Ex Parte Sompalli et al

Board of Patent Appeals and Interferences

Jul 25, 2012

11374651 (B.P.A.I. Jul. 25, 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.
11/374,651 03/13/2006 Bhaskar Sompalli GP-308188 7334
104102 7590 07/25/2012
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
07/25/2012 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 BHASKAR SOMPALLI, CHUNXIN JI, SUSAN G. YAN,
HUBERT A. GASTEIGER, HIROSHI SHIMODA, SHINJI TERAZONO,
HIROKAZU WAKABAYASHI, ATSUO OKAWARA,
KOHTA YAMADA, SEIGO KOTERA, SHINJI KINOSHITA, and
TOSHIHIRO TANUMA
____________

Appeal 2011-005735
Application 11/374,651
Technology Center 1700
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH ,
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005735
Application 11/374,651

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 42, 44 through 47 and 51. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ claimed invention relates to methods of making fuel cell
components including a catalyst and a plurality of ionomer overcoat layers.
Spec. 1. Claim 47 is illustrative:

47. A process comprising:

(a) providing a substrate with a layer comprising a catalyst
thereon, wherein the substrate comprises a decal;

(b) depositing a first ionomer overcoat layer over the catalyst
layer, the first ionomer overcoat layer comprising an ionomer
and a first solvent;

(c) drying the first ionomer overcoat layer to provide a first
electrode ionomer overcoat layer; and

(d) depositing a second ionomer overcoat layer over the first
electrode ionomer overcoat layer, and wherein the second
ionomer overcoat layer comprises an ionomer and a second
solvent.

The Examiner relied on the following references in rejecting the
appealed subject matter:

Sompalli 736 US 6,524,736 B1 February 25, 2003
Ebbrell US 6,867,159 B2 March 15, 2005
Sompalli 929 US 2005/0271929 A1 December 8, 2005

Appeal 2011-005735
Application 11/374,651

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Appellants request review of the following rejections (App. Br. 5)
from the Examiner’s final office action:
1. Claims 47 and 51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sompalli 736 and Ebbrell.

2. Claims 1-42 and 44-46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sompalli 736, Ebbrell and Sompalli 929.

OPINION
The dispositive issue for this appeal is: Did the Examiner err in
determining that the combination of Sompalli 736 and Ebbrell would have
led one skilled in the art to a method of making an assembly having a
plurality of ionomer layers deposited over a layer of catalyst as required by
the subject matter of independent claims 1, 47 and 51?1, 2
After thorough review of the respective positions provided by
Appellants and the Examiner, we REVERSE for the reasons presented by
the Appellants and add the following for emphasis.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

1 We will limit our discussion to independent claim 47.
2 A discussion of the Sompalli 929 reference applied to a separate rejection
of independent claim 1 is unnecessary for disposition of the present appeal.
The Examiner relied upon this reference to describe a different element of
independent claim 1 not related to the dispositive issue.
Appeal 2011-005735
Application 11/374,651

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The Examiner found that Sompalli 736 discloses a method of making
an assembly comprising the steps of applying an ionomer layer over a
catalyst layer. Ans. 3. The Examiner also found that Sompalli 736 discloses
that multiple layers are possible but does not clearly disclose applying a
plurality of ionomer layers over the catalyst layer. Id. at 4. The Examiner
additionally found that Ebbrell discloses applying two coating layers of
ionomer, one with a catalyst and the other without a catalyst. Id. The
Examiner concluded it would have been obvious to one skilled in the art to
modify the process of Sompalli 736 to include multiple layers of ionomer in
view of Ebbrell’s teachings with the expectation of achieving similar success
as well as the benefits recited. Id.
We agree with the Appellants that the Examiner failed to establish a
prima facie case of obviousness. App. Br. 12. As correctly argued by
Appellants (id. at 9), the process of Sompalli 736 does not result in an
assembly having a plurality of ionomer layers over a catalyst layer. Id. at 7;
Sompalli 736, col. 13, ll. 18-21. Contrary to the Examiner’s findings, the
process of Sompalli 736 results in an assembly having a single ionomer
layer as opposed to a plurality of ionomer layers. Appellants additionally
argued that Ebbrell fails to teach providing a plurality of ionomer layers over
a layer of catalyst as required by the claimed invention. Id. at 8. The
Examiner has not adequately established that Sompalli 736 and Ebbrell
disclose a method of making an assembly with a plurality of ionomer layers
over a catalyst. The Examiner has not directed us to a section of Sompalli
736 or Ebbrell that supports the Examiner’s reasoning for modifying the
process of Sompalli 736 to arrive at the subject matter of independent claim
47. Thus, we find that the Examiner has not adequately explained how or
Appeal 2011-005735
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why the combined disclosures of Sompalli 736 and Ebbrell would have lead
one skilled in the art to a method of making an assembly with a plurality of
ionomer layers over a catalyst layer.
We note that the Examiner, in support of the stated rejection, cites the
holding in In re Marra, 141 USPQ 221 (CCPA 1964) (Ans. 6). Based on
Marra, the Examiner reasoned that the impregnating step of Sompalli 736 is
no different from coating a layer over a surface. Ans. 6. However, we agree
with Appellants that the holding of Marra is limited to its underlying facts.
Reply Br. 5-6. The Examiner has not explained why the technology of the
references in Marra is the same as Sompalli 736 and therefore establishes
that the impregnation coating of Sompalli 736 would have necessarily
resulted in a separate layer.
Accordingly, we reverse the Examiner’s rejection of claims 47 and 51
under 35 U.S.C. § 103(a) as unpatentable over Sompalli 736 and Ebbrell.
The Examiner additionally relied on Sompalli 929 in a separate
rejection to meet respective limitations of claims 1-42 and 44-46. We agree
with Appellants that Sompalli 929 fails to make up for the above-noted
deficiencies of Sompalli 736 and Ebbrell discussed above. App. Br. 10.
Accordingly, we reverse this rejection as well for the reasons given above.
ORDER
The rejection of claims 47 and 51 under 35 U.S.C. § 103(a) as
unpatentable over Sompalli 736 and Ebbrell is reversed.
The rejection of claims 1-42 and 44-46 under 35 U.S.C. § 103(a) as
unpatentable over Sompalli 736, Ebbrell and Sompalli 929 is reversed.

REVERSED
Appeal 2011-005735
Application 11/374,651

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