Ex Parte Fultz et alDownload PDFPatent Trial and Appeal BoardSep 22, 201612635352 (P.T.A.B. Sep. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/635,352 12/10/2009 83938 7590 09/26/2016 Brooks Kushman P.C. 1000 Town Center, Twenty-Second Floor Southfield, MI 48075-1238 FIRST NAMED INVENTOR Derek W. Fultz 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P005743-RDFC-CHE 9187 EXAMINER FORREST, MICHAEL ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 09/26/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEREK W. FULTZ, PAUL D. NICOTERA, THOMAS A. TRABOLD, GAY ATRI VY AS DADHEECH, and PO-YA ABEL CHUANG1 Appeal2014-005265 Application 12/635,352 Technology Center 1700 Before CHUNG K. PAK, CATHERINE Q. TIMM, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's decision2 finally rejecting claims 1-23, which are all of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The real party in interest is said to be GM Global Technology Operations, Inc. Appeal Brief filed September 13, 2013 ("App. Br.") at 1. 2 Final Action entered March 13, 2013 ("Final Act.") at 2-7 and the Examiner's Answer entered January 14, 2014 ("Ans.") at 2--4. Appeal2014-005265 Application 12/635,352 STATEMENT OF THE CASE The subject matter on appeal is directed to "a fuel cell that includes a diffusion medium having fibers coated with an electrically conductive layer" and a method of making the same. Spec. ,-i,-i 7-9. Figure 1, which is a schematic illustration of a fuel cell having a gas diffusion layer, is reproduced below: Fig. 1 "~_,.--" \ 1.;.t Figure 1 depicts proton exchange membrane ("PEM") fuel cell 10 comprising polymeric ion conductive membrane 12 disposed between first catalyst layer 14 (or a cathode layer) and second catalyst layer 16 (or anode layer), gas diffusion layers 30, 32 disposed between electrically conductive plate 20 and first catalyst layer 14 and between electrically conductive plate 22 and second catalyst layer 16, respectively, and gas channels 24 and 26 between electrically conductive plates 20, 22 and gas diffusion layers 30, 32. Spec. ,-i,-i 2 and 21. "[O]ne or both of gas diffusion layers 30 and 32 include a woven or non-woven sheet of ... fibers [that are coated with an electrically conductive layer]." Spec. ,-i,-i 21 and 23. "Examples of 2 Appeal2014-005265 Application 12/635,352 electrically conductive material that can be included in these layers include, but are not limited to, metal films ... , carbon films, metal carbide films, electrically conducting oxide films ... , oxynitride films ... , and combinations thereof." Spec. iJ 25. According to paragraphs 17 and 18 of the Specification: Except in the examples, or where otherwise expressly indicated, all numerical quantities in this description indicating amounts of material or conditions of reaction and/or use are to be understood as modified by the word "about" in describing the broadest scope of the invention. Practice within the numerical limits stated is generally preferred. Also, unless expressly stated to the contrary: percent, "parts of," and ratio values are by weight; the description of a group or class of materials as suitable or preferred for a given purpose in connection with the invention implies that mixtures of any two or more of the members of the group or class are equally suitable or preferred; description of constituents in chemical terms refers to the constituents at the time of addition to any combination specified in the description, and does not necessarily preclude chemical interactions among the constituents of a mixture once mixed; the first definition of an acronym or other abbreviation applies to all subsequent uses herein of the same abbreviation and applies mutatis mutandis to normal grammatical variations of the initially defined abbreviation; and, unless expressly stated to the contrary, measurement of a property is determined by the same technique as previously or later referenced for the same property. It is also to be understood that this invention is not limited to the specific embodiments and methods ... , as specific components and/or conditions may, of course, vary. Furthermore, the terminology used herein is used only for the purpose of describing particular embodiments of the present invention and is not intended to be limiting in any way. 3 Appeal2014-005265 Application 12/635,352 Details of the appealed subject matter are recited in illustrative claims 1 and 16, which are reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations in italicized form): 1. A fuel cell comprising: a first electrically conductive plate; a first gas diffusion layer disposed over the first electrically conductive plate, the first gas diffusion layer comprising a first fibrous sheet havingfibers, each fiber coated with an electrically conductive layer; and a first catalyst layer disposed over the first gas diffusion layer; an ion conducting membrane disposed over the first catalyst layer; a second catalyst layer disposed over the ion conducting layer; a second gas diffusion layer disposed over the second catalyst layer; a second electrically conductive plate disposed over the second gas diffusion layer. 16. A method of making a fuel cell comprising a first electrically conductive plate, a first gas diffusion layer disposed over the first electrically conductive plate, a first catalyst layer disposed over the first gas diffusion layer, an ion conducting membrane disposed over the first catalyst layer, a second catalyst layer disposed over the ion conducting layer, a second gas diffusion layer disposed over the second catalyst layer, and a second metal plate disposed over the second gas diffusion layer, the method compnsmg: providing a plurality of fibers; coating each fiber with an electrically conductive layer to form a plurality of coated fibers; and placing the plurality of coated fibers between the first conductive plate and the first catalyst layer. App. Br., Claims Appendix 1, 3. 4 Appeal2014-005265 Application 12/635,352 The Examiner maintains the following grounds of rejection: 1. Claims 1, 4-17, 19-21, and 23 under 35 U.S.C. § 102(b) as anticipated by the disclosure of Kinkelaar (US 2004/0001993 Al published in the name of Kinkelaar et al. on January 1, 2004) ("Kinkelaar"); 2. Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Kinkelaar and Kohler (US 2002/0064593 Al published in the name of Kohler et al. on May 30, 2002) ("Kohler"); and 3. Claims 18 and 22 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Kinkelaar and Ritchie (US 4,977,013 issued to Ritchie et al. on December 11, 1990) ("Ritchie"). Final Act. 2-7 and Ans. 2-5. DISCUSSION Upon consideration of the evidence on this appeal record in light of the respective positions advanced by the Examiner and Appellants, we determine that Appellants have not identified harmful error in the Examiner's decision rejecting claims 1, 4-17, 19-21, and 23 under 35 U.S.C.§ 102(b) and claims 2, 3, 18, and 22 under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's§§ 102(b) and 103(a) rejections of the above claims for the reasons set forth in the Final Action and the Answer. We add the following primarily for emphasis and completeness. There is no dispute that Kinkelaar "teaches a fuel cell comprising first and second bipolar plates, anode and cathode catalyst layers, first and second gas diffusion layers, and a polymer electrolyte membrane disposed in the order claimed (see [p]ara[graphs] 0043-0046 and Figure 2)." Compare Final Act. 2-3 with App. Br. 3-7. Nor is there any dispute that one of ordinary 5 Appeal2014-005265 Application 12/635,352 skill in the art would have been led to employ first and second microporous layers in the manner recited in claim 2, as taught by Kohler, in the fuel cell taught by Kinkelaar or coat the diffusion layers (the porous materials) of the fuel cell taught by Kinkelaar via using the evaporation and/or spray pyrolysis technique recited in claims 18 and 22, as taught by Ritchie. Compare Final Act. 6-7 with App. Br. 7. The only dispute raised in this case is: Have Appellants identified harmful error in the Examiner's findings that Kinkelaar teaches "the first gas diffusion layer comprising a first fibrous sheet having fibers, [with] each fiber coated with an electrically conductive layer" as recited in claim 1 and "providing a plurality of fibers; coating each fiber with an electrically conductive layer to form a plurality of coated fibers; and placing the plurality of coated fibers [as the first gas diffusion layer] between the first conductive plate and the first catalyst layer" as recited in claim 16? On this record, we answer this question in the negative. We begin our analysis by giving claims 1 and 16 the broadest reasonable construction in light of the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, "the PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."). Neither the claims nor the Specification specifically indicates whether a segment or the entire surface of each fiber is coated after or before forming a fibrous substrate, for example, in the form of woven or non-woven sheet. Claim 1 merely recites that "the first gas diffusion layer comprising a first fibrous sheet having fibers, [with] each 6 Appeal2014-005265 Application 12/635,352 fiber coated with an electrically conductive layer[,]" without specifying the timing or the extent of the coating. Claim 16 merely recites "providing a plurality of fibers" which can be in the form of a fibrous substrate or individual fibers, "coating each fiber [of a fibrous substrate or a plurality of individual fibers] with an electrically conductive layer to form a plurality of coated fibers" in the form of the fibrous substrate or the individual fibers, and "placing the plurality of coated fibers [in the form of the fibrous substrate or the individual fibers as the first gas diffusion layer] between the first conductive gas plate and the first catalyst layer." Stated differently, claim 16, as broadly recited, includes providing a plurality of fibers in the form of a fibrous substrate or individual fibers and coating each fiber constituting a plurality of fibers in the form of either a fibrous substrate or individual fibers simultaneously or individually. Consistent with the broad language used in claims 1 and 16, the Specification also describes forming a fibrous substrate, for example, in the form of woven or non-woven sheet, and then coating it with an electrically conductive material to simultaneously coat each fiber constituting the fibrous substrate via an appropriate penetrating coating process, such as chemical vapor deposition, dip coating, sputtering, evaporation, atomic layer deposition, chemical vapor infiltration, or spray pyrolysis. Spec. iii! 21, 27, and 29. Alternatively, the Specification states that a plurality of fibers can be initially coated with an electrically conductive material and then form a fibrous substrate, for example, in the form of woven or non-woven sheet, via "any number of methods known to those skilled in the art of making gas diffusion layers for fuel cells." Spec. iii! 21, 28, and 29. 7 Appeal2014-005265 Application 12/635,352 With the above interpretation in mind, we review the propriety of the Examiner's findings directed to the content of Kinkelaar. Although Kinkelaar focuses on a porous material made of a foam as a gas diffusion layer, as argued by Appellants, the Examiner correctly finds that Kinkelaar teaches that a preferred polymeric porous material used as its gas diffusion layer is selected from foams, bundled fibers, matted fibers, needled fibers, and woven or nonwoven fibers. Ans. 3; Kinkelaar ,-i 21. The Examiner also correctly finds that Kinkelaar goes on to teach coating at least a portion of the surface or portions of the surfaces of this porous polymeric material with an electrically conductive material. Ans. 2--4; Kinkelaar ,-i,-i 26 and 27. Specifically, Kinkelaar, at paragraphs 26 and 27, teaches that: When a segment of a strand of the solid matrix [corresponding to at least portion of the surface of each fiber] of a porous material forming a gas diffusion layer of the present invention is "coated" with an electrically conductive material, substantially the entire external surface of the segment has the electrically conductive material intimately adhered thereto so that a cross-sectional view of the segment shows a core of the solid matrix [fiber] surrounded by and directly in contact with a layer of the electrically conductive material (e.g. see FIG. 3). The at least a portion of the surface or portions of the surfaces of the porous material may be coated with at least one electrically conductive material using one or a combination of various coating methods, such as electroplating, electroless plating, plasma vapor deposition, sputtering, arc forming, a dip and nip coating process or by painting a surface or surfaces of the porous material with a paint or slurry formed from electrically conductive particles dispersed in a liquid binder. Implicit in these passages in Kinkelaar is that a segment of each fiber or the entire surface of each fiber constituting bundled fibers, matted fibers, needled fibers, or woven or nonwoven fibers used as its gas diffusing layer 8 Appeal2014-005265 Application 12/635,352 is coated with an electrically conductive material. Jn re Preda, 401 F .2d 825, 826 (CCPA 1968) (In evaluating whether a reference anticipates a claimed subject matter under§ 102(b), "it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.") In any event, the coating techniques for coating bundled fibers, matted fibers, needled fibers, or woven or nonwoven fibers taught by Kinkelaar are reasonably expected to coat or necessarily coat each fiber of the bundled fibers, matted fibers, needled fibers, or woven or nonwoven fibers inasmuch as they are identical or substantially identical to the coating techniques used for coating a fibrous substrate to coat its each fiber described in the Specification.3 Spec. iii! 21and27-29. Accordingly, we find no reversible error in the Examiner's findings that Kinkelaar teaches providing a plurality of fibers in the form of a fibrous sheet having fibers, coating the plurality of fibers in the form of the fibrous sheet with an electrically conductive material to provide each fiber therein coated with an electrically conductive layer, and placing such coated fibers 3 We also note that Kinkelaar teaches that using carbon cloths made of carbon fibers as a gas diffusion layer was known. iJ 60. The entire surface of carbon fiber used for forming carbon cloths was known to be electrically conductive. iii! 25 and 60. Thus, from this teaching of Kinkelaar, one of ordinary skill in the art would have reasonably expected that coating the entire surface of each polymeric fiber constituting bundled fibers, matted fibers, needled fibers, or woven or nonwoven fibers with an electrical conductive material, such as carbon, would also be useful in forming a gas diffusion layer of a fuel cell. Therefore, in the event of further prosecution of the currently claimed subject matter, both the Examiner and Appellants should also consider the applicability of Kinkelaar under§ 103(a). 9 Appeal2014-005265 Application 12/635,352 in the form of the fibrous sheet as the first gas diffusion layer between the first conductive plate and the first catalyst layer as recited in claims 1 and 16. ORDER In view of the foregoing, the decision of the Examiner to reject claims 1-23 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation