Ex Parte Jeon et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10173825 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOOCHARN JEON and ALFRED I-TSUNG PAN
____________

Appeal 2009-005140
Application 10/173,825
Technology Center 1700
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 7, 9 through 11, 15, 16, 18, 19, 21, 38, 44
through 47, 49 through 52, and 54, all of the pending claims in the above-
identified application.2 We have jurisdiction under 35 U.S.C. §§ 6 and 134.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

2 See page 2 of the Appeal Brief (“App. Br.”) filed April 21, 2008.
Appeal 2009-005140
Application 10/173,825

STATEMENT OF THE CASE
The subject matter on appeal is directed to “metal-coated polymer
electrolyte membranes, and in particular, to metal-coated polymer
electrolyte membranes with a microtextured surface” (Spec. 1, ll. 2-3).
According to page 3, lines 16-20, of the Specification, the microtextured
surface is said to help “the metal coating to relieve surface tension and to
prevent expansion induced cracking of the metal coating.” Details of the
appealed subject matter are recited in representative claim 1 reproduced
from the Claims Appendix to the Appeal Brief as shown below:
1. A method for producing a metal-coated polymer electrolyte
membrane, said method comprising:

fabricating a mold having a microtextured surface;

producing a microstructure on a surface of a polymer electrolyte
membrane using the mold having the microtextured surface; and

depositing a metal film on the microtextured surface of the polymer
electrolyte membrane,

wherein the metal film is permeable to protons and hydrogen and
impermeable to hydrocarbon fuel and wherein the metal film comprises a
first metal layer comprising a first metal material and a second metal
layer comprising palladium.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at pages 2 and 3 of the
Answer (“Ans.”) dated July 9, 2008:
Krostewitz US 3,615,948 Oct. 26, 1971
Asano US 4,502,931 Mar. 5, 1985
Serpico US 5,677,074 Oct. 14, 1977
Debe US 5,879,828 Mar. 9, 1999
Mittelstadt US 6,869,712 B2 Mar. 22, 2005
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Application 10/173,825

The Examiner set forth the following grounds of rejection at pages 3
through 6 of the Answer:
1) Claims 1, 7, 9 through 11, 15, 16, 18, 19, 21, 38, 44 through 47,
49 through 52 and 54 under 35 U.S.C. § 103(a) as unpatentable over
Mittelstadt;
2) Claims 1, 7, 9 through 11, 15, 16, 18, 19, 21, 38, 44 through 47,
49 through 52 and 54 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Mittelstadt and Krostewitz;
3) Claims 1, 7, 9, 38, 44 and 45 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Asano, Debe and Mittelstadt;
and
4) Claims 1, 7, 9, 38, 44 and 45 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Asano, Debe, Mittelstadt and
Krostewitz.
DISCUSSION
Having carefully reviewed the record, including the Specification, the
claims on appeal, and the prior art relied upon by the Examiner, we adopt
the Examiner’s findings at pages 3 through 16 of the Answer as our own and
add the following for emphasis and completeness. 3

3 Appellants do not argue any of the claims on appeal separately (App. Br. 8-
33). Therefore, for purposes of this appeal, we select claim 1 and decide the
propriety of the Examiner’s § rejections set forth in the Answer based on this
claim alone. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims
subject to the same ground of rejection are argued as a group by appellant,
the Board may select a single claim from the group of claims that are argued
together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.”).

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Application 10/173,825

Appellants do not dispute the Examiner’s finding that Mittelstadt
teaches “a method of producing a metal-coated polymer electrolyte
membrane where a texture mold is used to imprint a generally pyramidal
shaped texture [corresponding to the claimed microstructure] on the
membrane.” (Compare Ans. 3 with App. Br. 8-32; see also Mittelstadt, col.
5, ll. 38-48 and col. 6, ll. 5-11.) Nor do Appellants dispute the Examiner’s
finding that Mittelstadt teaches depositing a catalytic metal, such as platinum
or other metal of interest, with or without a conductive metal, on the
microstructure surface of the polymer electrolyte membrane. (Compare
Ans. 4 with App. Br. 8-32; see also Mittelstadt, col. 5, ll. 19-24 and 38-48.)
Rather, Appellants contend that one of ordinary skill in the art would not
have been led to deposit palladium, which is permeable to protons and
hydrogen and impermeable to hydrocarbon fuel, on the microstructure
surface of the polymer electrolyte membrane (App. Br. 8-32).
Thus, the dispositive question is: Has the Examiner erred in
determining that one of ordinary skill in the art would have been led to
deposit palladium on the microstructure surface of the membrane taught by
Mittelstadt within the meaning of 35 U.S.C. § 103(a)? On this record, we
answer this question in the negative.
Mittelstadt clearly teaches (col. 4, ll. 49-52):
The membrane with laser roughened surface may be used
in applications such as fuel cells, batteries, and other catalysis
systems where a high surface area to volume ratio is desirable.

In other words, Mittelstadt’s invention lies in utilizing a polymer electrolyte
membrane having a microstructure surface to provide a large surface area for
any known metal coating. Although Mittellstadt broadly discloses
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Appeal 2009-005140
Application 10/173,825

depositing platinum or any metal of interest on the microstructure surface of
the polymer electrolyte membrane as indicated supra, it does not specifically
mention palladium as one of the metal of interest or catalytic metal as
acknowledged by the Examiner (Ans. 3-5). The Examiner, however, took
the official notice at page 4 of the Answer that “[p]alladium is known in the
[electrochemical] art to be a catalyst material and falls within the same
group as both gold and platinum.” Appellants do not specifically challenge
this official notice taken by the Examiner and state at page 11 of the Appeal
Brief that:
Appellants are not claiming they invented palladium-the
palladium layer used in the specific microtextured environment
is in part what is claimed as the invention….

Indeed, Appellants also acknowledge at pages 2 through 4 of the
Specification that one known approach to block fuel crossover in a
conventional polymer electrolyte membrane is applying a thin layer of metal
or catalyst, including palladium “known to be permeable to proton/hydrogen
but impermeable to hydrocarbon fuel molecules,” on a polymer electrolyte
membrane. The Examiner also correctly finds at page 5 of the Answer that
Krostewitz teaches that catalysts such as platinum and palladium can be
interchangeably applied on the surface of a fuel electrode (membrane) used
in fuel cells (col. 4, ll. 11-34 and col. 6, ll. 58-73). We find that Krostewitz,
like Mittelstadt, also teaches that such catalysts can also be used on both
sides of the membrane (Krostewitz, col. 4, ll. 45-75 and Mittelstadt, col. 6,
ll. 5-11).
Given these teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ conventional metal
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Appeal 2009-005140
Application 10/173,825

coatings of polymer electrolyte membranes, such as palladium and platinum,
on the microstructure surface of the polymer electrolyte membrane taught by
Mittelstadt, motivated by a reasonable expectation of successfully applying
an increased amount of palladium on an increased surface area represented
by the microstructure surface of the membrane. KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007)(quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976)(“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as
some [reason,] motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
reference be combined for the reasons contemplated by the inventor.")
On this record, Appellants have not proffered any objective evidence
that the use of palladium coating, rather than platinum coating, on the
membrane taught by Mittelstadt imparts unexpected results. Nor have
Appellants proffered any objective evidence that one of ordinary skill in the
art would not have been led to employ palladium coating on the polymer
electrolyte membrane of the type taught by Mittelstadt.
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the subject matter recited in claims 1, 7, 9 through 11, 15, 16, 18, 19, 21, 38,
44 through 47, 49 through 52, and 54 within the meaning of 35 U.S.C.
§ 103(a).
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Appeal 2009-005140
Application 10/173,825

ORDER
In view of the foregoing, 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) (2008).

AFFIRMED

tc

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