Ex Parte James et al

Board of Patent Appeals and Interferences

Aug 14, 2012

11594600 (B.P.A.I. Aug. 14, 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.
11/594,600 11/08/2006 Ronald L. James GP-306665-FCAR-CHE 6602
65798 7590 08/15/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
BEST, ZACHARY P
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
08/15/2012 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 YUICHIRO ITAI
________________

Appeal 2011-003606
Application 11/594,600
Technology Center 1700
________________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5, 7-9, 11-21,
and 23-25. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method for constructing a membrane electrode assembly/subgasket
assembly, comprising:

providing a subgasket member;

providing an adhesive layer on a surface of the subgasket member;
Appeal 2011-003606
Application 11/594,600

2
forming the subgasket member into a desired configuration, wherein
an area defining an aperture is formed in a central area of the surface of
subgasket member;

securing the subgasket member to a first platen member;

providing a catalyst coated membrane member, wherein a catalyst
layer is provided in a central area of the membrane member, said catalyst
layer including an edge configuration substantially identical to an edge
configuration of the aperture;

securing the catalyst coated membrane member to a second platen
member; and

manipulating the first and second platen members so that the adhesive
layer contacts the membrane member of the catalyst coated membrane
member and the catalyst layer overlaps a portion of the adhesive layer or the
subgasket member.

The Examiner relies upon the following reference in the rejection of
the appealed claims (Ans. 3):
Chow 5,284,718 Feb. 08, 1994

Appellant’s invention is directed to a method for constructing a
membrane electrode assembly/subgasket assembly.
Appealed claims 1-5, 7-9, 11, 13-18, 20, 21, 23 and 25 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Chow. Claims 12, 19, and
24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Chow. 
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we find no error in the Examiner’s
§ 102 rejection of claims 1-5, 8-9, 11, 13-16, 18, 20-21 and 25. We will not
sustain, however, the Examiner’s § 102 rejection of claims 7 and 17. We
Appeal 2011-003606
Application 11/594,600

3
will sustain the Examiner’s § 103 rejection of claims 12, 19 and 24. Our
reasoning follows:
We consider first the Examiner’s § 102 rejection of claims 1-5, 8-9,
11, 13-16, 18, 20-21 and 25. There is no dispute that Chow, like Appellant,
discloses a method for constructing a membrane electrode
assembly/subgasket assembly. Appellant’s arguments to the contrary
notwithstanding, we agree with the Examiner that Chow provides a catalyst
coated membrane member by applying the catalyst to membrane (43) with
the carbon fiber paper (50). We do not subscribe to Appellant’s argument
that there is a difference between the claimed catalyst coated membrane and
the membrane of Chow which has a catalyst coated electrode pressed against
it (App. Br. 8, last para.). The membrane of Chow receives the catalyst
coating from the carbon fiber paper electrode. As explained by the
Examiner, Appellant’s argument regarding fixing the edge of the catalyst
region on the membrane by the subgasket is not germane to the claimed
subject matter which recites no such fixing.
We also agree with the Examiner that Figure 5 of Chow depicts the
catalyst layer 54 overlapping a portion of the adhesive 61 in the channel 60
due to the tapered configuration of the aperture. It can be seen that the
portion of the adhesive farthest away from the catalyst is in an overlapping
relationship. Appellant’s argument that Chow’s gasket 63 cannot cover or
overlap part of the catalyst layer does not address the Examiner’s position
that portions of Chow’s adhesive overlap the catalyst layer.
We will not sustain the Examiner’s § 102 rejection of claims 7 and 17
which require aligning a location data on the edge configuration of the
catalyst layer with a location data at the edge configuration of the aperture of
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Application 11/594,600

4
the gasket. Appellant correctly points out that the section of Chow cited by
the Examiner uses guide pins, or location data, located on assembly fixtures
and not data points on the elements being assembled, i.e., the catalyst layer
and the subgasket.
Turning to the Examiner’s § 103 rejection of claims 12, 19 and 24
over Chow, we concur with the Examiner that it would have been obvious
for one of ordinary skill in the art to size the catalyst coated membrane
smaller than or larger than the peripheral configuration of the subgasket
member. As noted by the Examiner, “it is well known in the art that the cost
of catalyst as well as membrane materials are far greater than the cost of
gasketing materials in fuel cell systems” (Ans. 10, first para.), thereby
motivating one of ordinary skill in the art to minimize the amount of catalyst
used. We note that Appellant bases no argument on objective of
nonobviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner’s § 102 rejection
of claims 1-5, 8-9, 11, 13-16, 18, 20-21 and 25 is sustained, as is the
Examiner’s § 103 rejection of claims 12, 19 and 24. The Examiner’s § 102
rejection of claims 7 and 17 is reversed. Accordingly, the Examiner’s
decision rejecting the appealed claims is affirmed-in-part.

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)(iv).
AFFIRMED-IN-PART

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