Ex Parte Mikhail et al

Board of Patent Appeals and Interferences

Jan 12, 2012

11196632 (B.P.A.I. Jan. 12, 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.
11/196,632 08/03/2005 Youssef M. Mikhail GP-305881 4922
65798 7590 01/12/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
YANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
01/12/2012 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 YOUSSEF M. MIKHAIL,
MAHMOUD H. ABD ELHAMID,
and GAYATRI VYAS
____________
Appeal 2010-009835
Application 11/196,632
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-3, 5-9, and 11-22. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
Appeal 2010-009835
Application 11/196,632

2
Appellants claim a fuel cell comprising a bipolar plate 18, 30 and an
MEA (i.e., membrane electrode assembly) including a catalyst layer 22, 26
and a diffusion media layer 20, 24 and a decomposition catalyst (e.g.,
ruthenium oxide) which decomposes hydrogen peroxide and which is
formed as a layer on the bipolar plate, the MEA and the diffusion media
layer (claim 1; Fig. 1). Appellants also claim an alternative fuel cell
embodiment comprising an anode-side bipolar plate and an MEA including
a catalyst layer, wherein the bipolar plate and the MEA include a layer of
ruthenium oxide facing the MEA for decomposing hydrogen peroxide (claim
11). Finally, Appellants claim a fuel cell stack comprising a plurality of
bipolar plates, MEAs and diffusion media layers wherein all of the bipolar
plates, the MEAs and the diffusion media layers include a ruthenium oxide
layer that decomposes hydrogen peroxide (claim 17).
Representative claims 1, 11, and 17, which are all of the independent
claims on appeal, read as follows:
1. A fuel cell comprising:

at least one bipolar plate;

an MEA including a catalyst layer; and

a diffusion media layer positioned between the MEA and the at least
one bipolar plate, wherein each of the at least one bipolar plate, the diffusion
media layer and the MEA include a decomposition catalyst that decomposes
hydrogen peroxide, where the decomposition catalyst is formed as a layer on
the at least one bipolar plate, the MEA and the diffusion media layer.

11. A fuel cell comprising:

an anode-side bipolar plate; and

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Application 11/196,632

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an MEA including a catalyst layer, said bipolar plate and said MEA
including a layer of ruthenium oxide facing the MEA for decomposing
hydrogen peroxide.

17. A fuel cell stack including a stack of fuel cells, said stack
comprising:

a plurality of bipolar plates;

a plurality of MEAs each including a catalyst layer; and

a plurality of diffusion media layers positioned between the MEA and
the bipolar plates, wherein all of the bipolar plates, the diffusion media
layers and the MEAs include a ruthenium oxide layer that decomposes
hydrogen peroxide.

The references listed below are relied upon by the Examiner in the
rejections before us:
Horiguchi US 2003/0039875 A1 Feb. 27, 2003
Hampden-Smith US 2004/0038808 A1 Feb. 26, 2004
Bekkedahl US 2004/0106034 A1 Jun. 3, 2004
Brady US 2005/0238873 A1 Oct. 27, 2005

The Examiner rejects the appealed claims1 as follows:
claims 1-3, 5, 6, 8, 11-13, 15, and 17-21 under 35 U.S.C. § 102(b) as
anticipated by Hampden-Smith;

1 The following claim informalities are deserving of correction.
Claims 5 and 6 depend from now canceled claim 4. The appealed claims
include two claims which are denominated as claim "21", and these two
claims contain different limitations. Further, claim 22 depends from claim
"21" which might be referring to either or both of the so-denominated
claims.
Appeal 2010-009835
Application 11/196,632

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claims 7, 14, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Hampden-Smith in view of Brady; and
claims 1-3, 5-9, and 11-22 under 35 U.S.C. § 103(a) as unpatentable
over Hampden-Smith in view of Horiguchi and Bekkedahl.
For each of the above rejections, the Examiner finds that Hampden-
Smith discloses a fuel cell comprising an MEA including layers of electro-
catalyst materials wherein "[t]he catalyst materials comprise RuO2 and other
materials [Paragraph 100]" (Ans.. para. bridging 4-5; see also id. at 6, 7).
The Examiner also finds that "the 'decomposition' function of the catalyst is
an inherent property" (id.). It is the Examiner's ultimate finding that the fuel
cell of Hampden-Smith fully satisfies the independent claims 1, 11, and 17
requirements for layers of hydrogen peroxide-decomposition catalyst such as
ruthenium oxide on the bipolar plate and on the MEA and/or on the diffusion
media layer (id.).
We agree with Appellants that Hampden-Smith contains no express or
inherent teaching of ruthenium oxide as a catalyst for decomposing
hydrogen peroxide or as a layer of such catalyst on the bipolar plate and on
the MEA and/or on the fluid distribution layer (i.e., the claimed diffusion
media layer) of Hampden-Smith's fuel cell (App. Br. 8-10, 13-15; Reply Br.
2).
As correctly explained by Appellants and contrary to the Examiner's
above finding, paragraph [0100] of Hampden-Smith discloses ruthenium
oxide, not as a catalyst but rather, as support particles for electrocatalysts
(id.). Moreover, the Examiner has provided this record with no basis in
support of the above finding that the ruthenium oxide of Hampden-Smith
would inherently perform the hydrogen peroxide decomposition function of
Appeal 2010-009835
Application 11/196,632

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the independent claims. On this record, it appears that hydrogen peroxide
would not even be able to contact Hampden-Smith's ruthenium oxide since
the ruthenium oxide particles support, and therefore are coated with,
electrocatalytic material.
Appellants are also correct that the Examiner has erred in finding the
fuel cell of Hampden-Smith to include a ruthenium oxide layer on the
bipolar plate as required by each of the independent claims (id.). This
finding appears to be not only unsupported but inconsistent with Hampden-
Smith's disclosure, for example, at Figure 2 which shows bipolar plates 208,
214 spaced from ruthenium oxide-containing layers 220, 222. According to
the Examiner, "[i]t can be interpreted that the bipolar plate 'includes a
ruthenium oxide layer' even if not directly attached to said layer" (Ans. 10).
However, the Examiner has not even alleged much less established that such
an interpretation of the claims would be reasonable and consistent with
Appellants' Specification.
For the above stated reasons, we cannot sustain the § 102 rejection of
claims 1-3, 5, 6, 8, 11-13, 15, and 17-21 as anticipated by Hampden-Smith.
We also cannot sustain the § 103 rejection of claims 7, 14, and 21 as
unpatentable over Hampden-Smith in view of Brady or the § 103 rejection
of claims 1-3, 5-9, and 11-22 as unpatentable over Hampden-Smith in view
of Horiguchi and Bekkedahl. The secondary references in these rejections
are not relied upon by the Examiner to supply the previously discussed
deficiencies of Hampden-Smith. Instead, the Examiner relies on Brady for
making bipolar plates of certain materials (e.g., as required by claim 7) (Ans.
6-7) and relies on Horiguchi and Bekkedahl for applying a hydrophilic
material such as ruthenium oxide "between the plates in the region defined
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Application 11/196,632

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by S2 [of Horiguchi] . . . [in order to obtain] an efficient cooling mechanism
for a fuel cell" (id. at 7-8) (e.g., as required by claim 9).
The decision of the Examiner is reversed.
REVERSED

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