Ex Parte Vyas et al

Board of Patent Appeals and Interferences

Jul 24, 2012

11201767 (B.P.A.I. Jul. 24, 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.
11/201,767 08/11/2005 Gayatri Vyas GP-306866 4612
65798 7590 07/24/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
ENIN-OKUT, EDU E
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
07/24/2012 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 GAYATRI VYAS,
MAHMOUD H. ABD, THOMAS A. TRABOLD,
and YOUSSEF M. MIKHAIL
_______________

Appeal 2010-011498
Application 11/201,767
Technology Center 1700
________________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and LINDA M.
GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 30.1 Claims 31 through 36, the other claims
pending in the above-identified application, stand withdrawn from
consideration as being directed to a non-elected invention. We have
jurisdiction pursuant to 35 U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed January 27, 2010, 3; and Examiner’s
Answer (“Ans.”) May 4, 2010, 2.
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Application 11/201,767

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We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The subject matter on appeal is directed “generally to bipolar plates
for fuel cells and , more particularly, to a bipolar plate for a fuel cell that
includes a TiO2 layer and a conductive layer that combine to make the plate
conductive, hydrophilic and stable in a fuel cell environment” (Spec. 1, para.
0002). The bipolar (flow field) plates are said to be “made of a conductive
material, such as stainless steel, titanium, aluminum, polymeric carbon
composite, etc., so that they conduct the electricity generated by the fuel
cells from one cell to the next cell and out of the stack” (Spec. 2, para.
0007). Details of the appealed subject matter are recited in representative
appealed claims 1, 3, 5, 13, 22, and 24 reproduced below from the Claims
Appendix to the Appeal Brief:
1. A fuel cell comprising a flow field plate being made of a plate
material, said flow field plate including a plurality of flow channels
responsive to a reactant gas, said flow field plate further including a TiO2
layer and a conductive layer that combine to make the plate conductive,
hydrophilic and stable in a fuel cell environment.

3. The fuel cell according to claim 1 wherein the conductive layer is a
gold layer.

5. The fuel cell according to claim 1 wherein the conductive layer is
deposited on the flow field plate before the TiO2 layer.

13. A fuel cell comprising a flow field plate being made of a plate
material, said flow field plate including a plurality of flow channels
responsive to a reactant gas, said flow field plate including an outer layer
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being a mixture of TiO2 and a conductive material that makes the plate
conductive, hydrophilic and stable in a fuel cell environment.

22. A fuel cell comprising a flow field plate being made of a plate
material, said flow field plate including a plurality of flow channels
responsive to a reactant gas, said flow field plate further including a TiOx
layer and a conductive layer that makes the plate conductive, hydrophilic
and stable in a fuel cell environment.

24. The fuel cell according to claim 22 wherein the x in the TiOx is in
the range of 0.1 - 6.

Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer:
(1) Claims 1, 2, 4 through 8, 10 through 12, and 22 through
30 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Ohara2 and Makkus3;
(2) Claims 3, 9, and 13 through 21 under 35 U.S.C. § 103(a)
as unpatentable over the combined teachings of Ohara, Makkus and
Matsukawa4;
(3) Claims 1 through 3, 10, 11, 13 through 15, 18 through
20, 22 through 24, 28, and 29 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over the claims of

2 US 2003/0003345 A1published on January 2, 2003.
3 US 6,761,927 B1 published on July 13, 2004.
4 JP 10-228914 A (Pat. No. JP 10228914 A) published on August 25, 1998.
Our reference to this Japanese patent is to the corresponding English
machine translation of record.
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Application 11/068,489 filed February 28, 2005 (now U.S. Patent No.
8,029,943 B2 issued to Vyas et al. on October 4, 2011); and
(4) Claims 1, 2, and 8 through 12 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over
the claims of Application 11/464,844 filed August 16, 2006 in view of
Heller.5 (See App. Br. 5.)
DISCUSSION
I. REJECTION (1)
Appellants have not disputed the Examiner’s finding that Ohara
teaches a fuel cell having a stainless steel separator plate (corresponding to
the flow field plate recited in claims 1 and 22) that includes a plurality of gas
flow channels coated with a titanium dioxide layer, which is encompassed
by the titanium oxide recited in claims 1, 22, and 24, for providing
hydrophilic properties without increasing contact resistance. (Compare Ans.
4 and 11 with App. Br. 7-10.) Nor have Appellants disputed the Examiner’s
determination that one of ordinary skill in the art would have been led to
apply a nickel layer, i.e., a corrosion resistant layer, over the titanium
dioxide coated gas flow channels of the stainless steel plate of the fuel cell
taught by Ohara since Makkus teaches applying a nickel layer on a stainless
steel separator coated with a titanium dioxide layer. (Compare Ans. 4 with
App. Br. 7-9.) Instead, Appellants contend that Makkus teaches a nickel
layer for its corrosion resistant qualities and is not the conductive layer
recited in claims 1 and 22 and thus, the collective teachings of Ohara and

5 US 6,294,281 B1, published on September 25, 2001.
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Makkus would not have suggested applying a conductive layer, in addition
to a titanium oxide layer, to form a conductive, hydrophilic and stable
separator plate. (See App. Br. 8.)
Thus, the dispositive question presented here is: Has the Examiner
reversibly erred in finding that the corrosion resistant nickel coating taught
by Makkus corresponds to the conductive layer recited in claim 1? On this
record, we answer this question in the negative.
As acknowledged by Appellants at page 8 of the Appeal Brief,
Makkus teaches, at col. 1, ll. 7-11, that:
The present invention relates to a method for coating a
non-oxidized stainless steel support plate with an electrically
conducting corrosion-resistant coating, comprising applying a
diffusion barrier layer containing a titanium compound,
followed by applying a nickel layer. [(Emphasis added.)]
Appellants also acknowledge at page 8 of the Appeal Brief that Makkus
teaches using a nickel coating to form a corrosion resistant layer.
Thus, we find no reversible error in the Examiner’s finding that the nickel
corrosion-resistant coating is also an electrically conductive layer
corresponding to the conductive layer recited in claim 1. The fact that the
titanium dioxide layer is also electrically conductive does not negate the
Examiner‘s finding that the nickel corrosion-resistant coating is a conductive
layer. On this record, Appellants have proffered no evidence to show that
the conductive layer recited in claim 1 precludes the corrosion-resistant and
electrically conductive nickel layer taught by Makkus.
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Accordingly, we affirm the Examiner’s decision rejecting claims 1, 2,
4, 6 through 8, 10 through 12, and 22 through 306 under 35 U.S.C. § 103(a)
as unpatentable over the combined teachings of Ohara and Makkus.
However, the Examiner’s decision rejecting claim 5 under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of Ohara
and Makkus stands on different footing. As correctly argued by Appellants
at page 9 of the Appeal Brief and pages 1 and 2 of the Reply Brief, one of
ordinary skill in the art would not have been led to a fuel cell having a
separator plate coated with the nickel conductive layer prior to the titanium
dioxide layer as required by claim 5. In particular, Makkus, at col. 1, l. 55 to
col. 2, l. 8, specifically directs one of ordinary skill in the art to use a
titanium dioxide layer prior to applying a porous nickel layer on a stainless
steel plate to prevent the harmful reaction associated with carbonate
diffusing through the porous nickel layer that corresponds to the conductive
layer recited in claim 1. In other words, the collective teachings of Ohara
and Makkus would have suggested forming a fuel cell having a separator
plate having thereon a titanium dioxide layer coated with an outer
conductive nickel layer.
When a structurally different coating arrangement, i.e., an inner
conductive layer and an outer titanium dioxide layer, on a separator plate of
a fuel cell is clearly implied by the coating sequence recited in claim 5, the
Examiner must provide a sufficient factual basis to show why one of

6 Appellants have not separately argued claims 2, 4, 6 through 8, 10 through
12, 23, and 25 through 30. (See App. Br. 6-10.) Accordingly, they stand or
fall with claims 1, 22, and 24. (See 37 C.F.R. § 41.37(c)(1)(vii))
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ordinary skill in the art would have been prompted to arrive at such
structurally different coating arrangement contrary to the teachings of the
applied prior art. See, e.g., In re Garnero, 412 F.2d 276, 279 (CCPA 1969)
(holding the claimed process limitation “interbonded one to another by
interfusion between the surfaces of the perlite particles” in a product-by-
process claim to limit the structure of the claimed composite just as process
limitations, such as “intermixed,” “ground in place,” “press fitted,” “etched,”
and “welded” were held to be capable of being construed as a structural
limitation.) On this record, however, the Examiner has not carried such
burden. (See Ans. 10.)
Accordingly, we reverse the Examiner’s decision rejecting claim 5
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Ohara and Makkus.
II. REJECTION (2)
As indicated supra, Ohara and Makkus would have suggested forming
a fuel cell having a conductive stainless steel separator plate having thereon
a titanium dioxide layer coated with an outer nickel layer. Although neither
Ohara nor Makkus mentions employing a gold layer on a stainless steel
separator plate of a fuel cell, the Examiner relies on the disclosure of
Matsukawa to show that it would have been obvious to employ a gold layer
on the stainless steel separator plate of the fuel cell suggested by Ohara and
Makkus. (See Ans. 5-6.)
Thus, the dispositive question is: Has the Examiner reversibly erred
in determining that one of ordinary skill in the art would have been led to
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employ the gold layer taught by Matsukawa on the stainless steel separator
plate of the fuel cell suggested by Ohara and Makkus? On this record, we
answer this question in the negative.
As is apparent from the discussion at paragraphs 0002 through 0006
of Matsukawa, the use of a gold layer on a stainless steel separator plate of
various known fuel cells, including a fused carbonate fuel cell, provides
enhanced conductivity and is desirable in the art. It follows that the
Examiner has not reversibly erred in determining that one of ordinary skill in
the art would have been led to use the gold layer in the manner taught by
Matsukawa on the conductive stainless steel separator plate of the fuel cell
suggested by Ohara and Makkus, with a reasonable expectation of
successfully enhancing its conductive properties. Indeed, Appellants have
not disputed the Examiner’s determination that it would have been obvious
to one of ordinary sill in the art to employ the gold layer taught by
Matsukawa on the stainless steel separator plate of the fuel cell suggested by
Ohara and Makkus. (Compare Ans. 5-6 with App. Br. 10-11.)
Accordingly, we affirm the Examiner’s decision rejecting claims 3
and 97 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Ohara, Makkus, and Matsukawa.
However, the Examiner’s decision rejecting claims 13 through 21
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Ohara, Makkus and Matsukawa stands on different footing. As correctly

7 Appellants have not separately argued claim 9. Accordingly, claim 9
stands or falls with claim 3. See 37 C.F.R. § 41.37(c)(1) (vii).

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pointed out by Appellants at pages 10 and 11 of the Appeal Brief, the
Examiner has not demonstrated that one of ordinary skill in the art would
have been led to employ a coating layer containing both titanium oxide and a
conductive material, such as gold or nickel, on the separator plate of a fuel
cell as required by claims 13 through 21. Although we do not disagree with
the Examiner’s proposition that “it is prima facie obvious to combine two
compositions [or two components], each of which is taught by the prior art
to be useful for the same purpose, in order to form a third composition which
is to be used for the same purpose” as indicated in In re Kerkhoven, 626 F.2d
846, 850 (CCPA 1980), Appellants have correctly indicated that nowhere
has the Examiner shown that both titanium oxide and a conductive material,
such as gold or nickel, are useful for the same purpose. (Compare App. Br.
10-11 with Ans. 6 and 11.) On this record, the Examiner has not
demonstrated that a coating layer containing titanium dioxide used for
imparting desired hydrophilic and/or barrier properties is still useful for such
purpose even in the presence of gold or nickel which is used for desired
conductive or corrosion resistant properties.
Accordingly, we reverse the Examiner’s decision rejecting claims 13
through 21 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Ohara, Makkus, and Matsukawa.
III. REJECTION (3)
Appellants contend that the claims of U.S. Application 11/068, 489
(now U.S. Patent 8,029,943 B2) and the disclosure of Ohara would not have
rendered at least one coating containing gold and a suitable hydrophilic
metal oxide, such as titanium oxide, on the flow field plate of the fuel cell
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recited in claim 13 obvious to one of ordinary skill in the art. (See App. Br.
11-13.)
Thus, the dispositive question is: Has the Examiner reversibly erred
in determining that it would have been obvious to employ titanium dioxide
taught by Ohara as the suitable hydrophilic metal oxide of at least one
coating containing gold and a suitable hydrophilic metal oxide on the flow
field plate of the fuel cell recited in the claims of U.S. Application 11/068,
489 (now U.S. Patent 8,029,943 B2)? On this record, we answer this
question in the negative.
As stated by our reviewing court in In re Braat, 937 F.2d 589, 592
(Fed. Cir. 1991) (citation omitted):
Obviousness-type double patenting is a judicially created
doctrine intended to prevent improper timewise extension of
the patent right by prohibiting the issuance of claims in a
second patent which are not “patentably distinct” from the
claims of a first patent.

An analysis analogous to an obviousness analysis under 35 U.S.C. § 103(a)
comes into play during the step of determining the obviousness of the
“difference” between the claimed invention and the patented invention. See
Studiengesellschaft Kohle mbH v. N. Petrochemical Co., 784 F.2d 351, 355
(Fed. Cir. 1986); In re Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985). The
Examiner may use the patent’s Specification as a dictionary to determine the
meaning of terms in the patent’s claim. In re Vogel, 422 F.2d 438, 441
(CCPA 1970)
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Here, as acknowledged by Appellants at page 11 of the Appeal Brief,
claim 1 of U.S. Application 11/068, 489 (now U.S. Patent 8,029,943 B2)
recites:
A fuel cell comprising a flow field plate being made of a
plate material, said flow field plate including a plurality of flow
channels responsive to a reactant gas, said flow filed plate
further including a least one coating that makes the flow field
plate both hydrophilic and conductive, said coating being a
metal that is conductive and that includes nanopores formed as
a result of a material being removed from the coating to make
the coating hydrophilic.
According to the Specification of U.S. Application 11/068,489:
In accordance with the teachings of the present
invention, a flow field plate or bipolar plate for a fuel cell is
disclosed that has one or more outerlayers or coatings that
make the plate more electrically conductive and hydrophilic.
In one embodiment, the coating is co-deposited as a
combination of a conductive material and a metal oxide. A
suitable conductive material is gold and suitable [hydrophilic]
metal oxides include SiO2, HfO2, ZrO2, Al2O3, SnO2, Ta2O5,
Nb2O5, MoO2, IrO2, RuO2 and mixtures thereof. [(See U.S
Patent 8,029,943 B2, col. 3, ll. 1-11.)]
The Specification further states that suitable hydrophilic metal oxides are not
limited to those specified above. (See U.S. Patent 8,029,943 B2, col. 4, ll.
57-64.) Thus, the at least one coating that makes the flow field plate both
hydrophilic and conductive recited in claim 1 of U.S. Application
11/068,489 is interpreted to contain a conductive material, such as gold, and
a suitable hydrophilic metal oxide. Indeed, Appellants acknowledge that
claim 6 of U.S. Application 11/068,489 further recites that the coating
includes gold. (See also Claim 3 of US Patent 8,029,943 B2.)
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Although the claims of U.S. Application 11/068,489 do not explicitly
indicate that their suitable hydrophilic metal oxides include titanium dioxide
as required by claim 13 of the present application, Ohara teaches that
titanium dioxide is a suitable hydrophilic metal oxide useful for imparting
desired hydrophilic properties to a flow field plate of a fuel cell as indicated
supra. Thus, the Examiner has correctly determined that one of ordinary
skill in the art would have been led to employ at least one coating containing
a conductive material, such as gold, and at least one hydrophilic metal oxide,
such as titanium dioxide taught by Ohara, with a reasonable expectation of
successfully rendering the flow field plate of a fuel cell hydrophilic and
conductive. In other words, we find no reversible error in the Examiner’s
determination that the subject matter of the claims of the present application
is patentably indistinct from the claims of U.S. Application 11/068,489
further in view of Ohara.
Accordingly, we affirm the Examiner’s decision rejecting claims 1
through 3, 10, 11, 13 through 15, 18 through 20, 22 through 24, 28, and 298
on the ground of nonstatutory obviousness-type double patenting as
unpatentable over the claims of U.S. Application 11/068,489 filed February
28, 2005 (now U.S. Patent No. 8,029,943 B2 issued to Vyas et al. on
October 4, 2011).

8 Appellants have not presented separate arguments for claims 1 through 3,
10, 11, 14, 15, 18through 20, 22 through 24, 28, and 29. Accordingly, they
stand or fall with claim 13. See 37 C.F.R. § 41.37(c)(1) (vii).

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IV. REJECTION (4)
Appellants contend that the claims of U.S. Application 11/464,844, as
explained by Heller, would not have rendered both titanium oxide layer and
a conductive layer on a flow field plate of a fuel cell as required by claim 1
obvious to one of ordinary skill in the art.
Thus, the dispositive question is: Has the Examiner reversibly erred
in determining that the claims of U.S. Application 11/464,844, as explained
by Heller, would have suggested the conductive coating layer and titanium
oxide coating layer on the flow field plate of the fuel cell recited in claim 1?
On this record, we answer this question in the negative as well.
As acknowledged by Appellants at pages 13 and 14 of the Appeal
Brief, claims 1, 4, 5, and 6 of U.S. Application 11/464,844 recite a fuel cell
containing a flow field plate including a plurality of flow channels
responsive to a reactant gas, with the flow field plate coated with a thin layer
followed by a thick hydrophilic layer, where in the thick hydrophilic layer
material is selected from, inter alia, titanium oxide and the thin layer
material selected from, inter alia, ruthenium oxide. (See also claims 1, 4, 5,
and 6 of U.S. Application 11/464,844.) Although the claims of U.S.
Application 11/464,844 do not identify ruthenium oxide as a conductive
material, Heller explains that the ruthenium oxide thin layer recited in claims
1, 4, 5, and 6 of U.S. Application 11/464,844 functions as a conductive
layer. Thus, we find no reversible error in the Examiner’s determination that
the subject matter of claims 1, 2, and 8 through 12 of the present application
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is patentably indistinct from the claims of U.S. Application 11/464,844, as
further explained by Heller.
Accordingly, we affirm the Examiner’s decision rejecting claims 1, 2,
and 8 through 129 on the ground of nonstatutory obviousness-type double
patenting as unpatentable over the claims of Application 11/464,844 filed
August 16, 2006 in view of Heller.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the Examiner’s decision rejecting claims 1, 2, 4, 6
through 8, 10 through 12, and 22 through 30 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Ohara and Makkus is
AFFIRMED;
FURTHER ORDERED that the Examiner’s decision rejecting claim 5
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Ohara and Makkus is REVERSED;
FURTHER ORDERED that the Examiner’s decision rejecting claims
3 and 9 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Ohara, Makkus and Matsukawa is AFFIRMED;
FUTHER ORDERED that the Examiner’s decision rejecting claims
13 through 21 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Ohara, Makkus and Matsukawa is REVERSED;

9Appellants have not presented separate arguments for claims 2 and 8
through 12. Accordingly, they stand or fall with claim 1. See 37 C.F.R. §
41.37(c)(1) (vii).

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FURTHER ORDERED that the Examiner’s decision rejecting claims
1 through 3, 10, 11, 13 through 15, 18 through 20, 22 through 24, 28, and 29
on the ground of nonstatutory obviousness-type double patenting as
unpatentable over the claims of U.S. Application 11/068,489 filed February
28, 2005 (now U.S. Patent No. 8,029,943 B2 issued to Vyas et al. on
October 4, 2011) is AFFIRMED
FURTHER ORDERED that the Examiner’s decision rejecting claims
1, 2, and 8 through 12 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over the claims of Application 11/464,844
filed August 16, 2006 in view of Heller is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv).
AFFIRMED-IN-PART

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