Ex Parte Fuller et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10978981 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TIMOTHY J. FULLER
and BEBA T. DOBULIS
__________

Appeal 2009-014151
Application 10/978,981
Technology Center 1700
___________

Before MICHAEL P. COLAIANNI, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, 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 2009-014151
Application 10/978,981

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 1-16 and 21-29. Claims 17-20 are also pending but
have been withdrawn from consideration. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal relates to a method for stabilizing a
polyelectrolyte membrane film used in fuel cells. Conventional membrane
films for polyelectrolyte membrane fuel cells are said to be cut from a
membrane sheet in an orientation such that the side edges (18) of the
membrane film are parallel to the machine process direction (12) of the
membrane sheet and the transverse edges (20) of the membrane are parallel
to the transverse direction (14) of the membrane sheet. Spec., para. [0010];
Appellants’ Fig. 1. The Appellants disclose that an extruded membrane film
cut in this orientation exhibits non-uniform membrane swelling. Spec.,
paras. [0009]-[0011]. In particular, as shown in the Appellants’ Figure 1A,
the swelled membrane expands to a greater extent along the transverse edges
(20) than along the side edges (18) after immersion in water or ionomer
solution. Spec., para. [0010].
The Appellants disclose a method for improving swelling uniformity
comprising the step of cutting a membrane film from an extruded membrane
sheet in a diagonal orientation with respect to the machine process direction
of the membrane sheet. Spec., paras. [0012], [0022]. The Appellants
disclose that the membrane film may be cut at various diagonal angles (other
than 90 degrees) with respect to the machine process direction and
transverse direction, as long as the membrane film generally approximates a
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Application 10/978,981

square or diamond shape after immersion in water or ionomer solution.
Spec., para. [0025].
Claim 1, reproduced below, is illustrative.
1. A method of stabilizing a polyelectrolyte membrane film,
comprising:

providing an extruded polyelectrolyte membrane sheet
having an extrusion machine process direction axis and a
transverse axis, the extruded polyelectrolyte membrane sheet
being stronger in the process direction axis than in the
transverse axis; and

cutting a membrane film from said membrane sheet in
generally diagonal relationship with respect to said machine
process direction axis.

App. Br., Claims Appendix (emphasis added).2
The remaining independent claims, claims 9 and 25, also recite a
method of stabilizing a polyelectrolyte membrane film. Claim 9 recites the
step of cutting a membrane film from an extruded polyelectrolyte membrane
sheet “in generally diagonal relationship with respect to said machine
process direction axis.” Claim 25 recites the step of cutting a membrane
film from an extruded polyelectrolyte membrane sheet “with each of two
side edges and two transverse edges oriented in a generally diagonal
relationship with respect to said machine process direction axis.” App. Br.,
Claims Appendix.
The only Examiner’s rejection on appeal is the rejection of claims 1-
16 and 21-29 under 35 U.S.C. § 103(a) as unpatentable over the combination
of the admitted prior art,3 Tikhomirov,4 and Nguyen.5

2 Appeal Brief dated March 17, 2009.
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Application 10/978,981

B. ISSUE
The Examiner finds that the admitted prior art does not teach cutting
an extruded polyelectrolyte membrane in a “generally diagonal relationship”
as recited in claim 1. Rather, the Examiner finds that the membrane film in
the admitted prior art is cut in an orientation such that the side edges of the
membrane film are parallel to the machine process direction of the
membrane sheet and the transverse edges of the membrane film are parallel
to the transverse direction of the membrane sheet. Ans. 36; Spec., para.
[0010].
The Examiner contends that Tikhomirov teaches a method of cutting
polymer sheets in a generally diagonal relationship with respect to the
machine process direction. Ans. 3. Based on this teaching, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to cut the membrane of the admitted prior art in a “generally diagonal
relationship” as claimed “to provide a membrane that is cut to the desired
dimensions of the final product and also because it has been held that the
substitution of one known equivalent technique in the art for another
involves only routine skill in the art.” Ans. 4.
The Appellants argue, inter alia, that Tikhomirov discloses a device
for cutting a polymer foliated material not a polyelectrolyte membrane sheet
as claimed. Br. 6, 10; Reply Br. 3.7 The Appellants contend that the
Examiner has failed to provide some articulated reasoning with some

3 Paragraphs [0006]-[0011] of the Appellants’ Specification.
4 RU 546,498, published February 15, 1977. Reference herein will be made
to the English translation of record.
5 US 2003/0104236 A1, published June 5, 2003.
6 Examiner’s Answer dated April 27, 2009.
7 Reply Brief dated June 29, 2009.
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rational underpinning to support the conclusion that it would have been
obvious to one of ordinary skill in the art to combine the “admitted prior
art”8 and Tikhomirov in the manner proposed by the Examiner. App. Br.
16.
In view of the foregoing, the dispositive issue in this appeal is:
Did the Examiner reversibly err in concluding that it would have been
obvious to one of ordinary skill in the art to cut the membrane of the
admitted prior art in a “generally diagonal relationship” as claimed in view
of the teachings in Tikhomirov?
C. ANALYSIS
The Examiner contends that KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398 (2007), supports the Examiner’s conclusion of obviousness. In
particular, the Examiner contends that “known processing techniques in the
art that are used for substantially similar products, i.e. polymeric materials”
are being combined. Ans. 9.
The Examiner does not direct us to the particular portion of KSR that
supports this position. However, for purposes of this discussion, we will
assume that the Examiner is referring to the Supreme Court’s statement that
“the combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR,
550 U.S. at 416.

8 In the Appeal Brief, the Appellants state that they “do not concede . . . that
any teachings included in the present disclosure in fact qualify as prior art.”
App. Br. 6. It is not necessary to decide whether paragraphs [0006]-[0011]
of the Appellants’ Specification are prior art within the meaning of 35
U.S.C. § 102(b) in view of our reasons for reversal.
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The Examiner has neither come forward with credible evidence, nor
plausibly explained why one of ordinary skill in the art would have
considered the polyelectrolyte membrane of the admitted prior art to be
substantially similar to the metal-cord web disclosed in Tikhomirov.
Moreover, the Examiner has failed to direct us to any evidence establishing
that cutting an extruded membrane in a diagonal orientation as disclosed in
Tikhomirov would yield a predictable result, e.g., uniform swelling.
The Examiner also contends that the proposed combination of the
admitted prior art and Tikhomirov would have been obvious to one of
ordinary skill in the art “because it has been held that the substitution of one
known equivalent technique in the art for another involves only routine skill
in the art.” Ans. 4.
However, the Examiner has failed to establish, in the first instance,
that cutting an extruded membrane sheet in a “generally diagonal
relationship” as claimed would have been considered equivalent to cutting
an extruded membrane sheet in the conventional orientation, i.e. an
orientation such that the side edges of the membrane film are parallel to the
machine process direction of the membrane sheet and the transverse edges of
the membrane film are parallel to the transverse direction of the membrane
sheet. Spec., para. [0010]. In fact, the evidence of record establishes that
these two orientations are not equivalent. In particular, the evidence of
record establishes that cutting an extruded membrane sheet in the
conventional orientation results in non-uniform swelling whereas cutting an
extruded membrane sheet in a “generally diagonal relationship” as claimed
results in uniform swelling. Spec., paras. [0010], [0022]. Whether one
characterizes the Examiner’s omissions as a failure to establish a factual
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basis for the argued equivalence, or a failure to address evidence of
unexpected results, the case for obviousness has not been made.
In sum, the Examiner reversibly erred in concluding that it would
have been obvious to one of ordinary skill in the art to cut the membrane of
the admitted prior art in a “generally diagonal relationship” as claimed in
view of the teachings in Tikhomirov. Therefore, the § 103(a) rejection will
be reversed.
D. DECISION
The decision of the Examiner is reversed.
REVERSED

tc

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

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