Ex Parte Madden et al

Patent Trial and Appeal Board

Apr 26, 2018

14123666 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/123,666 12/03/2013 Thomas H. Madden
500 7590 04/30/2018
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
P99310US.0/130609.583USPC 1050
EXAMINER
SHEIKH, HAROON S
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
04/30/2018 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS H. MADDEN and TIMOTHY W. PATTERSON
Appeal2017-007375
Application 14/123,666
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's June
17, 2016 decision finally rejecting claims 1-9, 11, and 13. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants state that the real party in interest is Audi AG (Appeal Br. 1 ).
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Application 14/123,666
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a method of manufacturing porous
bipolar plates with a flow field configuration (Spec. i-fi-f l, 3). Conventional
fuel cell plate manufacturing is said to be time-consuming and expensive
because an end milling machine is required to create the complex flow
geometries therein (id. at i12). According to the Specification, the described
plate manufacturing method provides an inexpensive fuel cell with an
interdigitated flow field therein, which provides increased fuel cell
performance (id. at i-fi-1 4, 19).
Claims 1 and 11 are representative and are reproduced below from the
Claims Appendix of the Appeal Brief (emphasis added):
1. A method of manufacturing a fuel cell assembly comprising:
providing flow channels in a plurality of fuel cell plates;
joining the plurality of fuel cell plates into a cell stack
assembly;
affixing a first blocking plate to the cell stack assembly so
that the first blocking plate is at least partially obstructing first
ends of the flow channels at a first side of the cell stack
assembly; and
affixing a second blocking plate to the cell stack assembly so
that the second blocking plate is at least partially obstructing
second ends of the flow channels at a second side of the cell
stack assembly, thereby forming interdigitated flow fields
within the cell stack assembly.
11. A fuel cell comprising:
a fuel cell plate having a perimeter providing a first edge and
a second edge opposite the first edge, the fuel cell plate
including flow channels extending to the first edge and to the
second edge;
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Application 14/123,666
a first blocking plate affixed to the fuel cell plate at the first
edge to at least partially block first ends of every other one of
the flow channels; and
a second blocking plate affixed to the fuel cell plate at the
second edge to at least partially block second ends of flow
channels unblocked by the first blocking plate.
Appeal Br. 12, 13 (Claims App'x).
REJECTIONS
(1) Claims 1--4, 6-8, 11 and 13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Roser2 in view of Darling. 3
(2) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Roser in view of Darling, and further in view of Chubb. 4
(3) Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Roser in view of Darling, and further in view of Pien. 5
DISCUSSION
Rejection (1)
Appellants' basic argument seeking reversal of the rejection is that the
Examiner's applied prior art fails to teach or suggest the features of claims 1
and 11 (Appeal Br. 7-11; Reply Br. 2-3).
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
2 Roser, DE 102007021909 Al, published Nov. 13, 2008. We follow the
Examiner and Appellants in relying upon and citing a translation that is of
record.
3 Darling, WO 2010/082931 Al, published July 22, 2010.
4 Chubb, US 1,348,206, issued Aug. 3, 1920.
5 Pien et al., US 2002/0110719 Al, published Aug. 15, 2002.
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subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). Furthermore, the Examiner must articulate some
"reasoning with some rational underpinning to support the legal conclusion
of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This
reasoning must show that "there was an apparent reason to combine the
known elements in the fashion claimed." KSR Int 'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The apparent reason need not appear in one or more
of the references on which the examiner relies. Instead, the examiner when
analyzing the evidence may employ common sense not inconsistent with the
ordinary level of knowledge and skill in the art at the time of the invention.
Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009).
We have reviewed the arguments and evidence presented by
Appellants in the Briefs seeking reversal of the obviousness rejection, and
conclude that Appellants have not shown reversible error in the appealed
rejection, essentially for the reasons set forth in the Final Action and the
Answer. We add the following primarily for emphasis.
Appellants explain why each of the cited references differs from the
claimed invention (see, e.g., Appeal Br. 9 (distinguishing Darling); Reply
Br. 3 (distinguishing Roser)). However, it is well established that "one
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cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on a combination of references." In re Keller,
642 F.2d 413, 426 (CCPA 1981).
For example, Appellants acknowledge that Roser generally teaches
the arrangement of metering units extending over two or more fuel cell stack
sides (Reply Br. 3). However, Appellants argue that Roser fails to disclose
or suggest: (1) "affixing first and second blocking plates to opposite sides of
a cell stack assembly to form an interdigitated flow field, as currently recited
in claim 1," and/or (2) "to block first ends of every other one of the flow
channels with the first blocking plate and block second ends of flow
channels unblocked by the first blocking plate with the second blocking
plate, as currently recited in claim 11" (id.).
This argument is not persuasive of reversible error, as the Examiner
relies on Darling to teach these features. As the Examiner finds, Darling
teaches that an interdigitated flow field facilitates a desirable balance of
water generation and flow through the polymer membrane, thereby
improving fuel cell performance (see Ans. 3--4). We agree with the
Examiner that it would have been obvious for one of ordinary skill in the art
to incorporate Darling's concept of forming an interdigitated flow field to
realize this known advantage by modifying Roser' s dual blocking plate
design (id. at 6).
Appellants argue that the claimed method of manufacturing fuel cell
assemblies and, thus, the fuel cell itself "is significantly less expensive" than
Darling's method of manufacturing fuel cell assemblies (Appeal Br. 9, 10).
However, Appellants' argument regarding the claimed invention's allegedly
inexpensive features are not persuasive because the manufacturing costs are
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not claimed. "Many of appellant's arguments fail from the outset because
... they are not based on limitations appearing in the claims .... " In re
Self, 671F.2d1344, 1348 (CCPA 1982). Moreover, these cost advantages
would necessarily be realized if the art were combined in the fashion
envisioned in the rejection.
Appellants' arguments that Darling's teachings are merely limited to
"flow field plates with integrated ribs that define or establish an
interdigitated flow field within the periphery of the flow field plates
themselves" (Appeal Br. 9) do not refute the Examiner's reasoning for
making the required combinations, but merely point out differences between
the cited references and the claimed invention. Such arguments are not
persuasive because the rejection is based on a combination of references. In
re Keller, 642 F .2d at 426.
Furthermore, Appellants' argument is unpersuasive because it does
not address the Examiner's rationale for modifying Roser' s second blocking
plate, i.e., to improve fuel cell performance through use of an interdigitated
flow field (see Ans. 3--4). Rather, Appellants' argument is directed to
whether it was improper for the Examiner to combine Roser with Darling
when the latter reference discloses integrated ribs, which are undisclosed by
Roser.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d at 425.
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For the foregoing reasons, we affirm the obviousness rejection of
claims 1 and 11. Dependent claims 2--4, 6-8, and 13 fall with their
respective independent claim. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Rejections (2) and (3)
Appellants do not offer separate arguments in support of claims 5 and
9 (Appeal Br. 10). Accordingly, dependent claims 5 and 9 fall with
independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
We AFFIRM the rejection of claims 1--4, 6-8, 11 and 13 under 35
U.S.C. § 103(a) as unpatentable over Roser in view of Darling.
We AFFIRM the rejection of claim 5 under U.S.C. § 103(a) as
unpatentable over Roser in view of Darling, and further in view of Chubb.
We AFFIRM the rejection of claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Roser in view of Darling, and further in view of Pien.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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