11206479 (B.P.A.I. Jan. 17, 2012)

Ex Parte Cheng et al

Board of Patent Appeals and InterferencesJan 17, 2012

11206479 (B.P.A.I. Jan. 17, 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. 11/206,479 08/18/2005 Yang T. Cheng GP-305266 5724 65798 7590 01/17/2012 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD AVENUE SUITE 200 BLOOMFIELD HILLS, MI 48304 EXAMINER YUAN, DAH WEI D ART UNIT PAPER NUMBER 1717 MAIL DATE DELIVERY MODE 01/17/2012 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 YANG T. CHENG, ANITA M. WEINER, CURTIS A. WONG, DANIEL RODAK, GAYATRI VYAS, MARIA C. MILITELLO ________________ Appeal 2010-010036 Application 11/206,479 Technology Center 1700 ________________ Before CHUNG K. PAK, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-19. Claims 20-29, which are all of the other pending claims, stand withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-010036 Application 11/206,479 2 The Invention The Appellants claim a method for making the surface of a fuel cell bipolar plate more hydrophilic. Claim 1 is illustrative: 1. A method of modifying the surface of a fuel cell element, comprising: providing a fuel cell bipolar plate having a surface formed thereon and having flow channels; and depositing a thin film on the surface of the fuel cell bipolar plate including the flow channels by physical vapor deposition that roughens the surface of the bipolar plate so as to make the surface more hydrophilic. The References Edlund 5,498,278 Mar. 12, 1996 Kindler 6,291,093 B1 Sep. 18, 2001 Yoshimura 6,291,094 B1 Sep. 18, 2001 Fronk 6,372,376 B1 Apr. 16, 2002 Saito 2003/0054221 A1 Mar. 20, 2003 Ohara 2004/0170882 A1 Sep. 2, 2004 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 2, 7, 8 and 10 over Yoshimura in view of Kindler, claim 3 over Yoshimura in view of Kindler and Edlund, claim 4 over Yoshimura in view of Kindler, Edlund and Ohara, claims 5, 6, 11-17 and 19 over Yoshimura in view of Kindler, Edlund, Ohara and Saito, and claims 9 and 18 over Yoshimura in view of Kindler, Edlund, Ohara, Saito and Fronk. OPINION We affirm the rejections. Appeal 2010-010036 Application 11/206,479 3 Among claims 1, 2, 7, 8 and 10 rejected over Yoshimura in view of Kindler, the Appellants argue only claim 1 which is the sole independent claim among those claims (Br. 3-6). As for the other rejected claims the Appellants merely argue that the additional applied references do not remedy the deficiency in Yoshimura and Kindler as to the argued subject matter in claim 1 (Br. 6-11). Accordingly, we limit our discussion to claim 1. The other claims stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 1 requires depositing a thin film on a bipolar plate including the flow channels by physical vapor deposition which makes the surface more hydrophilic. Yoshimura deposits a layer (62) of metal or a ceramic (col. 8, ll. 46- 55) (which are two of the Appellants’ thin film materials (Spec. ¶ 0037)) onto a fuel cell gas separator (30)’s base sheets (65, 66) including the flow channels (col. 6, ll. 10-11; Fig. 4) by sputtering (col. 8, l. 66 – col. 9, l. 2) (which is one of the Appellants’ physical vapor deposition techniques (Spec. ¶ 0027)). The base sheets (65, 66) may be roughened by etching (col. 12, ll. 31-32) (which is one of the Appellants’ roughening techniques (Spec. ¶ 0029)) to provide the layer (62) with a rough surface which increases the layer’s adhesion to a subsequently applied layer (64) (col. 2, l. 66 – col. 3, l. 5; col. 6, ll. 12-13). Kindler discloses that chemical roughening by acids can be used to roughen the surface of a fuel cell plate (col. 7, ll. 30-44). The Appellants argue that neither Yoshimura nor Kindler discloses depositing a thin film for the purpose of roughening to make the surface hydrophilic (Br. 4-5; Reply Br. 2). Appeal 2010-010036 Application 11/206,479 4 Establishing a prima facie case of obviousness does not require that references solve the same problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). Although Yoshimura’s thin film has a rough surface to increase adhesion to a subsequently applied layer (col. 2, l. 66 – col. 3, l. 5) rather than to make the surface to which it is applied more hydrophilic, Yoshimura can deposit the same material (metal or ceramic) by the same technique (sputtering) onto the same etched plate surface of a fuel cell as the Appellants (Yoshimura, col. 2, ll. 1-4; col. 8, ll. 46-55; col. 8, l. 66 – col. 9, l. 2; col. 12, ll. 31-32; Spec. ¶¶ 0026-27, 0029). Thus, it appears that such a thin film, like the Appellants’ thin film, makes the plate surface onto which it is deposited more hydrophilic. “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Appellants do not provide such a showing. Accordingly, we are not persuaded of reversible error in the Examiner’s rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1, 2, 7, 8 and 10 over Yoshimura in view of Kindler, claim 3 over Yoshimura in view of Kindler and Edlund, claim 4 over Yoshimura in view of Kindler, Edlund and Ohara, claims 5, 6, 11-17 and 19 over Yoshimura in view of Kindler, Edlund, Ohara Appeal 2010-010036 Application 11/206,479 5 and Saito, and claims 9 and 18 over Yoshimura in view of Kindler, Edlund, Ohara, Saito and Fronk, are affirmed. It is ordered that the Examiner’s decision 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). AFFIRMED kmm