Ex Parte Haas et al

Patent Trials and Appeals Board

Feb 28, 2019

13949414 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/949,414 07/24/2013
41288 7590
PA TENT CENTRAL LLC
Stephan A. Pendorf
1401 Hollywood Boulevard
Hollywood, FL 33020
02/28/2019
FIRST NAMED INVENTOR
Herwig Haas
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.
3926.438 5558
EXAMINER
ZHANG, RACHELL
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
02/28/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte HERWIG HAAS, JOY ROBERTS,
FRANCINE BERRETTA, AMY SHUN-WEN YANG,
STEPHEN LEE, and SIMA RONASI
Appeal2018-005213
Application 13/949,414 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-15.
We have jurisdiction under 35 U.S.C. § 6(b). 2
1 Appellants are the Applicants, Daimler AG and Ford Motor Company,
which, according to Appeal Brief, are the real parties in interest. Appeal
Brief ("Appeal Br.") 3, filed October 23, 2017.
2 Our Decision additionally refers to the Specification ("Spec.") filed July
24, 2013, the Examiner's Answer ("Ans.") dated February 22, 2018, and the
Reply Brief ("Reply Br.") filed April 23, 2018.
Appeal2018-005213
Application 13/949,414
We AFFIRM.
The subject matter on appeal relates to solid polymer electrolyte fuel
cells and methods for increasing the tolerance of a solid polymer electrolyte
fuel cell to voltage reversal (see, e.g., claims 1, 4, and 11 ). The
Specification discloses that solid polymer electrolyte fuel cells subjected to
repeated startup and shutdown cycles can experience unacceptably high
degradation rates in performance because air can be present at the anode
during start-up and shutdown. Spec. 1 :20-21. According to the
Specification, this results in high potentials at the cathode, which causes
carbon corrosion and platinum catalyst dissolution. Id. 1 :24--27. The
Specification discloses that this leads to significant degradation in
performance over time but improving the durability of fuel cells subject to
repeated startup and shutdown remains a challenge. Id. I: 17-18, 1:27-28.
In view of this, the invention is directed to a solid polymer electrolyte fuel
cell with improved startup/shutdown durability by including a selectively
conducting material and a carbon sublayer in contact with the side of the
anode opposite to the solid polymer electrolyte, wherein the carbon sublayer
and the selectively conducting material are selected such that the voltage of
the fuel cell is greater than about 0.5 V when operating at 1.5 A/cm2. Id.
3:11-22.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A solid polymer electrolyte fuel cell comprising a solid
polymer electrolyte, a cathode, and anode components
connected in series electrically wherein:
i) the anode components comprise an anode, an anode
gas diffusion layer, and a selectively conducting component;
ii) the selectively conducting component comprises a
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Application 13/949,414
selectively conducting material; and
iii) the electrical resistance of the selectively conducting
component in the presence of hydrogen is more than 100 times
lower than the electrical resistance in the presence of air;
characterized in that the anode components comprise a
carbon sublayer in contact with the side of the anode opposite
the solid polymer electrolyte; and
the selectively conducting material and carbon sublayer
are selected such that the fuel cell voltage is greater than about
0.5 V when operating at 1.5 Alcm2 .
REJECTIONS ON APPEAL
I. Claims 1-8 and 11-14 under 35 U.S.C. § I02(b) as being
anticipated by Barsan; 3
II. Claim 10 as being unpatentable under 35 U.S.C. § I03(a)
over Barsan;
III. Claim 9 as being unpatentable under 35 U.S.C. § I03(a)
over Barsan in view ofYe; 4 and
IV. Claim 15 as being unpatentable under 35 U.S.C. § I03(a)
over Barsan in view of Chen. 5
B. DISCUSSION
Rejection I
Claims 1-8 and 11-14 are rejected under 35 U.S.C. § I02(b) as being
anticipated by Barsan.
3 Barsan et al., WO 2011/076396 Al, published June 30, 2011 ("Barsan").
4 Ye, US 2009/0186248 Al, published July 23, 2009 ("Ye").
5 Chen et al., US 2007/0238610 Al, published Oct. 11, 2007 ("Chen").
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Application 13/949,414
The Examiner finds Barsan discloses a solid polymer electrolyte fuel
cell including, among other things, a selectively conducting component
comprising a selectively conducting material having a thickness of 1-300
micrometers and an anode having a carbon sublayer. Ans. 3--4.
Appellants contend Barsan's disclosure of a carbon sublayer does not
disclose the carbon sublayer in contact with the anode, as recited in claim 1;
Barsan' s examples, which the Examiner cites for the claimed fuel cell
voltage, do not including a carbon sublayer; and Barsan does not disclose
both (a) a carbon sublayer in contact with the side of the anode opposite to
the solid polymer electrolyte and (b) a fuel cell voltage greater than 0.5 V
when operating at 1.5 A/cm2, as recited in claim 1. Appeal Br. 7-8; Reply
Br. 2--4. Appellants also argue Barsan is silent with regard to the voltage of
a fuel cell having a carbon sublayer, Barsan's disclosure does not set forth
the limitations of claim 1 as they are arranged in that claim, and it would not
have been obvious to include a carbon sublayer in Barsan's examples.
Appeal Br. 9-12; Reply Br. 4--5.
Appellants' arguments are unpersuasive. Barsan discloses a fuel cell
including a solid polymer electrolyte, a cathode, an anode, an anode gas
diffusion layer, and a selectively conducting component comprising a
selectively conducting material. Barsan 2--4. Barsan discloses that the
selectively conducting component has an electrical resistance in the presence
of hydrogen that is more than 100 times lower than its electrical resistance in
air. Id. at 2.
Barsan further discloses that it may be advantageous to keep the
selectively conductive layer separate from the catalyst of the anode so there
is no direct contact between the anode catalyst and the selectively
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Application 13/949,414
conducting layer. Id. at 9. In view of this, Barsan discloses "[a] carbon
sublayer may for instance be incorporated between the two for this purpose."
Id.
Although Barsan does not explicitly disclose that the carbon sublayer
is in contact with the side of the anode opposite to the solid polymer
electrolyte, as recited in claim 1, it is reasonable to infer that Barsan's
carbon sublayer is in contact with that side of the anode because Barsan
discloses the carbon sublayer is between the anode and the selectively
conducting layer without disclosing other layers between the carbon
sublayer and the anode. Further, Appellants describe the arrangement of the
carbon sublayer being in contact with the side of the anode opposite to the
solid polymer electrolyte, as recited in claim 1, as the carbon sublayer being
"interposed between the anode and the selectively conducting material"
(Appeal Br. 7 (emphasis omitted)), which is quite similar to Barsan's
description for its carbon sublayer (Barsan 9 ("[a] carbon sublayer may for
instance be incorporated between the two for this purpose")).
With regard to the fuel cell voltage recited in claim 1, we note that
where the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of the claimed product.
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252,
1255 (CCP A 1977).
The Examiner's findings demonstrate that the solid polymer
electrolyte fuel cell of claim 1 and Barsan's fuel cell are substantially
identical. As noted above, Barsan discloses the structures recited in claim 1,
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including contact between the carbon sublayer and the side of the anode
opposite to the solid polymer electrolyte. Moreover, Appellants'
Specification states the selectively conducting layer and the carbon layer can
be engineered to provide desired overall fuel cell performance characteristics
but only describes a thickness for each layer (i.e., a thickness of about 10 to
about 15 micrometers for the selectively conducting component). Spec.
6: 16-24. Barsan discloses a thickness of about 1-300 micrometers for its
selectively conductive layer (Barsan 9) and its examples have a thickness of
about 5-15 micrometers for the selectively conducting component (id. at 12-
13). 6 Each of those thickness ranges disclosed by Barsan overlap the
thickness range disclosed by Appellants for the selectively conductive layer.
6 Although Barsan does not explicitly disclose a thickness for its carbon
sublayer, it is not clear that the carbon sublayer has a significant effect upon
the voltage for a solid polymer electrolyte fuel cell. For instance, the
Examiner finds Barsan's examples exhibit the claimed fuel cell voltage
(Ans. 3; Barsan 16, Table 2), which Appellants agree with (Appeal Br. 8
("Appellants respectfully point out that the carbon sublayer is taught by
Barsan on page 9, para. 2, and the voltage greater than about 0.5 V when
operating at 1.5 A/cm2 is taught on page 16, Table 2 (emphasis omitted))).
However, Barsan's examples have a selectively conducting component
thickness (i.e., about 5-15 micrometers) that encompasses Appellants'
thickness (i.e., about 10 to about 15 micrometers) (compare Spec. 6:16-19
with Barsan 12-13). Thus, Barsan's examples achieve the claimed fuel cell
voltage at the selectively conducting component thickness disclosed by
Appellants without inclusion of the carbon sublayer, which indicates the
carbon sublayer has little to no effect upon the voltage of a fuel cell.
Nonetheless, even if the converse were true, Barsan discloses a broader
range for the thickness of the selectively conductive components (i.e., about
1-300 micrometer (id. at 9)) and teaches that the thickness of the selectively
conductive layer is a variable that affects its resistance characteristics (id.),
which suggests it would have been obvious to modify the thickness of the
selectively conductive component to optimize its resistance and the overall
voltage of a fuel cell including the selectively conductive component.
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Once the Examiner provides a reasonable basis to believe that the
characteristic is inherent, the burden shifts to the applicant to prove that the
prior art products do not necessarily possess the characteristics of his
claimed product. In re Best, at 1254--55 (discussing In re Swinehart, 439
F.2d 210 (CCPA 1971) and In re Ludtke, 441 F.2d 660 (CCPA 1971)).
Here, Appellants have not directed our attention to evidence or persuasive
technical reasoning that Barsan's fuel cell would not possess the claimed
voltage. Therefore, Appellants have not met the burden of demonstrating
that Barsan's fuel cell would not necessarily possess the voltage recited in
claim 1.
Appellants also assert unexpected results for the claimed fuel cell,
citing examples in Appellants' Specification. Appeal Br. 12-14. As noted
by the Examiner at page 8 of the Examiner's Answer, unexpected results are
not applicable to an anticipation rejection. See In re Malagari, 499 F .2d
1297, 1302 (CCPA 1974) ("If the rejection under§ 102 is proper, however,
appellant cannot overcome it by showing such unexpected results or
teaching away in the art, which are relevant only to an obviousness
rejection."). 7
7 Moreover, the asserted results, which use certain materials and thicknesses
for the selectively conductive component and carbon sublayer (Spec. 8:7-15,
11-12, Table 2), are not commensurate in scope with claim 1, which does
not limit the material for the selectively conducting component or the carbon
sublayer or limit the thickness for these components. A showing of
unexpected results generally must be commensurate in scope with a claimed
range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). In addition,
Appellants' Specification does not describe the asserted results as
"unexpected." "It is well settled that unexpected results must be established
by factual evidence. Mere argument or conclusory statements in the
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Application 13/949,414
Appellants do not argue claims 2-8 and 11-14 separately from claim
1. Appeal Br. 14.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's § 102(b) rejection of claims 1-8 and 11-14.
Rejection II
Claim 10 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Barsan.
Appellants contend claim 10 is allowable for the same reasons as
claim 1, notably because Barsan's disclosure of a carbon sublayer is a
separate disclosure from its examples that exhibit the fuel cell voltage of
claim 1. Appeal Br. 15. Thus, Appellants do not argue claim 10 separately
from claim 1.
As discussed above, Appellants have not identified a reversible error
in the rejection of claim 1. Therefore, we sustain the Examiner's§ 103(a)
rejection of claim 10.
Rejection III
Claim 9 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Barsan in view of Ye.
Appellants assert Ye' s material is used for a different purpose and is
used as a catalyst. Appeal Br. 15-16. This argument is unpersuasive
because Ye discloses a polymer electrolyte membrane fuel cell including,
among other things, an anode having an anode catalyst layer comprising a
specification does not suffice." In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984) (citing In re Lindner, 457 F.2d 506, 508 (CCPA 1972)).
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catalyst on a corrosion resistance supporting material and a carbon sublayer.
Ye ,r,r 2, 18, 40. Ye discloses the corrosion resistant support material may
comprise synthetic graphite or acetylene black. Id. ,r 93. To the extent Ye
does not explicitly disclose the use of synthetic graphite or acetylene black
for the carbon sublayer, Ye demonstrates it was known to use such materials
for the anode ( e.g., as the corrosion resistance supporting material) and, as
discussed above with regard to claim 1, Barsan already demonstrates it was
known to include a carbon sublayer in a solid polymer electrolyte fuel cell.
Therefore, the substitution of one known element ( e.g., synthetic graphite or
acetylene black) for another (e.g., the material ofBarsan's carbon sublayer)
would have yielded no more than a predictable result. KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,416 (2007). Further, as explained by the
Examiner ( Ans. 5), Ye' s teaching that its carbon material provides corrosion
resistance (Ye ,r 93) would have provided a reason for one of ordinary skill
in the art to use Ye's material for Barsan's carbon sublayer.
Appellants further argue that Ye' s material is very different from the
present invention because it includes metal oxide particles having particle-
to-particle interfaces with other conductive particles and "one would not
expect that Ye would exhibit the large difference in resistances of the
present invention when measured in air and hydrogen." Appeal Br. 16.
These arguments are also unpersuasive because claim 9 uses comprising
language, which permits the inclusion of additional components and
materials, and because claim 9 does not recite a particular resistance.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103(a) rejection of claim 9.
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Re} ection IV
Claim 15 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Barsan in view of Chen. Appellants do not argue claim 15 separately
from claim 1. Appeal Br. 16. As discussed above, Appellants have not
identified a reversible error in the rejection of claim 1. Therefore, we sustain
the Examiner's§ 103(a) rejection of claim 15.
C. DECISION
The decision of the Examiner 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
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