GKN Sinter Metals Engineering GmbH

Patent Trials and Appeals Board

Mar 25, 2021

2020003071 (P.T.A.B. Mar. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/307,243 10/27/2016 Antonio Casellas 137586.00034 1816
26710 7590 03/25/2021
QUARLES & BRADY LLP
ATTN: IP DOCKET
411 E. WISCONSIN AVENUE
SUITE 2400
MILWAUKEE, WI 53202-4428
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/25/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTONIO CASELLAS,
KLAUS DOLLMEIER, EBERHARD ERNST,
MARKUS LAUX, and LARS WIMBERT
____________

Appeal 2020-003071
Application 15/307,243
Technology Center 1700
____________
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 and 16–18 of Application
15/307,243. Final Act. (December 28, 2018). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies GKN Sinter Metals Engineering GmbH as the real party in
interest. Appeal Br. 1.
Appeal 2020-003071
Application 15/307,243
2
I. BACKGROUND
The ’243 Application describes a hydrogen storage means and a
process and apparatus for manufacture of the hydrogen storage means. Spec.
2. The hydrogen storage means is said to have a prolonged lifetime relative
to the prior art. Id. The hydrogen storage means comprises a composite
material that includes a hydrogenatable material. Id.
Claim 1 is representative of the ’243 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A hydrogen storage means comprising a composite
material comprising a hydrogenatable material,
wherein the composite material comprises, in a first
region, at least one matrix comprising at least one polymer into
which the hydrogenatable is embedded, and
comprises, in another, second region, one or more layers,
wherein at least one of the layers has one of the following
principal functions: hydrogen storage, heat conduction or gas
conduction and
wherein the first and second regions are compressed
together and form a composite region by applying high
pressures within a range of 500 to 6000 bar so that the
composite material is produced.
Appeal Br. Claims App. A-1 (paragraphing added).
Appeal 2020-003071
Application 15/307,243
3
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–4, 9–12, 16, and 182 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Zimmermann.3 Final Act. 2.
2. Claims 5–8, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Zimmermann and Jorgensen.4
Final Act. 4.
3. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Zimmermann, Jorgensen, and Rodriguez.5 Final
Act. 6.
III. DISCUSSION
A. Rejection of claims 1–4, 9–12, 16, and 18 as anticipated by
Zimmermann
Claim 1 is the sole independent claim on appeal. See Appeal Br.
Claims App. A-1–A-4. Appellant argues for reversal of the rejection of these
claims as a group based upon the Examiner’s alleged failure to demonstrate
anticipation of claim 1. Appeal Br. 4–8. Thus, we limit our discussion to
claim 1.
Appellant argues that the rejection of claim 1 should be reversed
because the Examiner has not established that Zimmermann describes each

2 The Examiner’s statement of the rejection includes claim 15, which was
canceled prior to the Final Action. See Resp. to Non-Final Office Action
(August 21, 2018).
3 US 2006/0237688 A1, published October 26, 2006.
4 US 2011/0297879 A1, published December 8, 2011.
5 US 5,653,951, issued August 5, 1997.
Appeal 2020-003071
Application 15/307,243
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and every element of the claimed invention as arranged in claim 1. Appeal
Br. 4–8.
The Examiner responds that this argument elevates form over the
substance of the rejection. Answer 8. According to the Examiner, he “has
responded to the claims and arguments by providing claim interpretation to
include that the applicant[’s] . . . broad claims to regions and layers without
language that define [sic] distinct structures.” Id. at 7–8.
For the reasons set forth below, we are persuaded by Appellant’s
argument.
First, claim 1 recites a specific structure—a particular arrangement of
components—for the claimed hydrogen storage means. In particular, the
hydrogen storage means comprises three regions: a first region, a second
region, and a composite region formed by pressing the first and second
regions together. The second region comprises one or more layers which has
a recited principal function.
For ease of reference, we reproduce the entirety of the Examiner’s
anticipation analysis of claim 1 as set forth in the Final Action:
Zimmerman [sic] teaches a hydrogen storage material
comprising an active material and a binder (See abstract and
figures). The active material can be a carbon and the binder can
be a polymeric material (See [0036] and claims). The active
hydrogen storage material can be graphite, activated carbon,
and combinations (See claim 7). The binder immobilizes the
active particles and creates multiple regions or layers as
claimed.
The composite article can have layers (See figures) and
comprise metals (see claims and [0030]).
Thermally conductive additives can be included
including aluminum (see 0039]).
. . . .
Appeal 2020-003071
Application 15/307,243
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Regarding claim 1 as amended and 15, the composite
is molded under pressure as claimed (see examples),
including exemplary 100 Mpa (or 1000 Bar) of pressure (see
Examples) within the newly claimed range.
Final Act. 2–3 (emphasis in original).
As can be seen, the Examiner’s findings do not address the details of
the structure recited in claim 1 with the degree of specificity required to
establish anticipation. The Examiner finds, without citation, that
Zimmermann’s hydrogen storage material comprises “multiple regions or
layers as claimed.” Final Act. 2. Without a citation to a particular portion of
Zimmermann, neither Appellant nor the Board can understand the basis for
this finding or properly evaluate its accuracy. Quite simply, the basis for the
anticipation rejection of claim 1, as set forth in the Final Action, is not
explained in sufficient detail to demonstrate that the Examiner has carried
the burden of showing anticipation.6
Second, the Examiner points to Zimmermann’s Examples as evidence
that Zimmermann describes the claimed step of compressing the first and
second regions together at a particular pressure to create a composite region.
The Examiner finds that Zimmermann describes creation of a composite
material by compression molding. Final Act. 3. The rejection, however, does
not explain the basis for the necessary finding that Zimmermann describes

6 It is important to note that we are not requiring examiners to set forth the
basis for the rejection in any particular form. What we are requiring is that
the rejection be set forth in sufficient detail and with sufficient specific
citations to the references for applicants and, if necessary, the Board to
readily understand the basis for the rejection. Whether any particular
explanation of a rejection satisfies this test must be determined on a case-by-
case basis. In this case, the Examiner has not done so.
Appeal 2020-003071
Application 15/307,243
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compressing the claimed first and second regions together to create the
composite material. Indeed, the rejection does not make this finding
explicitly. We are left to infer that the Examiner found the required
description somewhere in Zimmermann.
Based on our review of Zimmermann, we determine that the
Examiner erred by finding that Zimmermann describes the claimed step of
compressing the first and second regions together to create a composite
region. Zimmermann’s Examples describe compression molding of metal
powder with thermoplastic polymer powders to create a composite material
in which the metal powder is held within a fluoropolymer matrix. See, e.g.,
Zimmermann ¶ 43 (Ex. 1). This process does not correspond to claim 1’s
recitation of compressing the first and second regions together. The claim
recites that the first region comprises a polymer matrix into which the
hydrogenatable material is embedded. None of Zimmermann’s Examples
describe a use of starting material comprising a hydrogenatable material
embedded in a polymer matrix. See Zimmermann ¶¶ 43–46. Zimmermann,
therefore, does not describe a step of compressing a first region as that term
is used in claim 1.
In view of the foregoing, we reverse the rejection of claim 1 as
anticipated by Zimmermann. Thus, we also reverse the rejection of claims
2–4, 9–12, 16, and 18 as anticipated by Zimmermann.
B. Rejection of claims 5–8, 13, and 14 over the combination of
Zimmermann and Jorgensen
Claims 5–8, 13, and 14 depend from claim 1. For the reasons set forth
above, we determine that the Examiner has not established that
Zimmermann describes or suggests every limitation of claim 1. The
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Application 15/307,243
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Examiner’s discussion of Jorgensen does not cure the deficiencies in the
findings with respect to claim 1. We, therefore, reverse the rejection of
claims 5–8, 13, and 14 as obvious over the combination of Zimmermann and
Jorgensen.
C. Rejection of claim 17 over the combination of the Zimmermann,
Jorgensen, and Rodriguez
Claim 17 depends indirectly from claim 1. For the reasons set forth
above, we have determined that the Examiner has not established that
Zimmermann describes or suggests every limitation of claim 1. The
Examiner’s discussion of Jorgensen and Rodriguez does not cure the
deficiencies in the findings with respect to claim 1. We, therefore, reverse
the rejection of claim 17 as obvious over the combination of Zimmermann,
Jorgensen, and Rodriguez.
IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–12, 16, 18 102(a)(1) Zimmermann 1–4, 9–12, 16, 18
5–8, 13, 14 103 Zimmermann, Jorgensen 5–8, 13, 14
17 103 Zimmermann, Jorgensen, Rodriguez 17
Overall Outcome 1–14, 16–18
REVERSED