Ex Parte Horiuchi et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10921313 (B.P.A.I. Jun. 18, 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.
10/921,313 08/19/2004 Michio Horiuchi 300.1176 8673
21171 7590 06/19/2012
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
LEWIS, BEN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
06/19/2012 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 MICHIO HORIUCHI, SHIGEAKI SUGANUMA,
and MISA WATANABE
____________

Appeal 2011-006465
Application 10/921,313
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1 and 4
directed to a solid electrolyte fuel cell. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. An open-type, planar solid electrolyte fuel-cell device having a
plurality of cathode layers and anode layers, comprising:

Appeal 2011-006465
Application 10/921,313

2
a single circular solid electrolyte substrate having surfaces
opposed to each other;

the plurality of cathode layers formed on one surface of said
single circular solid electrolyte substrate being exposed to the
atmosphere;

the plurality of anode layers formed on another surface of said
single circular solid electrolyte substrate opposite from said one
surface, so as to oppose respective, said cathode layers across said
single circular solid electrolyte substrate, being exposed to a flame in
a localized heated open atmosphere; and

each of the cathode layers and the anode layers having an area
which is defined by dividing a circle of said single circular solid
electrolyte substrate with a plurality of straight lines which runs
through a center of the circle,

wherein all of said cathode layers, said anode layers and said
electrolyte substrate are porous, and

wherein a porosity of said substrate is greater than 20%;

metal wires are embedded in or fixed to a surface of at least one
of said each cathode layer and said each anode layer,

a plurality of open-type fuel-cell units are formed in pairs of
respective said anode layers and said cathode layers, formed opposite
each other across said single circular solid electrolyte substrate, and
when said flame, formed by combustion of a fuel, is supplied to said
anode layers and oxygen included in the atmosphere is supplied to
said cathode layers, each of said plurality of open-type fuel-cell units
generates electric power, and

each of said anode layers is electrically connected with a metal
wire routed over an edge of said single circular solid electrolyte
substrate to said cathode layer next to the cathode layer facing said
each anode layer, and said plurality of open-type fuel-cell units are
connected in series.
Appeal 2011-006465
Application 10/921,313

3

The Examiner relies upon the following references in the rejection
(Ans. 3):1
Visco US 6,682,842 B1 Jan. 27, 2004
Badding US 6,852,246 Feb. 8, 2005
Gorte US 2004/0043272 A1 Mar. 4, 2004
Junji JP 06-0196176 Jul. 15, 20042

THE REJECTION
Claims 1 and 4 stand rejected under 35 U.S.C. § 103(a) as obvious over
Badding in view of Junji, Gorte, and Visco. Ans. 4.

ISSUE
Did the Examiner err in determining that the claimed subject matter,
and in particular, the claimed phrase “wherein a porosity of said substrate is
greater than 20%” of claims 1 and 4, is suggested by the applied art?
We answer this question in the affirmative and REVERSE.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claims 1 and 4 require, inter alia, a solid electrolyte substrate
“wherein a porosity of said substrate is greater than 20%.” The Examiner
finds that this limitation would have been obvious in view of Visco, which
discloses a “composite electrode structure containing the electrocatalyst”
having a porosity that “is preferably at least about 10 percent, more

1 Our analysis makes reference to the Examiner’s Answer mailed November
9, 2010 (“Ans.”) and the Appeal Brief filed September 9, 2010 (“App. Br.”).
2 We refer to the computer-generated English translation of Junji of record.
Appeal 2011-006465
Application 10/921,313

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preferably at least about 20 percent, and generally about 30%.” Ans. 7; see
id. 8-9 (citing Visco 6:24-35).
The Appellants contend that “the composite electrode structure”
containing the electrocatalyst in Visco is “not an ‘electrolyte substrate’” as
specified in claims 1 and 4. App. Br. 5, 9 (emphasis omitted). There is
agreement that Visco discloses an electrolyte film that is deposited onto an
electrode substrate “and the assembly is co-fired at a temperature suitable to
fully densify the film while the substrate retains porosity.” Ans. 6; App. Br.
5-6 (quoting Visco 2:41-45); see Visco 5:41-48. Thus, as the Appellants
point out, Visco discloses “a porous electrode in contact with a dense
electrolyte membrane.” App. Br. 6 (quoting Visco 2:52-55); Visco FIG. 2.
We find that Visco discloses firing or sintering conditions wherein
“the electrode material forms a porous layer.” Visco 5:51-52. We further
find that “an electrocatalytic precursor is then incorporated into the porous
sintered electrode,” which is “heated to operating temperature” to form “the
composite electrode structure containing the electrocatalyst.” Visco 5:53-54;
6:10-13, 24-25; FIG. 2. It is the porosity of that electrode structure (not the
densified electrolyte film) that “is preferably at least about 10 percent, more
preferably at least about 20 percent, and generally about 30%.” Id. 6:24-28.
On this record, we find as a matter of fact that the Examiner fails to
set forth adequate articulated reasoning with rational underpinning to
support the conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited approvingly in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)). Specifically, the Examiner fails to address the
Appellants’ argument that “Visco densifies the electrolyte film while the
electrode retains porosity.” App. Br. 5 (citing Visco 2:41-45) (emphasis in
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Application 10/921,313

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original); see Ans. 8-9. Where Visco discloses “a porous electrode in
contact with a dense electrolyte membrane,” Visco 2:52-55; 2:66-67; FIG. 2,
the applied art does not suggest an electrolyte substrate “wherein a porosity
of said substrate is greater than 20%” as specified in claims 1 and 4.
For the above reasons, the rejections of claims 1 and 4 cannot be
sustained.

REVERSED

sld