Ex Parte Pettit et al

Patent Trial and Appeal Board

Oct 31, 2012

11592581 (P.T.A.B. Oct. 31, 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.
11/592,581 11/03/2006 William H. Pettit GP-306728-FCAR-CHE 2805
65798 7590 10/31/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
DAVIS, PATRICIA A
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM H. PETTIT, MICHAEL K. BUDINSKI,
and WENBIN GU
____________________

Appeal 2011-005875
Application 11/592,581
Technology Center 1700
____________________

Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-6, 8-11, and 13-16 under 35 U.S.C. § 102(b) as
anticipated by Koschany1 as evidenced by Wu2; and claims 7, 12, and 17

1 Koschany et al., US 6,475,656 B1, patented Nov. 5, 2002.
2 Wu, US 2009/0053576 A1, pub. Feb. 26, 2009.
Appeal 2011-005875
Application 11/592,581

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under 35 U.S.C. § 103(a) as obvious over Koschany in view of MacKinnon3.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to a proton exchange membrane (PEM)
assembly for a fuel cell, and more particularly to an improved edge design
for ePTFE-reinforced PEM membranes (Spec. ¶ [0001]). Claim 1 is
illustrative:
1. A membrane electrode assembly comprising:
first and second spaced and opposed electrode members;
wherein the first electrode member includes a first edge
portion;
wherein the second electrode member includes a second
edge portion;
a membrane layer disposed between the first and second
electrode members;
a reinforcement layer disposed within the membrane
layer; and
a proton impermeable layer disposed within the
reinforcement layer;
wherein the proton impermeable layer extends along a
portion of the reinforcement layer and is absorbed within the
reinforcement layer between the first and second electrode
members and proximate to the first and second edge portions.
(Claims App. at Br. 18.)

3 MacKinnon et al., US 2006/0128557 A1, pub. Jun. 15, 2006.
Appeal 2011-005875
Application 11/592,581

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OPINION
Independent claims 1, 9, and 15 each require a proton impermeable
layer disposed within the reinforcement layer.
Koschany describes a membrane-electrode unit 1 with a membrane 2
covered by anode 3 and cathode 4 (Fig. 1; col. 5, l. 66 to col. 6, l. 1).
Koschany describes an example in which the membrane material consists of
Gore Select (col. 8, ll. 11-25). The Examiner has provided evidence that the
Gore Select membrane material is “a micro-reinforced composite structure
of expanded PTFE and perfluorosulfonic acid ionomer” (Ans. 11, quoting
Wu ¶ [0010]). Koschany discloses two examples in which the sealing agent
is diffused into the membrane 2. Those examples are shown in Figures 4
and 6. In the example of Figure 6, the sealing-agent-filled portions 10 are
clearly within the membrane layer 2.
However, Koschany does not “describe” within the meaning of 35
U.S.C. § 102, nor render inherent a membrane electrode assembly wherein
the proton impermeable layer (Koschany’s sealing agent) is “disposed
within” the ePTFE reinforcing layer of Koschany’s Gore Select membrane.
Gore Select is merely an example of a membrane material that can be used,
and Koschany merely states that:
Depending on the material of the membrane 2, the
sealing agent used and the conditions under which the sealing
edge is produced (pressure, temperature), the sealing agent
possibly can also penetrate into the membrane, thereby forming
sealing-agent-filled portions 10 of the membrane, as shown in
FIG. 6
(Koschany, col. 8, ll. 58-63 (emphasis added).) In other words, one of
ordinary skill in the art must both select the exemplified Gore Select
Appeal 2011-005875
Application 11/592,581

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membrane material and additionally perform routine experimentation to
determine the conditions (pressure, temperature) at which the sealing agent
will penetrate the Gore Select membrane material when penetration of the
reinforcing layer of the membrane is desired. Such selection of materials
and determination of process parameters might have been obvious to one of
ordinary skill in the art, but it is not a proper basis for an anticipation
rejection. See MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
Cir. 2008); In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972).
The Examiner relies upon the same inherency analysis in both
rejections. Therefore, the Examiner’s decision is reversed as to both
rejections.
REVERSED

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