Ex Parte Fuller et al

Board of Patent Appeals and Interferences

Aug 23, 2012

11676449 (B.P.A.I. Aug. 23, 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.
11/676,449 02/19/2007 Timothy J. Fuller GP-307397-FCA-CHE 8202
65798 7590 08/24/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
MARKS, JACOB B
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
08/24/2012 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 TIMOTHY J. FULLER and MICHEL R. SCHOENEWEISS
____________

Appeal 2011-008350
Application 11/676,449
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008350
Application 11/676,449

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 3, 8 and 11 through 13. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ claimed invention relates to a method for providing a
polymer electrolyte membrane for a fuel cell. App. Br. 4. Claim 1 is
illustrative:
1. A method for providing a polymer electrolyte membrane
for a fuel cell, said method comprising:
providing a hydrocarbon membrane; and
depositing a fluorine gas combined with an inert gas on
the hydrocarbon membrane so as to increase its acid content,
wherein the percentage of fluorine in the combined gas is less
than 20 weight percent, and wherein the combined gas is
introduced into a container in which the hydrocarbon membrane
is mounted at a slow enough rate and the concentration of
fluorine in the combined gas is low enough so as to not burn the
membrane, where the rate that the combined gas is introduced
is dependent on the percentage of fluorine in the combined gas.
The Examiner relied on the following references in rejecting the
appealed subject matter:

Fall US 5,578,278 November 26, 1996
Guerra US 2005/0137351 A1 June 23, 2005
Yamashita US 2009/0269643 A1 October 29, 2009
Yamashita WO 2006/051748 A1 May 18, 2006

Appellants request review of the following rejections (App. Br. 5)
from the Examiner’s final office action:
Appeal 2011-008350
Application 11/676,449

3
1. Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to point out and distinctly claim the subject which
applicant regards as the invention.
3. Claims 1, 3, 8, 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Guerra and Fall.
4. Claims 2 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Guerra, Fall and Yamashita.

OPINION
Rejection under 35 U.S.C. § 112, first paragraph (written description)
The Examiner contends that the Specification does not have adequate
written description support for the claim language “where the rate that the
combined gas is introduced is dependent on the percentage of fluorine in the
combined gas”. Ans. 4. The Examiner further contends that paragraph 19
of the Specification is insufficient to provide written description support for
the disputed claim language because there are no equations that recite the
claim recitation or any indication that the rate of the combined gas and the
percentage of fluorine are linked whereby one is dependent on the other. Id.
at 8.
We reverse for the reasons provided by the Appellants. App. Br. 5-6.
Appellants have adequately rebutted the Examiner’s position by identifying
the portions of the Specification supporting the disputed claimed subject
matter. Id. at 6-7. The Examiner has not adequately explained why one
skilled in the art would not reasonably find that the inventor had possession
Appeal 2011-008350
Application 11/676,449

4
of the claimed invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-4 (Fed. Cir. 1991).
Accordingly we reverse the rejection under 35 U.S.C. § 112, first
paragraph.

Rejection under 35 U.S.C. § 112, second paragraph
The Examiner contends that claim 1 is indefinite because claim 1 does
not particularly point out or distinctively claim the rate that is required such
that the gas does not burn the membrane. Ans. 5. The Examiner further
contends that without any specific rate or correlation between the
concentration and the rate, the metes and bounds of Appellants’ claims are
unclear. Id. at 10.
Appellants argue, and we agree, that paragraph 19 of the Specification
provides the requisite guidance to one skilled in the art that, even though a
specific rate is not claimed, the rate of the combined gas and the
concentration of fluorine are clearly disclosed as being important variables
in preventing the membrane from burning. App. Br. 9. The Examiner’s
contentions are unsupported by adequate explanation. To the extent that the
disputed claim language (“slow enough rate and the concentration of
fluorine in the combined gas is low enough so as to not burn the
membrane”) is broad in terms of the rate and concentration necessary to
avoid burning the membrane, breadth is not indefiniteness. In re Miller, 441
F.2d 689, 693 (CCPA 1971).
Accordingly we reverse the rejection under 35 U.S.C. § 112, second
paragraph.

Appeal 2011-008350
Application 11/676,449

5
The prior art rejections1
After thorough review of the respective positions provided by
Appellants and the Examiner, we AFFIRM the prior art rejections for the
reasons presented by the Examiner and add the following for emphasis.
The Examiner found that Guerra discloses a method for making a
polymer electrolyte membrane for a fuel cell by direct fluorination of a
polymer membrane. Ans. 5. The Examiner found that Guerra does not
disclose that the fluorine is deposited slow enough to prevent the membrane
from burning. Id. The Examiner found that Fall establishes that it was
known by persons of ordinary skill in the art that direct fluorination
processes involve highly exothermic reactions that can result in ignition,
combustion, and violent explosion, making heat removal a main problem
when adopting such processes. Id.; Fall, col. 1, ll. 32-43. The Examiner
additionally found that Fall discloses controlling the fluorinating gas flow
rate and percentage of fluorine in the gas. Ans. 5-6. The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to control the flow rate of the fluorine gas in the method of Guerra because
Fall teaches that fluorine gas can burn the fluorinating medium due to its
exothermic nature. Id. at 6.
Appellants argue that both Guerra and Fall fail to teach limiting the
amount of fluorine deposited on the membrane. App. Br. 10. Appellants
further argue that Fall does not teach a method that includes depositing
fluorine on a hydrocarbon membrane in a limited amount, based on both the
rate of introduction of the combined gas and the concentration of fluorine in

1 We will limit our discussion to independent claim 1.
Appeal 2011-008350
Application 11/676,449

6
the combined gas, so as to increase the acid content of the membrane
without burning the membrane. Id. at 11.
We are unpersuaded by Appellants’ arguments. The Examiner
properly found that Fall discloses controlling the flow rate of the combined
gas and the concentration of fluorine in making a polymer electrolyte
membrane. Ans. 10-11. Moreover, as correctly noted by the Examiner, Fall
discloses a number of potential detrimental aspects that can result from the
exothermic reactions during direct fluorination (i.e., ignition, combustion,
and violent explosion). Id. at 5; Fall, col. 1, ll. 32-50. As acknowledged by
Appellants, Fall discloses various techniques to compensate for the
exothermic nature of fluorination, including dilution of fluorine, etc. App.
Br. 11. Given Fall’s disclosure, a person of ordinary skill in the art would
have reasonably expected when performing Guerra’s process, the flow rate
of the combined gas and the concentration of fluorine should be controlled
to avoid burning the resulting membrane product. “For obviousness under §
103, all that is required is a reasonable expectation of success.” In re
O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Appellants have not directed
us to evidence supporting their argument that one skilled in the art would not
have modified Guerra’s process to ensure such a result. In re Aller, 220 F.2d
454, 456 (CCPA 1955).
Regarding claims 11 and 12, Appellants argued that nothing in Guerra
suggests that the membrane may be burned in the fluorination process, and
paragraph [0047] of Guerra specifically states that lower temperatures are
undesirable. App. Br. 12. We are unpersuaded by this argument and agree
with the Examiner’s reasoning. Ans. 6, 11. A person of ordinary skill in the
art would have recognized that direct fluorination is an exothermic reaction.
Appeal 2011-008350
Application 11/676,449

7
(See Fall). Appellants have not directed us to a disclosure in Guerra that
supports their argument that lower temperatures are undesirable. While
Guerra discloses that lower temperatures prevent removal of sulfonyl halide
groups from the polymer (Guerra ¶ [0047]), Appellants have not adequately
explained why this disclosure would lead one skilled in the art to conclude
that lower temperatures in general are undesirable. On the contrary, Guerra
discloses reaction temperatures between -20 oC and 150 oC. Id.
Accordingly, we sustain the Examiner’s rejection of claims 1, 3, 8, 11
and 12 under 35 U.S.C. § 103(a) as obvious over Guerra and Fall.
In addressing separately rejected dependent claims 2 and 13,
Appellants rely on the arguments presented when discussing independent
claim 1. App. Br. 13. Appellants did not substantially address or further
distinguish the cited secondary reference to Yamashita based on the
additional limitations of dependent claims 2 and 13. Id. Therefore, we
affirm the rejection of claims 2 and 13 for the reasons given above and by
the Examiner.

ORDER
The rejection of claim 1 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is reversed.
The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as
being indefinite is reversed.
The rejection of claims 1, 3, 8, 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Guerra and Fall is affirmed.
The rejection of claims 2 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Guerra, Fall and Yamashita is affirmed.
Appeal 2011-008350
Application 11/676,449

8

TIME PERIOD
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).

AFFIRMED
bar