Ex Parte Kim et al

Patent Trial and Appeal Board

Jul 20, 2016

12755062 (P.T.A.B. Jul. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121755,062 04/06/2010
8439 7590 07/22/2016
ROBERT E BUSHNELL & LAW FIRM
2029 K STREET NW
SUITE 600
WASHINGTON, DC 20006-1004
FIRST NAMED INVENTOR
HEE-TAK KIM
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.
P57680A 7888
EXAMINER
WANG, EUGENIA
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
07/22/2016 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):
rebushnell@aol.com
mail@rebushnell.com
info@rebushnell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEE-TAK KIM, HAE-KWON YOON, and YOUNG-MI PARK
Appeal2014-006724
Application 12/755,062
Technology Center 1700
Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY and
JENNIFER R. GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
July 29, 2013 decision finally rejecting claims 11 and 15 ("Final Act."). 2 We
have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was
held on July 14, 2016. A transcript of that hearing will be made part of the
record.
We reverse.
1 Appellants identify the Real Party in Interest as Samsung SDI Co., Ltd.
(Appeal Br. 3).
2 Claims 14 and 34 were originally part of this appeal (Appeal Br. 1 ), but
were cancelled in an Amendment filed February 14, 2014, and entered by
the Examiner (Ans. 2).
Appeal2014-006724
Application 12/755,062
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a method for manufacturing a
membrane-electrode assembly (Spec. 32). Details of the claimed method are set
forth in claim 11 as reproduced below from the Claims Appendix (emphasis
added):
11. A method for manufacturing a membrane-electrode
assembly, comprising:
preparing an anode and a cathode, at least one of the
anode and the cathode comprising:
a catalyst layer comprising a catalyst and a porous
ionomer layer, the catalyst layer formed by a process
compnsmg:
preparing a catalyst slurry comprising the catalyst,
an ionomer, a plasticizer, and a dispersion solvent, wherein the
plasticizer is at least one polymer selected from the group
consisting of a C 1 to C 10 polyalkyleneglycol; a C 1 to C 10
poly(alkyl)acrylic acid; an aromatic or fluorine polymer having
a sulfonic acid group; and a cellulose-based polymer, the
weight ratio of the plasticizer to the ionomer ranges from about
80:20 to 30:70;
coating the slurry onto an electrode substrate; and
extracting the plasticizer wherein the plasticizer is
extracted by dipping the coated electrode substrate in an
extraction solvent; and
the coated electrode substrate enabling a reactant to
diffuse into the catalyst layer; and
preparing a polymer electrolyte membrane interposed
between the anode and the cathode.
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Appeal2014-006724
Application 12/755,062
DISCUSSION
Claims 11 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchida3 in view of Beattie,4 Prakash,5 Kawahara, 6 and
Lussier.7 In view of the evidence of record and the findings and arguments set
forth in the Final Action, the Appeal Brief, the Answer, and the Reply Brief,
we determine that Appellants have shown reversible error in the rejection,
which we reverse.
In order to reject a claim in a patent application as obvious under
35 U.S.C. § 103(a), the Examiner must establish a prima facie case of
obviousness, including the presence of each element of the claim. In the
absence of a proper prima facie case of obviousness, an applicant who
complies with the other statutory requirements is entitled to a patent. In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also, In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). In this instance, we determine that the
preponderance of the evidence does not support a finding that the prior art
teaches, suggests, or renders obvious each of the limitations in claim 11.
The Examiner finds that Uchida teaches a method of making a
membrane electrode assembly (Final Act. 3). The Examiner finds that Uchida
does not disclose 5 different limitations set forth in claim 11 : (a) that the ion
conductive perfluorocarbonsulfonic acid formula (2) is an ionomer, (b) that
the pore-forming agent is a plasticizer as set forth in the claim, ( c) that the
weight ratio of plasticizer to ionomer ranges from about 20:80 to 70:30, (d)
3 Uchida et al., U.S. Patent Pub. 2003/0175579 Al, published September 18, 2003.
4 Beattie et al., U.S. Patent Pub. 2002/0058180 Al, published May 16, 2002.
5 Prakash et al., U.S. Patent Pub. 2003/0207167 Al, published November 6, 2003.
6 Kawahara, U.S. Patent Pub. 2001/0049048 Al, published December 6, 2001.
7 Lussier et al., U.S. Patent Pub. 2002/0051878 Al, published May 2, 2002.
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Appeal2014-006724
Application 12/755,062
that the slurry is coated onto the electrode substrate, and ( e) wherein the
plasticizer is removed via extracting.
We focus our discussion on difference ( e) (removal of plasticizer by
extraction). The Examiner finds that Kawahara teaches non-thermal methods
of removing pore forming materials, in particular camphor and naphthalene
(Final Act. 7 citing Kawahara, FIG. 1, i-fi-137, 39, 51, 52). The Examiner
further finds that Kawahara's method of non-thermal removal is "sublimation
using an alcoholic solvent" (id.). The Examiner also finds that Lussier teaches
that a cellulose-based pore former like methyl cellulose is equivalent to
naphthalene and would be expected to be able to sublimate like naphthalene
(Final Act. 8, citing Lussier, i-f 153). Therefore, according to the Examiner, it
would have been obvious "to sublime a pore-forming agent prior to
completion of the electricity-generating layer (instead of using the thermal
removing method of Uchida[] and Beattie[]) in order to effectively prevent
metal ions from remaining, to prevent lowering the performance of the
electrolyte, and to prevent the pore-forming agent from being locked inside
the electrode" (id.).
However, as argued by Appellants (e.g., Appeal Br. 13), Kawahara
does not disclose extracting the pore-former (i.e., the plasticizer) using an
extraction solvent. Instead, Kawahara teaches that its pore-former is removed
by sublimation (i.e., phase transition directly from a solid to a gas). 8
Sublimation of a substance by definition does not involve an extraction
solvent, since the substance must pass from being a solid directly to a gas.
8 See, e.g. Hawley's Condensed Chemical Dictionary, 13th Edition (1997)
("Sublimation: The direct passage of a substance from solid to vapor without
appearing in the intermediate (liquid) state ... ")
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Appeal2014-006724
Application 12/755,062
The Examiner finds that "Kawahara's extraction (via sublimation),
requires immersion in a solvent" (Ans. 15, citing Kawahara i-fi-137, 39, 51, 52).
However, the preponderance of the evidence does not support this finding.
The portions of Kawahara cited by the Examiner show that the sublimating
pore former is deposited while in solution using a solvent, but that the solvent
is evaporated or otherwise removed prior to sublimation of the pore former
(Kawahara, FIG. 1 (compare step SlOO with step S018), i139). The
Examiner's interpretation of Kawahara is at odds with the well-understood
meaning of the term "sublimation," as well as the specific disclosures of
Kawahara (e.g., i141).
Thus, the evidence of record does not support the Examiner's finding
that the art teaches, suggests, or otherwise renders obvious the claimed step of
"extracting the plasticizer wherein the plasticizer is extracted by dipping the
coated electrode substrate in an extraction solvent." In the absence of a
supported finding regarding this step, we reverse the obviousness rejection of
claim 11 (as well as dependent claim 15). Roujfet, 149 F.3d at 1355.
CONCLUSION
We REVERSE the rejection of claims 11 and 15.
REVERSED
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