Ex Parte Balogh et al

Board of Patent Appeals and Interferences

May 30, 2012

11938521 (B.P.A.I. May. 30, 2012)

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.
11/938,521 11/12/2007 Michael P. Balogh GP-307136-FCA-CHE 4148
65798 7590 05/31/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
05/31/2012 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 MICHAEL P. BALOGH and
FREDERICK A. HAYES
________________

Appeal 2011-001922
Application 11/938,521
Technology Center 1700
________________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 1 and 16 are illustrative:
1. A method for evaluating the composition of a membrane
electrode assembly (MEA) to differentiate elements in the MEA, said
method comprising:

treating the MEA with an unsaturated organic compound;
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Application 11/938,521

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treating the MEA with a staining material that reacts with the
unsaturated organic compound and causes it to be darkened;

filling pores in the MEA with a light material; and

viewing the MEA so as to differentiate the lighter filled pores from
the darker stained areas of the MEA.

16. A method for evaluating the composition of a membrane electrode
assembly (MEA) to differentiate elements in the MEA, said method
comprising:

staining carbon in the MEA to cause it to be darkened;

filling pores in the MEA with a light material; and

viewing the MEA so as to differentiate the lighter filled pores from
the stained areas of the MEA to determine the porosity of the MEA.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Yu 2007/0093561 A1 Apr. 26, 2007
Izuhara 2008/0075999 A1 Mar. 27, 2008

Gordon D. Cheever & Edward G. Bobalek, Adsorption of Some Organic
Surfactants on Rutile Surfaces, 3 Electron Microscope Studies No. 2, 89-94
(1964) (hereafter “Cheever”).

Appellants’ claimed invention is directed to a method for evaluating
the composition of a membrane electrode assembly (MEA) to differentiate
elements in the MEA, such as a membrane and electrodes. The method
entails treating the MEA with an unsaturated organic compound and then
with a staining material, for example, osmium tetroxide. Pores of the
membrane are filled with a light material, such as an epoxy, and then the
MEA is viewed by using, for example, a transmission electron microscope,
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Application 11/938,521

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to differentiate the lighter filled pores from the darker stained areas of the
MEA.
Appealed claims 1-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Izuhara in view of Yu and Cheever. Claims 16-20
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Izuhara
in view of Yu.1
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with Appellants that the
Examiner’s rejection of claims 1-15 under § 103 is not well founded.
However, we concur with the Examiner that the subject matter of claims 16-
20 would have been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the applied prior art. Our reasoning follows.
We consider first the Examiner’s § 103 rejection of claims 1 through
15. Izuhara, like Appellants, discloses a method for evaluating a
composition of a membrane for use in an MEA by treating the membrane
with a staining material, such as Appellants’ osmium tetroxide, that reacts
with an unsaturated organic double bond of the membrane which causes it to
be darkened. As acknowledged by the Examiner, Izuhara does not disclose
treating the membrane with an unsaturated organic compound, as presently
claimed. To remedy this deficiency, the Examiner cites Cheever’s
disclosure of staining a film of rutile TiO2 for electron microscopic
examination by treating the film with an unsaturated organic compound,
followed by staining with osmium tetroxide. The Examiner makes the
finding, unrebutted by Appellants, that rutile TiO2 film has been widely used

1 The Examiner has withdrawn the rejection of claims 1 and 16 under 35
U.S.C. § 112, second paragraph (see Ans. 8).
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as the surface of an electrode. The Examiner concludes, therefore, that it
would have been obvious for one of ordinary skill in the art to treat the
surface of Izuhara’s electrodes with an unsaturated organic compound prior
to staining the electrodes with osmium tetroxide.
The flaw in the Examiner’s reasoning, as emphasized by Appellants,
is that there is no teaching or suggestion in either Izuhara or Cheever of
treating the electrodes of an MEA and then treating the MEA with a staining
material that reacts with the unsaturated organic compound. While the
Examiner makes the finding that rutile TiO2 film has been widely used as the
surface of an electrode, in general, the Examiner provides no evidence that
such films have been used as electrodes in an MEA. In the absence of such
evidence, we must agree with Appellants that the Examiner has not
established the prima facie obviousness of treating the electrodes of
Izuhara’s MEA with an unsaturated organic compound and then reacting a
staining material with the unsaturated organic compound.
We will sustain the Examiner’s § 103 of claims 16 through 20 which
do not require treating the MEA with an unsaturated organic compound.
Appellants do not persuasively dispute the Examiner’s factual finding that
Izuhara discloses staining the carbon in the membrane of an MEA with
osmium tetroxide by focusing on the words used in paragraph 0202 of
Izuhara (App. Br. 16). In this regard, the Examiner’s findings are not
premised on the particular words employed in this one paragraph of Izuhara,
read in isolation (see, e.g., Ans. 9). Nor do Appellants contest that Yu
teaches a method for evaluating a composition of a membrane by staining
ionic clusters of the membrane to cause it to be darkened, and filling the
pores of the membrane with a light epoxy material to differentiate the lighter
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Application 11/938,521

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filled pores from the darker stained areas of the membrane under an electron
microscope. Accordingly, based on these findings, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art
to fill the pores of Izuhara’s membrane with Yu’s light epoxy material in
order to increase the contrast of the membrane’s image. While Appellants
contend that the present Specification describes an MEA as including a
membrane, an anode catalytic mixture, and a cathode catalytic mixture,
independent claim 16 on appeal does not require that the step of staining
carbon in the MEA includes staining the electrodes. Claim 16 is sufficiently
broad to encompass staining only the carbon in the membrane, as taught by
Izuhara. It is well settled that features disclosed in a Specification are not to
be read into the claims.
In conclusion, based on the foregoing, the Examiner’s rejection of
claims 1 through 15 is reversed, and the Examiner’s rejection of claims 16
through 20 is affirmed. Accordingly, the Examiner’s decision rejecting the
appealed claims is affirmed-in-part.

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)(iv).
AFFIRMED-IN-PART

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