11450793 (B.P.A.I. Jul. 31, 2012)

Ex Parte Elhamid et al

Board of Patent Appeals and InterferencesJul 31, 2012

11450793 (B.P.A.I. Jul. 31, 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. 11/450,793 06/09/2006 Mahmoud H. Abd Elhamid GP-307445-FCA-CHE 9077 65798 7590 08/01/2012 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD AVENUE SUITE 200 BLOOMFIELD HILLS, MI 48304 EXAMINER DOUYETTE, KENNETH J ART UNIT PAPER NUMBER 1725 MAIL DATE DELIVERY MODE 08/01/2012 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, YOUSEEF M. MIKHAIL, RICHARD H. BLUNK, and UPENDRA ROA ________________ Appeal 2011-002288 Application 11/450,793 Technology Center 1700 ________________ Before CHARLES F. WARREN, TERRY J. OWENS, and HUBERT C. LORIN, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002288 Application 11/450,793 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-12. Claims 13-20, which are all of the other pending claims, have been withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a fuel cell. Claim 1 is illustrative: 1. A fuel cell comprising a flow field plate being made of a plate material, said flow field plate including a plurality of reactant gas flow channels responsive to a reactant gas, said flow field plate further including a titanium or titanium oxide layer on the plate and a titanium oxide and ruthenium oxide layer on the titanium or titanium oxide layer that make the plate electrically conductive and hydrophilic in a fuel cell environment, The References Vyas US 2003/0228512 A1 Dec. 11, 2003 Iqbal US 2004/0106029 A1 Jun. 3, 2004 Anonymous, A bipolar plate for PEM fuel cells with enhanced water management (GP-305 381), RESEARCH DISCLOSURE J. database no. 485052, 1 page (Sep. 2004) (hereinafter RD-485052). The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 2, 4, 6, 8, and 11 over RD-485052 in view of Iqbal and claims 3, 5, 7, 9, 10, and 12 over RD-485052 in view of Iqbal and Vyas. OPINION We affirm the rejections. Appeal 2011-002288 Application 11/450,793 3 Rejection of claims 1, 2, 4, 6, 8, and 11 over RD-485052 in view of Iqbal The Appellants argue that RD-485052 discloses that “the ruthenium chloride decomposes forming a shinny [sic] gray ruthenium oxide film on the titanium surface (see the SEM micrographs in Figs 1 and 2 at two different magnifications)” (first paragraph, last three lines), and does not disclose a layer of titanium oxide and ruthenium oxide (Br. 8; Reply Br. 1- 2). The Appellants form their layer of titanium oxide and ruthenium oxide by applying to titanium a ruthenium chloride solution comprised of ruthenium chloride dissolved in ethanol, followed by calcining at about 450 ºC for about 10 minutes (Spec. ¶¶ 0026-27). RD-485052 forms what RD-485052 refers to as a ruthenium oxide film by dipping a titanium coupon into a 2% ruthenium chloride solution in ethanol, drying at 100 º C and curing at 450 ºC for 15 minutes (first paragraph, lines 7-11). It does not appear that RD-485052’s last 5 minutes of calcining would destroy titanium oxide formed during the first 10 minutes of calcining. Because the Appellants’ layer of titanium oxide and ruthenium oxide is formed by essentially the same process used to form what RD-485052 refers to as a ruthenium oxide film, it appears that like the Appellants’ layer of titanium oxide and ruthenium oxide, RD-485052’s ruthenium oxide film also contains titanium oxide. “[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 have not carried that burden. Appeal 2011-002288 Application 11/450,793 4 The Appellants argue that Iqbal does not disclose a layer of titanium oxide and ruthenium oxide (Br. 8-9). “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner relies upon RD-485052 for a layer of titanium oxide and ruthenium oxide (Ans. 3-4). The Appellants argue regarding claims 6 and 8 that RD-485052 does not disclose a contact angle below 30º (Br. 10). Because, as pointed out above, RD-485052’s layer is formed by essentially the same process as the Appellants’ layer and, therefore, appears to have essentially the same composition as the Appellants’ layer, RD-485052’s layer appears to have essentially the same properties as the Appellants’ layer including contact angle. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing”). Rejection of claims 3, 5, 7, 9, 10, and 12 over RD-485052 in view of Iqbal and Vyas The Appellants argue with respect to claims 3 and 9 that Vyas’ disclosure of a thickness range of 10-20 nm (¶ 0009) indicates that the thicknesses of both a titanium or titanium oxide layer and a titanium oxide/ruthenium oxide layer should be 10-20 nm instead of the Appellants’ titanium or titanium oxide layer thickness of 10-500 nm and titanium oxide/ruthenium oxide layer thickness of 1-50 nm (Br. 11). That argument is not well taken because Vyas’ 10-20 nm thickness falls within both the Appellants’ 10-500 nm range and 1-50 nm range. Appeal 2011-002288 Application 11/450,793 5 The Appellants argue regarding claims 5 and 10 that RD-485052’s disclosure of dipping (first paragraph, line 10) is not sufficient to indicate that both sides of the coupon are coated (Br. 12). RD-485052 does not indicate that one side of the coupon is masked. Thus, it appears that the dipping coats both sides of the coupon. For the above reasons 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, 4, 6, 8, and 11 over RD-485052 in view of Iqbal and claims 3, 5, 7, 9, 10, and 12 over RD-485052 in view of Iqbal and Vyas 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 sld