Ex Parte YAGI et al

Board of Patent Appeals and Interferences

Apr 27, 2010

11697842 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROSHI YAGI, TAKANORI MAEDA, YOSHINORI OOTA,
and YASUHIRO UCHIDA
____________

Appeal 2009-012486
Application 11/697,842
Technology Center 1700
____________

Decided: April 27, 2010
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and MARK NAGUMO,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 through 4 and 8 through 17. Claims 5
through 7, the other pending claims in the above-identified application, stand
withdrawn from consideration by the Examiner. See page 2 of the final
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Office Action dated August 21, 2008 and the Appeal Brief (“App Br.”) filed
December 2, 2008. We have jurisdiction under 35 U.S.C. §§ 6 and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of producing a
hydrogen production filter useful “for steam-reforming hydrocarbon fuel of
various kinds to produce hydrogen rich gas for a fuel cell” as illustrated in
Figures 3A through 3D of the above-identified application. (Spec. 1, ll. 13-
17 and Spec. 18, l. 16 to Spec. 20, l. 15). According to page 20, lines 16
through 25, of the Specification, the method employed results in a hydrogen
production filter having, inter alia, a high strength, an increased hydrogen
transmission efficiency, high durability, and excellent heat resistance and
operability. Details of the appealed subject matter are recited in the broadest
claim on appeal, independent claim 1, reproduced from the Claims
Appendix to the Appeal Brief as shown below:
1. A production method of a hydrogen production filter,
comprising a Ni film forming step of forming a Ni film by
strike plating on a surface of a conductive base member
having a plurality of through holes, a filling step of filling a
resin material into said through holes of said conductive base
member, an underlayer forming step of forming a Pd alloy film
on one surface of said conductive base member by either of
electroless plating or a vacuum film forming method, thereby to
form a conductive underlaycr, a film forming step of forming a
Pd alloy film by plating on said conductive underlayer, and a
removal step of dissolving and removing only said resin
material.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the Answer
(“Ans.”) dated March 5, 2009:
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Application 11/697,842

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Schroeder 4,743,577 May 10, 1988
Weinfield 6,906,292 B2 Jun. 14, 2005
Kinuta JP 11104472 Apr. 20, 1999

Appellants request review of the Examiner’s § 103(a) rejection of
claims 1 through 4 and 8 through 17 as unpatentable over Kinuta, as
evidenced by Weinfield, and in view of Schroeder.
Appellants contend that one of ordinary skill in the art would not have
had any reason to employ Weinfield’s thermoconductive polymeric material
and/or Schroeder’s nickel catalytic material in Kinuta’s process for making a
permeable hydrogen purification membrane (App. Br. 3-5). Appellants also
contend that the combination of Kinuta, Weinfield, and Schroeder, as
proposed by the Examiner, would not have resulted in the claimed invention
(App. Br. 5-6). Specifically, Appellants contend that the Examiner fails to
show why one of ordinary skill in the art would have been led to employ the
claimed two steps for forming two layers of Pd alloy films via electroless
plating or vacuum film forming and electrolytic plating, respectively in
Kinuta’s permeable membrane making process (id).
ISSUE AND CONCLUSION
The dispositive question is: Has the Examiner demonstrated that the
combination of Kinuta, Weinfield, and Schroder would have led one of
ordinary skill in the art to the claimed process within the meaning of 35
U.S.C. § 103(a)? On this record, we answer this question in the negative.
RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
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(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Kinuta teaches processes for “the fabrication of a permeable
membrane structure for hydrogen gas purification” (p. 4).
2. Kinuta’s exemplary process relied upon by the Examiner involves
intimately adhering a stainless steel mesh 42 to an electrically conductive
substrate, such as a stainless steel plate 45, depositing a metal layer, such as
a copper layer 43, in and on the stainless steel mesh 42 that can be easily
dissolved using liquid chemicals, removing the stainless steel plate 45,
forming a permeable palladium alloy layer 41 made up of Pd and Ag via
electrolytic plating, and removing the copper layer 43 via chemical etching
(pp. 16-17, para. 0011; p. 4, claim 6, and Fig. 4).
3. Weinfield teaches a heater module comprising a heat distribution plate
20, a heat source 40 and a tray 60, which are made of a thermoconductive
material selected from a metallic thermoconductive material, such as copper,
and a thermoconductive polymeric material capable of withstanding
temperature in the rang of from 5oC to about 100oC without deforming,
cracking or melting (col. 7, ll. 38-49 and Figs. 1 and 9).
4. Weinfield teaches that the thermoconductive polymeric material can
include a thermoconductive filler material such as carbon material, boron
nitride and copper (col. 7, ll. 49-54).
5. Schroeder teaches forming a catalyst for hydrogenating the aldehyde
functional group of a methylol group or decarbonylating carbon containing
constituents, wherein adherence of palladium to a porous titanium support is
improved by plating a third catalytic metal such as nickel, copper or
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platinum as an intermediate layer prior to plating the palladium (cols. 5 and
6 and col. 1, ll. 5-16).
PRINCIPLES OF LAW
"[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).
The Examiner has the initial burden of establishing a prima facie case
of unpatentability. 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.”).
ANALYSIS
As correctly stated by Appellants at pages 3 through 6 of the Appeal
Brief, the Examiner has not demonstrated that one of ordinary skill in the art
would have been led to strike plate a nickel film on the surface of the
stainless steel mesh and deposit a resin material, in lieu of copper, in the
holes of the stainless steel mesh in Kinuta’s process for making a permeable
hydrogen purification membrane. Specifically, the Examiner has not shown
that Schroeder’s nickel catalytic material for hydrogenating the aldehyde
functional group of a methylol group or decarbonylating carbon containing
constituents is suitable for forming Kinuta’s permeable hydrogen
purification membrane or that Weinfield’s thermoconductive resin materials
useful for forming heating module features are functionally equivalent to
copper for the purpose of forming Kinuta’s permeable hydrogen purification
membrane.
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Even were we to assume that the Examiner’s proposed combination is
proper, it would not have resulted in the claimed invention as correctly
indicated by Appellants at pages 5 and 6 of the Appeal Brief. In particular,
the Examiner has not shown, much less explained, why one of ordinary skill
in the art would have been led to employ the claimed steps for forming two
layers of Pd alloy films via electroless plating or vacuum film forming and
electrolytic plating, respectively in Kinuta’s permeable membrane making
process. As is apparent from Kinuta’s exemplary embodiment relied upon
by the Examiner, it is limited to forming a single permeable palladium alloy
layer via electrolytic plating.
It follows that the Examiner has not established a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103(a). Hence, we reverse
the Examiner’s § 103(a) rejection of claims 1 through 4 and 8 through 17 as
unpatentable over Kinuta, as evidenced by Weinfield, and in view of
Schroeder.
ORDER
Accordingly, the decision of the Examiner is reversed.

REVERSED

kmm

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314