided by
Appellants and the Examiner, we REVERSE for the reasons presented by
the Appellants and add the following.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appellants argued that none of the prior art references teach collecting
the conductive material by skimming before evaporating the acid solution.
App. Br. 11. Appellants also argued that the Examiner inappropriately
relied on hindsight in combining the references (Reply Br. 2) and that a
person of ordinary skill would not have been able to combine the teachings
of the references and arrive to the claimed invention as reasoned by the
Examiner (App. Br. 12). Appellants additionally argued that the knowledge
of the value of platinum metals does not render obvious Appellants’ claimed
method. Id.
We agree with Appellants that the Examiner has not provided an
adequate reasoning of how the combination of May, Hayfield, Entwisle and
Kappey would have led one skilled in the art to a method of recycling a
bipolar plate including a titanium or titanium oxide layer and a conductive
layer as required by the subject matter of independent claim 1. Id. at 11, 13.
While the Examiner in his response points to Unger as teaching that valuable
solid material floating on the surface of a solution can be recovered from the
Appeal 2011-005726
Application 11/463,614

5
solution by skimming the solid material from the surface (Ans. 15), this
document has not been included in the statement of the rejection. In support
of an obviousness rejection, it is inappropriate for the Examiner to rely on
references not included in the statement of rejection to support position
when responding to Appellant’s arguments. See In re Hoch, 428 F.2d 1341,
1342 n. 3 (“Where a reference is relied on to support a rejection, whether or
not in a ‘minor capacity,’ there would appear to be no excuse for not
positively including the reference in the statement of the rejection.”).
Moreover, the Examiner has not directed us to any disclosure in Entwisle to
support the finding that Entwisle would have lead one skilled in the art to
recover the conductive material by skimming. Ans. 6. As there is no proper
rejection before us relying on Unger, we do not consider the evidence
provided by this patent with regard to the question of patentability in this
case.
The Examiner also reasoned that it would have been obvious to
recycle the titanium/titanium oxide and the conductive layer because of their
value (Id. at 5-6, 14-15). The Examiner’s reasoning is speculative and
unsupported by an adequate explanation. As correctly noted by Appellants
(App. Br. 13), the Examiner has not provided adequate analysis to support a
conclusion that one skilled in the art would have found it obvious to modify
the conductive material stripping/recovery process of Entwisle to
incorporate the titanium oxide stripping/recovery process of Kappey for the
purpose of recycling the bipolar plate of May/Hayfield. The Examiner has
not adequately explained why one skilled in the art would have combined
the disclosure of Entwisle, which seeks to expressly minimize the loss of
titanium from an electrode support while removing the conductive layer
Appeal 2011-005726
Application 11/463,614

6
(Entwisle, col. 1, ll. 29-31), with the disclosure of Kappey, which is directed
to the decomposition of minerals containing titanium oxide (Kappey, col. 1,
ll. 47-54).
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
under 35 U.S.C. § 103(a). The Examiner additionally relied on the
references of Eisman and DePablo in a separate rejection to meet respective
limitations of claim 12. We agree with Appellants that Eisman and DePablo
fail to make up for the above-noted deficiencies of May, Hayfield, Entwisle
and Kappey discussed above. App. Br. 17. Accordingly, we reverse this
rejection as well for the reasons given above.
ORDER
The rejection of claims 1, 3-11, 14-17, 19 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over May, Hayfield, Entwisle and Kappey is
reversed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over May, Hayfield, Eisman, Kappey and DePablo is reversed.

REVERSED
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