Ex Parte Elhamid et al

Board of Patent Appeals and Interferences

Jan 26, 2012

11127375 (B.P.A.I. Jan. 26, 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.
11/127,375 05/12/2005 Mahmoud H. Abd Elhamid GP-305838 5376
83938 7590 01/27/2012
Brooks Kushman P.C.
1000 Town Center, Twenty-Second Floor
Southfield, MI 48075-1238
EXAMINER
YANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
01/27/2012 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, GAYATRI VYAS, FENG ZHONG,
RICHARD H. BLUNK, DANIEL J. LISI,
MICHAEL K. BUDINSKI, GERALD W. FLY, TIMOTHY J. FULLER,
BRIAN K. BRADY, and KEITH E. NEWMAN
__________

Appeal 2010-011753
Application 11/127,375
Technology Center 1700
____________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011753
Application 11/127,375

2
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-161 and 20. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is said to be directed to a hydrophilic
electrically conductive fluid distribution plate for a fuel cell (Spec. para.
[0001]).
Claims 1 and 13 are illustrative:
1. An electrically conductive fluid distribution plate
comprising:
a plate body defining a set of fluid flow channels
configured to distribute flow of a fluid across at least one side
of the plate; and
a composite conductive coating having a water contact
angle of less than 40° adhered to the plate body, the composite
coating, comprising:
a polymeric conductive layer adhered to the plate body,
the polymeric conductive layer having an exterior surface; and
a particulate carbon layer adhered to the exterior surface
of the polymeric conductive layer.
13. The plate of claim 9 wherein the carbon black has a
mesopore to micropore ratio of 5:1 to 40:1.
Appellants appeal the following rejections:

1 Appellants list claim 17 as rejected and on appeal (App. Br. 2). However,
claim 17 has not been rejected (Final Office Action 2-8; Ans. 3-10). Claim
17 is withdrawn from consideration as indicated in the Appellants’ Claims
Appendix attached to the Appeal Brief. Accordingly, there is no rejection of
claim 17 for us to review on appeal.
Appeal 2010-011753
Application 11/127,375

3
1. Claims 1, 2, 4-9, 14, 15, and 20 are rejected under 35 U.S.C. § 102(b)
as being unpatentable over Elhamid ‘768 (US 2004/0091768 A1
published May 13, 2004).
2. Claims 3, 10, 11, and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Elhamid ‘9632 (US 7,261,963 B2 issued Aug.
28, 2007).
3. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Elhamid ‘963 in view of Witherspoon
(US 5,372,981 issued Dec. 13, 1994).

With regard to rejection (1), Appellants argue independent claims 1
and 20 as a group (App. Br. 3-6). We select claim 1 as representative.
Appellants do not separately argue the claims of rejection (2). These
claims will stand or fall with our analysis of the Examiner’s rejection of
claim 1 (id. at 7).
With regard to rejection (3), Appellants separately argue claims 12
and 13.

Rejections (1) and (2)

ISSUE
Did the Examiner reversibly err in construing the composite
conductive coating limitation of claim 1 as encompassing Elhamid’s two
layers that contain carbon particles and binder? We decide this issue in the
negative.

2 Elhamid ‘963 is the patent of the pre-grant publication Elhamid ‘768.
Appeal 2010-011753
Application 11/127,375

4

FINDINGS OF FACT AND ANALYSES
Appellants argue that Elhamid ‘768 does not teach a conductive
coating on a plate body that is a composite of two layers as required by
claim 1 (App. Br. 3). Appellants contend that Elhamid ‘768 does not teach
using a particulate carbon layer (id.). Appellants argue that the claim
requires a conductive polymer layer and a particulate carbon layer without
polymer to emphasize that the coating is composed of two layers (id. at 4).
Appellants argue that Elhamid ‘768 only teaches the “underlying conductive
layer” and not a particulate carbon layer (id.). Appellants contend that
Elhamid ‘768 merely teaches a single layer, not a bilayer, coating (id. at 5).
The Examiner responds that Elhamid ‘768 teaches applying two
layers of the carbon polymer mixture to form the coating on the fluid flow
plate (Ans. 9). The Examiner states that the claim uses “comprising” and
does not exclude having polymer in the second layer of the coating (id.).
The Examiner further explains that the claim does not specify the particular
amount of carbon or polymer in either layer and thus is not as limited as
Appellants argue (id.). We agree with the Examiner.
During prosecution of an application, claims are given the broadest
reasonable interpretation consistent with the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Though Appellants argue that the claim is limited to a bilayer coating
wherein the first layer has a polymer and the second layer contains
particulate carbon without polymer, the claim is open-ended and does not
exclude having polymer in the second layer. This interpretation is supported
by Appellants’ Specification that discloses that the “particulate carbon layer
Appeal 2010-011753
Application 11/127,375

5
150 comprises a plurality of carbon particles disposed on the upper surface
144 of the conductive layer 140” in “at least one embodiment” (Spec. para.
[0042]). This Specification disclosure indicates that there are other
embodiments and ways of forming the particulate carbon layer. Indeed,
Appellants state that the Specification describes “preferred embodiments
[and] is merely exemplary in nature and is in no way intended to limit the
invention” (Spec. para. [0021]). See also, Spec. para. [0054]. Appellants
further explain that:
[I]t is to be understood that the disclosed embodiments are
merely exemplary of the invention that may be embodied in
various and alternative forms. Therefore, specific details
disclosed herein are not to be interpreted as limiting, but merely
as a representative bases for the claims and/or as a
representative basis for teaching one skilled in the art to
variously employ the present invention.
(Spec. para. [0021]).
In light of these disclosures by Appellants, we agree with the
Examiner’s claim construction of “particulate carbon layer” in claim 1 as not
limited to only a layer of carbon particulate material without polymeric
binder. We decline Appellants’ invitation to read limitations from the
Specification into the claims.
In view of this proper claim construction, .the preponderance of the
evidence advanced by the Examiner and by Appellants supports the
Examiner’s finding that the Elhamid ‘768 teachings to form two carbon
particle and binder containing layers on a fluid flow distribution plate of a
fuel cell anticipates Appellants’ claims. We affirm the Examiner’s § 102(b)
rejection.
Appeal 2010-011753
Application 11/127,375

6
For the same reasons, we affirm the Examiner’s § 103 rejection of
claims 3, 10, 11, and 16 over Elhamid ‘963.

Rejection (3): Claims 12 and 13 under § 103 over Elhamid ‘963 in view of
Witherspoon

Claim 12 recites that the plate of claim 11 “wherein the carbon black
comprises Ravan black.”
Regarding claim 12, Appellants argue that Witherspoon is directed to
the catalyst layers used in fuel cells and not the conducting plates as set forth
in the present invention (App. Br. 7). Appellants contend that Witherspoon
adds nothing more to the analysis than Ravan black exists and there is no
disclosure indicating an advantage for its use in the conducting plates of fuel
cells (id.).
The Examiner finds and responds that Witherspoon teaches that
Ravan black is a known equivalent for the carbon blacks used in Elhamid
‘963 (Ans. 8 and 10). However, Appellants never specifically challenge that
Ravan black is an equivalent for the carbon blacks taught by Elhamid ‘963
(App. Br. 7, Reply Br. 1-2). In fact, Elhamid ‘963 teaches specific carbon
blacks but further states that the particular variety of carbon black used in
the invention is not limited (Elhamid ‘963, col. 3, ll. 51-55).
Appellants have not shown reversible error in the Examiner’s stated
case based on equivalency. Accordingly, we affirm the Examiner’s § 103
rejection of claim 12 over Elhamid ‘963 in view of Witherspoon.
Regarding claim 13, Appellants argue that Witherspoon is silent
regarding the claimed micropore to mesopore ratio (App. Br. 8). Appellants
Appeal 2010-011753
Application 11/127,375

7
contend that the Examiner has not logically or coherently explained how
Witherspoon teaches such a feature (id. at 7). We agree with Appellants.
The Examiner cites column 8, lines 55-60 of Witherspoon as teaching
that Ravan black has a diameter of 120 Angstroms (Ans. 8). The Examiner
concludes based on this disclosure and Appellants’ description of mesopore
that it would have been obvious to use Ravan black in Elhamid ‘963’s
coating (id. at 8-9).
The Examiner has not explained how such a combination of
Witherspoon’s Ravan black with Elhamid ‘963’s coating would have
rendered obvious the particular claimed ratio of micropores to mesopores.
The Examiner has not presented a prima facie case of obviousness with
regard to the subject matter of claim 13. On this record, we reverse the
Examiner’s § 103 rejection of claim 13 over Elhamid ‘963 in view of
Witherspoon.

DECISION
The Examiner’s decision 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).

ORDER
AFFIRMED-IN-PART

bar