Ex Parte Hong et al

Patent Trial and Appeal Board

Feb 5, 2019

13078168 (P.T.A.B. Feb. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/078,168 04/01/2011 Bo Ki Hong
100807 7590 02/07/2019
Mintz Levin/Special Group
One Financial Center
Boston, MA 02111
UNITED ST A TES OF AMERICA
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.
48268-41200 lUS 6917
EXAMINER
FITZSIMMONS, ALLISON G
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
02/07/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO KI HONG, KOOK IL HAN, SAE HOON KIM, and
JAEJUNK0 1
Appeal2017-003987
Application 13/078, 168
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-7, 10-12, and 19-22. An oral hearing was
held on January 30, 2019. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Hyundai Motor
Company. Br. 1.
2 Due to inclement weather, a court reporter was not present for the hearing.
Counsel for the Appellants agreed to proceed with the hearing without a
court reporter.
Appeal2017-003987
Application 13/078, 168
BACKGROUND
The subject matter on appeal relates to a fuel cell stack with enhanced
freeze-thaw durability. E.g., Spec. 1:8; Claim 1. Claims 1 and 22 are
reproduced below from pages 14--15 and 19-20 (Claims Appendix) of the
Appeal Brief:
1. A fuel cell stack with enhanced freeze-thaw durability, the fuel
cell stack comprising:
a plurality of fuel cells, each of the fuel cells including:
a polymer electrolyte membrane,
a catalyst layer coated on at least one side of the polymer
electrolyte membrane,
a compressible gas diffusion layer (GDL) disposed on the
catalyst layer, and
a bipolar plate disposed on the compressible GDL,
wherein the bipolar plate includes a plurality of major flow field
sections and a plurality of minor flow field sections,
wherein the compressible GDL has a width direction
perpendicular to a major flow field direction of the bipolar plate
and a length direction that is parallel to the major flow field
direction of the bipolar plate,
wherein the compressible GDL has a dual layer structure, the
duel layer structure has a microporous layer and a macroporous
substrate, the macroporous substrate comprises carbon fiber
felt, carbon fiber paper or a combination thereof, the
microporous layer comprises carbon powder and a hydrophobic
agent compnsmg polytetrafluoroethylene (PTFE) and
fluorinated ethylene propylene (PEP), the microporous layer
has a pore size of less than about 1 µm and the macroporous
substrate has a pore size of about 1 µm to about 300 µm,
wherein a stiffness direction of the compressible GDL is
arranged in one direction, and the stiffness direction is not
parallel with the length direction of the compressible GDL at a
certain angle at which the compressible GDL is cut from a roll
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Application 13/078, 168
of GDL material, the certain angle formed by a machine
direction of the inherent high stiffness of a roll of GDL material
with respect to the major flow field direction of the bipolar
plate, and the stiffness direction is not parallel with the major
flow field direction of the bipolar plate when the compressible
GDL is stacked on the bipolar plate in the fuel cell stack to
reduce contact resistance at interfaces in each of the plurality of
fuel cells.
22. A fuel cell stack with enhanced freeze-thaw durability, the fuel
cell stack comprising:
a plurality of fuel cells, each of the fuel cells including: a
polymer electrolyte membrane, a catalyst layer coated on at
least one side of the polymer electrolyte membrane, a
compressible gas diffusion layer (GDL) disposed on the
catalyst layer, and a bipolar plate disposed on the compressible
GDL,
wherein the bipolar plate includes a plurality of major flow field
sections and a plurality of minor flow field sections,
wherein the compressible GDL has a width direction
perpendicular to a major flow field direction of the bipolar plate
and a length direction that is parallel to the major flow field
direction of the bipolar plate,
wherein the compressible GDL has a dual layer structure, the
duel layer structure having a microporous layer and a
macroporous substrate, wherein the macroporous substrate
made of carbon fiber felt, carbon fiber paper or a combination
thereof, the microporous layer made of the combination of
carbon powder with hydrophobic agent compnsmg
polytetrafluoroethylene (PTFE) and fluorinated ethylene
propylene (PEP), the microporous layer has a pore size of less
than about 1 µm and the macroporous substrate has a pore size
of about 1 µm to about 300 µm,
wherein the compressible GDL has a structure that reduces
contact resistance at interfaces in each of the plurality of fuel
cells and has an inherent high stiffness direction which is not
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Application 13/078, 168
parallel with the length direction of the compressible GDL and
the major flow field direction of the bipolar plate at a certain
angle at which the compressible GDL is cut from a roll of GDL
material, wherein the inherent high stiffness direction is a
machine direction of the roll of the GDL material and the
inherent high stiffness direction is arranged in one direction on
the macroporous substrate of the compressible GDL, and
wherein the certain angle is an angle in a range of 60°:S8:S90°,
the certain angle formed by the machine direction of the
inherent high stiffness of the roll of GDL material with respect
to the major flow field direction of the bipolar plate.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claim 22 under 35 U.S.C. § 112, ,r 2 as indefinite;
2. Claims 1, 3-7, 10-12, and 19-22 under 35 U.S.C. § I03(a) as
unpatentable over Zuber (US 2002/0051901 Al, published May 2, 2002),
Wilkinson (US 2001/0041281 Al, published Nov. 15, 2001), and Mussell
(WO 97/13287, published Apr. 10, 1997), as evidenced by Advanced
Composite Materials ("Advanced") ( of record);
3. Claims 1, 3-7, 10-12, and 22 3 under 35 U.S.C. § I03(a) as
unpatentable over Mathias (US 2005/0042500 Al, published Feb. 24, 2005),
Zuber, and Mussell.
3 The Examiner's header includes claim 2 as subject to this rejection, but the
Examiner includes no analysis of claim 2. See Ans. 13. Claim 2 has been
cancelled and is not before us in this appeal. See, e.g., Br. 15 ( Claims
Appendix).
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Application 13/078, 168
ANALYSIS 4,5
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm for reasons set forth below, in the Final
Office Action, and the Examiner's Answer. See Final Act. 3-23; Ans. 3-24.
Rejection 1
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). "[W]hen the USPTO has initially
issued a well-grounded rejection that identifies ways in which language in a
claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly reject the
claim as failing to meet the statutory requirements of§ 112(b )." In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014); see also In re Zietz, 893
F.2d 319, 321 (Fed. Cir. 1989) ("[D]uring patent prosecution when claims
4 At the oral hearing, counsel for the Appellants identified a related case that
has issued as a patent (U.S. Patent No. 9,847,535). The related case was not
identified in the Appeal Brief, and the Appellants have not argued that any
portion of the prosecution of the related case indicates error in the rejections
that are before us in this appeal.
5 We decline to consider arguments that were made at the oral hearing but
that do not appear in the Appeal Brief. See 3 7 C.F .R. 41.4 7 ( e) ("At the oral
hearing, appellant may only ... present argument that has been relied upon
in the brief or reply brief except" under limited circumstances not present
here.).
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can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.").
The Examiner concludes that claim 22 is indefinite because it recites
both ( 1) "an inherent high stiffness direction which is not parallel with the
length direction of the compressible GDL," and (2) "wherein the inherent
high stiffness direction is a machine direction of the roll of GDL material."
Ans. 2. According to the Examiner, "[t]he machine direction of the roll of
GDL material is parallel to the length of the GDL. The orientation of the
inherent high stiffness is only changed when it is cut from the roll of GDL
and inserted into the final product." Id. at 2-3 (emphasis in original). The
Examiner determines that the high stiffness direction cannot be both "not
parallel with the length direction" and also "a machine direction of the roll,"
and that the claim is therefore "contradictory and indefinite." Id. at 2-3.
The Appellants concede that "the machine direction of the roll of
GDL material is ... parallel to the length direction of the roll of GDL
material." Br. 8 (emphasis added). However, the Appellants distinguish
between GDL that remains on the roll of GDL material and GDL that has
already been cut from the roll and inserted into a final product. Id. The
Appellants argue that "the inherent high stiffness direction formed in the cut
compressible GDL can be 'not parallel' to the length direction of the
compressible GDL," and that "the orientation of the inherent high stiffness
can be changed when it is cut from the roll of GDL and inserted into a final
product." Id. ( emphases added).
That argument is not persuasive because, even assuming that the
stiffness direction can be changed after the GDL is cut from the roll, the
claim at issue expressly recites "the inherent high stiffness direction is a
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machine direction of the roll of the GDL material" ( emphasis added). Thus,
notwithstanding the fact that claim 22 is ultimately directed to a fuel cell
stack rather than to a roll of GDL material, the claim recites the stiffness
direction in terms of the GDL when it remains on the roll. Because the
Appellants agree with the Examiner that the machine direction is the length
direction, Br. 8, the recitations at issue lack clarity because they appear to
require the high stiffness direction to simultaneously be "not parallel" and
parallel to the same direction. On this record, we are not persuaded of
reversible error in the Examiner's rejection. See Packard, 751 F.3d at 1311;
Zietz, 893 F.2d at 321.
Rejection 2
The Appellants present separate arguments for claims 1, 3, and 22.
We address those claims below, and the remaining claims subject to
Rejection 2 will stand or fall with claim 1.
Claim 1. The Examiner concludes the subject matter of claim 1
would have been obvious in view of Zuber, Wilkinson, Mussell, and
Advanced. With respect to the arrangement of the stiffness direction being
"not parallel" to the major flow field direction of the bipolar plate (i.e.,
"length direction"), the Examiner finds that Zuber teaches that the
orientation (weave direction) of its carbon fiber fabric is "at an angle of 20
to 70 degrees, preferably 30-60 degrees, and particularly 45 degrees to the
flow channels of the bipolar plates." Ans. 4 (internal citations omitted). The
Examiner finds that Zuber teaches that the purpose of that orientation is to
"prevent[] penetration of the fabric into the gas distribution channels" of the
bipolar plate. Id. The Appellants' Specification expresses concern for the
same ISsue. See, e.g., Spec. 5 ("[W]hen the stiffness of a gas diffusion layer
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Application 13/078, 168
106 is deficient in a fuel cell ... the GDL 106 may intrude into a flow field
channel 202 of a bipolar plate").
The Examiner acknowledges that Zuber does not expressly refer to a
"stiffness direction" of its fabric, but the Examiner finds that Advanced
teaches that the stiffness direction of a fabric is the direction of the fabric's
fibers. Ans. 4. The Examiner reproduces Figure 3 of Zuber showing that
the direction of Zuber's fibers, i.e., the stiffness direction, is not parallel with
the major flow field direction of Zuber's bipolar plate (i.e., not parallel with
the length direction). Id. at 5. The Examiner finds that Zuber explicitly
teaches that the purpose of such an orientation is to reduce penetration of the
fabric into the gas distribution channels. Id.; see also Zuber ,r 19
("penetration of the fabric into the gas distribution channels and hence
obstruction of the gas flow in the channels is further reduced").
The Examiner finds that Wilkinson similarly teaches a nonwoven
GDL with a "grain," and that orienting the grain, i.e., the stiffness direction,
of the GDL to be "not parallel" to the flow field channels reduces
obstruction of the field flow channels. Ans. 6 ( citing Wilkinson ,r,r 12, 14,
18, 19).
The Examiner determines that both references teach that
"[f]undamentally, the fiber orientation/grain/high stiffness/machine direction
should not be parallel to the channels," and that it would have been obvious
to use a nonwoven GDL having a strength in one direction, as described by
Wilkinson, in Zuber's fuel cell because it would be the use of known GDL
materials according to their established functions with predictable results.
See Ans. 8-9.
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In view of those and other findings, the Examiner concludes that the
subject matter of claim 1 would have been obvious. Ans. 3-11.
The Appellants first argue that Zuber discloses only a "weave
direction" and not a stiffness direction. Br. 9. The Appellants assert,
without persuasive elaboration, that a person of ordinary skill "would have
readily not recognized or considered that a weave direction can indicate
which direction can have higher stiffness in one direction, because, inter
alia, GDL material in ZUBER is a woven fabric made of at least two
directional fibers." Id.
That argument is not persuasive. As set forth above, the Examiner
finds that Advanced teaches that the stiffness direction of a fabric is the
direction of the fabric's fibers. Ans. 4. The Appellants do not address
Advanced or otherwise attempt to show error in the Examiner's findings
concerning Advanced.
The fact that Zuber's woven fabric may have two directional fibers is
also not persuasive of reversible error. See Br. 9. As explained above, the
Examiner finds that it would have been obvious to use a nonwoven GDL
with strength in one direction in view of Wilkinson. See Ans. 9. Similar to
Zuber, Wilkinson teaches that "diffusion layers may comprise carbon
fibres." Wilkinson ,r 19. The Appellants do not dispute that Wilkinson
discloses nonwoven GDLs that have strength in one direction. Instead, the
Appellants argue, without meaningful elaboration, that a person of ordinary
skill in the art would not have combined Zuber and Wilkinson "because no
similar property between the woven fabric and the nonwoven fabric can be
readily recognized, for example, between weave direction and grain, as
being used in a compressible GDL in a fuel cell." Br. 9. That argument is
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not persuasive because it does not address or show error in the Examiner's
findings and conclusions concerning that issue. See Ans. 6-9; Final Act. 5-
9 ( describing Zuber and Wilkinson and determining that a person of ordinary
skill "would have recognized ... that nonwoven GDL materials [ such of
Wilkinson] are equivalents of woven GDL materials [ such of Zuber] and
that, in view of Zuber et al., the angle of a nonwoven oriented fiber grain
with respect to the bipolar plate channels should be optimized to [be]
between 20 and 70 degrees and preferably 45 degrees in order to prevent
intrusion of the material into the channels."); see also In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's rejections
.... ").
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claim 1.
Claims 3 and 22. Claims 3 and 22 recite that an angle of the stiffness
direction with respect to the major flow field direction is between 60 and 90
degrees.
As noted above, in the Examiner's discussion of claim 1, the
Examiner finds that Zuber teaches that "[t]he weave direction (i.e.
orientation) of the carbon fiber fabric is oriented at an angle of 20 to 70
degrees, preferably 30-60 degrees, and particularly 45 degrees to the flow
channels of the bipolar plates." Ans. 4 (citing Zuber ,r 19, ,r 33, claim 4,
claim 5, and Fig. 3). The Examiner also finds that it would have been
obvious to use Wilkinson's GDL arranged at the same disclosed angles in
the fuel cell of Zuber. See Ans. 6-9.
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The Appellants' argument with respect to claims 3 and 22 is that
Zuber "fails to indicate the claimed range ... between the stiffness direction
and the length direction of the compressible GDL. For instance, ZUBER
indicates orientation of the weave direction from 20° to 70°, which simply
corresponds to 20° to 45° due to bidirectional fabric orientation." Br. 10
( emphasis added).
That argument is not persuasive because it does not address the
Examiner's rejection based on the combination of Zuber and Wilkinson. See
In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references."). The Appellants do
not allege that Wilkinson's GDL is bidirectional or otherwise dispute that
the combination of Zuber and Wilkinson teaches or suggests a range of
angles that overlaps the claimed range of 60 to 90 degrees. See Br. 10. On
this record, we are not persuaded of error in the Examiner's rejection of
claims 3 and 22. See Jung, 637 F.3d at 1365.
Rejection 3
The Appellants present arguments only as to claim 1. We address
those arguments below. The remaining claims subject to Rejection 3 will
stand or fall with claim 1.
The Examiner concludes that the subject matter of claim 1 would have
been obvious in view of Mathias, Zuber, and Mussell. Ans. 13-16. Of
particular relevance to the issues before us, the Examiner finds that Mathias
teaches a GDL that "has a stiffness in a width direction perpendicular to a
major flow field direction of a bipolar plate [that] is perpendicular to the
flow field channels," and that "[i]t is clear that a major flow field direction
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of the bipolar plate is not parallel with the high stiffness direction (transverse
direction) of the gas diffusion layer." Id. at 13-14 (internal citations
omitted). The Examiner finds, however, that Mathias does not teach "the
details of the compressible GDL structure." Id. at 14. The Examiner finds
that Zuber teaches a compressible GDL structure that falls within the scope
of claim 1, and that it would have been obvious to substitute Zuber's GDL
for that of Mathias because Mathias "do[ es] not teach a specific construction
of GDL material and Zuber et al. and [Mussell] teach a well-known
successful GDL construction intended for use in PEM fuel cells (same type
as disclosed by Mathias et al.)." Id. at 16.
The Appellants first argue that Mathias "does not teach a
compressible GDL structure." Br. 11. That argument is unpersuasive
because, as set forth above, the Examiner proposes the use of Zuber's
compressible GDL in the fuel cell of Mathias. See Keller, 642 F.2d at 426
("[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.").
The Appellants next state, with no elaboration, that a person of
ordinary skill in the art "would have not considered that a woven diffusion
layer in ZUBER can readily replace the substantially incompressible
diffusion layer of MA THIA[ S]." Br. 11. That argument is not persuasive
because it is attorney argument unsupported by technical reasoning or
evidence, and it fails to rebut or meaningfully address the Examiner's
determination that one known GDL (that of Zuber) could be substituted for
another known GDL (that of Mathias) in a similar PEM fuel cell application.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
argument in a brief cannot take the place of evidence."); see also Jung, 637
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F.3d at 1365; In re Fout, 675 F.2d 297,301 (CCPA 1982) ("Express
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.").
We understand the Appellants' final argument to be that Zuber' s
compressible GDL does not have "a stiffness direction of the compressible
GDL ... arranged in one direction" ( emphasis added), as required by claim
1, because Zuber's GDL is bidirectional. Br. 11-12.
In the Final Action, the Examiner determines that the claim requires
only "strength in at least one direction," and that the claim language does not
preclude stiffness in both a first direction and a second direction; in other
words, the claim does not require a stiffness direction in only one direction.
Final Act. 20. The Examiner determines that Zuber teaches a compressible
GDL that has a stiffness in two directions, and that at least one of the
stiffness directions is not parallel with the length direction and therefore falls
within the scope of the claim. Id.
The Appellants do not respond to that interpretation of the claim or
otherwise assert error in it. See Br. 13. On this record, the Appellants have
not identified reversible error in the rejection. See Jung, 637 F.3d at 1365.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 3-7, 10-12, and
19-22.
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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