Ex Parte Fronk et al

Board of Patent Appeals and Interferences

Sep 23, 2010

10720005 (B.P.A.I. Sep. 23, 2010)

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.
10/720,005 11/21/2003 Matthew Howard Fronk h-203754 3992
60770 7590 09/24/2010
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/24/2010 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 MATTHEW HOWARD FRONK, RODNEY LYNN BORUP, JAY
S. HULETT, BRIAN K. BRADY, and KEVIN M. CUNNINGHAM
____________

Appeal 2010-004537
Application 10/720,005
Technology Center 1700
____________

Before ALLEN R. MACDONALD, Vice-Chief Administrative Patent Judge,
and MICHAEL P. COLAIANNI and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-004537
Application 10/720,005

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 9-172 in reissue application 10/720,005.
Reissue application 10/720,005 seeks to reissue U.S. Patent 6,372,376 B1,
issued April 16, 2002 (the ‘376 Patent). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a PEM (Proton Exchange
Membrane) fuel cell having contact element comprising a corrosion-
susceptible metal substrate having a protective polymer coating including
electrically conductive particles. (Col. 2, ll. 18-41.)
Claims 1 and 9 are illustrative (with underlining and brackets showing
additions and deletions relative to the original claims):
1. In a PEM fuel cell having at least one cell comprising
a pair of opposite polarity electrodes, a membrane electrolyte
[intedacent] interjacent said electrodes for conducting ions
therebetween, and an electrically conductive contact element
having a working face confronting at least one of said
[electrodessfor] electrodes for conducting electrical current
from said one electrode, the improvement comprising: said
contact element comprising a corrosion-susceptible metal
substrate and an electrically conductive, corrosion-resistant
protective coating on said face to protect said substrate from the
corrosive environment of said fuel cell, said protective coating
comprising a mixture of electrically conductive particles
dispersed throughout an oxidation-resistant and acid-resistant,
water-insoluble polymeric matrix and having a resistivity no
greater than about 50 ohm-cm, said mixture comprising
graphite particles having a first particle size and other
electrically conductive particles selected from the group
consisting of gold, platinum, nickel, palladium, rhodium,
Appeal 2010-004537
Application 10/720,005

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niobium, titanium carbide, titanium nitride, titanium diboride,
chromium-alloyed titanium, nickel-alloyed titanium, rare earth
metals and carbon, said other particles having a second particle
size less than said first particle size to enhance the packing
density of said particles.

9. A product comprising:
a fuel cell comprising a bipolar plate and an electrically
conductive corrosion-resistant protective coating over the
bipolar plate, the coating comprising a water-insoluble polymer
and a plurality of first electrically conductive particles, and a
plurality of second electrically conductive particles, the first
particles being larger than the second particles, the first
particles forming interstices therebetween and the at least a
portion of the second particle filling the interstices.

Appellants seek review of the Examiner’s rejection of claims 9-172
under 35 U.S.C. § 251 as being broadened in a reissue application outside
the two year statutory period.

ISSUE
The issue presented by this appeal is:
Did the Examiner err in determining that Appellants’ intent to file a
broadening reissue was not expressed until after two years from the issue
date of the ‘376 Patent?

PRINCIPLES OF LAW
“No reissued patent shall be granted enlarging the scope of the claims
of the original patent unless applied for within two years from the grant of
the original patent.” 35 U.S.C. §251.
Appeal 2010-004537
Application 10/720,005

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The Appellant’s mere reiteration of the statutory language
“more or less” does not clearly identify the error to be corrected
by reissue, because it does not indicate whether the patent is
partly inoperative because the original claims are too broad in
scope, or whether the patent is partly inoperative because the
original claims are too narrow in scope. Ex parte Tanaka, 93
USPQ2d 1291, 1297 (BPAI 2009) (Precedential) (citing e.g.,
Ex parte Oetiker, 1997 WL 1883795, Appeal No. 96-4146
(BPAI 1997) (holding that a reissue declaration which merely
repeats the disjunctive statutory language that the error was one
of claiming “more or less” than the patentee had a right to claim
is an insufficient statement of error to satisfy 35 U.S.C. § 251)).

[T]he public is entitled to be put on notice as to the particular
error which a patentee seeks to correct by reissue without in
some way imposing a degree of uncertainty as to the specific
nature of that error. . . . Thus, merely repeating the disjunctive
statutory language (i.e., “more or less”), as appellant has done
here, improperly creates an ambiguity which deprives the PTO
and the public of appropriate notice as to the specific type of
error which the patentee seeks to correct by a reissue. . . Having
failed to positively and unequivocally specify the statutory error
for which a reissued patent is sought in any of the reissue
declarations, appellant has not satisfied the provisions of § 251.
For this reason alone, the examiner's rejection of the appealed
claims under § 251 is sustainable.

Oetiker, 1997 WL 1883795 at *5.
Admittedly, appellant's counsel states on page 19 of the
main brief that appellant is “seeking a narrowed reissue patent
....” Appellant's counsel further suggests on page 26 of the main
brief that statements made by him over his signature during
prosecution be considered “as if made under oath.” Statements
made by appellant's counsel over his signature but not under
oath or declaration are not acceptable as a substitute for or a
supplement to the oath or declaration required under 37 CFR §
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Application 10/720,005

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1.175(a). The necessity for such an oath or declaration is
absolute.
Id., at *5-6.
FACTUAL FINDINGS
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The ‘376 Patent issued on April 16, 2002.
2. On November 21, 2003, less than two years after the ‘376 Patent
issued, Appellants filed the reissue application on appeal. (Reissue
Application Transmittal, p. 1.)
3. Appellants filed a Reissue Application Declaration form
PTO/SB/51 (02-01) along with the reissue application, in which
Appellants declared that they believed the original patent to be
wholly or partly inoperative or invalid by checking the box next to
the statement “by reason of the patentee claiming more or less than
he had the right to claim in the patent.” (Reissue Application
Declaration entered November 21, 2003, p. 1.)
4. The Reissue Application Declaration form reads “[a]t least one
error upon which reissue is based is described below. If the
reissue is a broadening reissue, such must be stated with an
explanation as to the nature of the broadening.” (Reissue
Application Declaration entered November 21, 2003, p. 1)
(emphasis added.)
5. Under this statement, Appellants declared:
The amendment to claim 1 corrected an inadvertent error
in claim 1. The word “no” should have been in the claim
when the limitations of claim 12 were incorporated into
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Application 10/720,005

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claim 1 by amendment (Paper No. 4) dated June 25, 2001
during the prosecution of United States Patent No.
6,372,376.
(Reissue Application Declaration entered November 21, 2003, p.
1.)

6. On October 20, 2004, more than two years after the ‘376 Patent
had issued, Appellants first attempted to add broader claims 9-84,
stating in the accompanying remarks that “[t]his Reissue
application, as filed, was a broadening reissue application” in part
due to the addition of the word “no” in the phrase “a resistivity no
greater than about 50 ohm-cm” recited in claim 1. (Preliminary
Amendment filed October 10, 2004, p. 20.)
7. On September 26, 2005, more than two years after the ‘376 Patent
had issued, Appellants presented claims 9-172. (Preliminary
Amendment filed September 26, 2005.)

ANALYSIS
There is no dispute that claims 9-172, which were added more than
two years after the ‘376 Patent had issued (FF 6-7), are broadening claims.
Thus, in order for the addition of these claims to be proper, the reissue
application, originally filed within two years of the issue date of the ‘376
Patent, must have been intended to be a broadening reissue. In re Doll, 419
F.2d 925, 928 (CCPA 1970) (holding that the statute does not prevent
submission of original claims, broader than both the original patent claims
and the original broadening reissue claims, more than two years after the
grant).
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Application 10/720,005

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In the instant case, we cannot agree with Appellants’ contentions that
the statement “by reason of a patentee claiming more or less than he had a
right to claim in the patent” in the Reissue Application Declaration is a clear
statement of intent to file a broadening reissue application. (App Br. 9.)
Appellants’ position is expressly contrary to precedent on this very issue.
See Tanaka, 93 USPQ2d at 1297 (citing Oetiker.)
In addition, as the Reissue Application Declaration makes clear: if the
reissue sought is a broadening reissue, Appellant is required to state as such
in the Declaration along with an explanation of the nature of the broadening.
(FF 4.) In the present case, Appellants’ description fails to indicate that the
reissue is a broadening reissue and does not explain the nature of the
broadening. (FF 5.) Appellants only indicate that there was an “inadvertent
error” without stating that the correction of the error amounted to a
broadening of the claims. (FF 5.) As such, Appellants’ Reissue Application
Declaration failed to provide the required notice to the public that Appellants
intended to broaden the claims of the ‘376 Patent. Oetiker, 1997 WL
1883795 at *5. Accordingly, Appellants’ argument that the Examiner was
required to make findings that intent may be inferred from the reissue
application declaration is not well taken. (App. Br. 8-9.)
Appellants’ belated explanation of why the amendment to claim 1
broadens the claims of the ‘376 Patent in the preliminary amendment of
October 20, 2004 and in the Appeal Brief (FF 6; App. Br. 11) are
insufficient to rectify the deficiencies of the Reissue Application
Declaration. Arguments of counsel cannot take the place of or supplement
the Reissue Application Declaration. Oetiker, 1997 WL 1883795 at *5-6.
Therefore, the Examiner did not err in rejecting claims 9-172 under 35
Appeal 2010-004537
Application 10/720,005

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U.S.C. §251 as being directed to a broadening reissue improperly filed after
two years from the issue date of the ‘376 Patent.
As to the Examiner’s new ground of rejection on pages 3-4 of the
Answer that the oath or declaration filed with the reissue application is
defective because certain amendments were not accompanied by a
supplemental declaration, we agree with Appellants that 37 C.F.R. § 1.1752
only requires submission of such supplemental declarations prior to
allowance. (Reply Brief 1-2.) Therefore, we do not uphold this aspect of
the Examiner’s reasoning for rejecting claims 9-172.

DECISION
We affirm the Examiner’s rejection of claims 9-172 under 35 U.S.C. §
251.

TIME PERIOD

2 37 C.F.R. §1.175 recites, in pertinent part:
(b)(1) For any error corrected, which is not covered by the oath or
declaration submitted under paragraph (a) of this section, applicant must
submit a supplemental oath or declaration stating that every such error arose
without any deceptive intention on the part of the applicant. Any
supplemental oath or declaration required by this paragraph must be
submitted before allowance and may be submitted:
(i) With any amendment prior to allowance; or
(ii) In order to overcome a rejection under 35 U.S.C. 251 made by the
examiner where it is indicated that the submission of a supplemental oath
or declaration as required by this paragraph will overcome the rejection.
(Emphasis added.)
Appeal 2010-004537
Application 10/720,005

9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED

ack

cc:

General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY MI 48099-4390