Ned E. Cipollini et al.

Patent Trials and Appeals Board

Aug 28, 2019

11722862 - (D) (P.T.A.B. Aug. 28, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/722,862 06/26/2007 Ned E. Cipollini P99136WO0US0/130509551USP 3505
500 7590 08/28/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
O DONNELL, LUCAS J
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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.
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NED E. CIPOLLINI, DAVID A. CONDIT,
SERGEI F. BURLATSKY, THOMAS H. MADDEN, and
WAYDE R. SCHMIDT
____________

Appeal 2019-000173
Application 11/722,862
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7–12, 14–18, 23, and 25–27 under 35 U.S.C.
§ 103(a) as unpatentable over Smith2 in view of Burlatsky3 and Fannon.4
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).

1 Appellants identify Audi AG in the Appeal Brief as the real party in
interest (Appeal Br. 1).
2 Smith et al., US 2003/0221311 A1, published December 4, 2003
(“Smith”).
3 Burlatsky et al., US 2004/0224216 A1, published November 11, 2004
(“Burlatsky”).
4 Fannon et al., US 2005/0048349 A1, published March 3, 2005 (“Fannon”).
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We AFFIRM-IN-PART.5

STATEMENT OF THE CASE
The invention relates to a membrane electrode assembly (MEA)
including an anode, a cathode, a membrane disposed between the anode and
cathode, catalyzed layers between the anode and the membrane and/or the
cathode and the membrane, and an edge seal positioned along an edge of the
MEA such that the membrane and the catalyzed layers extend into the edge
seal. Spec. ¶ 8.
Appellants’ two independent claims cover two different embodiments
as depicted in Figures 2 and 3. Claim 23 is illustrative of the first
embodiment of Figure 2, whereas claim 26 is illustrative of the second
embodiment of Figure 3. Figures 2 and 3, along with claims 23 and 26 are
reproduced. Numerals corresponding to structures in the figures have been
added; limitations at issue are italicized.

Figure 2, depicting a 1st embodiment of an edge of an MEA
23. A membrane electrode assembly [10], comprising:

5 Our Decision refers to the Specification (“Spec.”) filed June 26, 2007,
Appellants’ Appeal Brief (“Appeal Br.”) filed April 9, 2018, the Examiner’s
Answer (“Ans.”) dated August 7, 2018, and Appellant’s Reply Brief (“Reply
Br.”) filed October 8, 2018.
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an anode [54] including an anode catalyst layer having an anode
catalyst layer porosity;
a cathode [56] including a cathode catalyst layer having a
cathode catalyst layer porosity;
a membrane [52] disposed between the anode and the cathode,
the membrane including an edge portion that extends past the anode
and the cathode;
a catalyzed layer [58,60] adjacent to the membrane, the
catalyzed layer including an edge portion that extends past the anode
and the cathode, the catalyzed layer having a catalyzed layer porosity
that is less than the anode catalyst layer porosity and less than the
cathode catalyst layer porosity;
a first gas diffusion layer [62] adjacent to the anode;
a second gas diffusion layer [64]adjacent to the cathode; and
an edge seal [66] positioned around the edge portions of the
membrane and the catalyzed layer and not positioned around the
edges of the first gas diffusion layer, the second gas diffusion layer,
the anode, and the cathode, the edge seal having ends that abut the
first gas diffusion layer, the second gas diffusion layer, the anode, and
the cathode, the edge portions of the membrane and the catalyzed
layer extending into the edge seal past the ends of the edge seal.

Figure 3, depicting the 2nd embodiment of an MEA
26. A membrane electrode assembly [10], comprising:
an anode [54] including an anode catalyst layer having an anode
catalyst layer porosity;
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a cathode [56] including a cathode catalyst layer having a
cathode catalyst layer porosity;
a membrane [52] disposed between the anode and the cathode;
a catalyzed layer [58,60] adjacent to the membrane, the
catalyzed layer having a catalyzed layer porosity that is less than the
anode catalyst layer porosity and less than the cathode catalyst layer
porosity;
a first gas diffusion layer [62] adjacent to the anode;
a second gas diffusion layer [64] adjacent to the cathode; and
an edge seal [66], the anode, the cathode, the membrane and
the catalyzed layer extend into the edge seal, the membrane and the
catalyzed layer extend further into the edge seal than the anode and
cathode, and the first and second gas diffusion layers do not extend
into the edge seal.

ANALYSIS
Claim 23
The Examiner finds that Smith, Figure 3, illustrates an MEA
substantially as recited in claim 23, including membrane 124 and catalyzed
layers 126 adjacent the membrane extending into edge seal 150, while gas
diffusion layers 130, 132 abut the edge seal. Ans. 3–5. The Examiner finds
that gas diffusion layers 130, 132 include the anode and cathode,
respectively. Id. at 4. The Examiner acknowledges that Smith fails to teach
the catalyzed layer porosity with respect to the electrode porosity. Id. at 5.
The Examiner finds that Burlatsky teaches an MEA having anode and
cathode with electrode catalyst and catalyzed layers having different
properties than the electrode catalyst, wherein the catalyzed layers are
characterized as “extended anode” and “extended cathode” having porosities
which are 5–50% less than that of the anode and cathode. Ans. 5–6. The
Examiner further finds that Burlatsky teaches that these extended anode and
cathode reduce fuel crossover, minimize membrane degradation, and extend
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MEA life. Id. at 6. In addition, the Examiner finds that Fannon teaches
extending the catalytic layer into the area of the gasket of an MEA allows
fuel to be oxidized prior to its leaking out or around the diffusion layer. Id.
at 6–7. Therefore, the Examiner concludes that it would have been obvious
to have modified Smith to include extended catalyst layers and electrode
catalyst layers, and to extend the catalyzed membrane into the edge seal in
order to oxidize fuel prior to its leaking out or around the membrane, and
reduce fuel crossover and membrane degradation, thereby extending MEA
life. Id. at 7.
Appellants argue that neither Smith nor Burlatsky teaches or suggests
the relative positions of distinct catalyst and catalyzed layers, such as
whether and how far they extend into the edge seal. Appeal Br. 8. In
particular, Appellants acknowledge that Smith teaches its gas diffusion
layers can comprise materials for use as an electrode, but contend that Smith
fails to teach or suggest an MEA having a catalyzed layer distinct from the
anode and cathode catalyst layers. Id. at 7–8. Further, Appellants
acknowledge the Examiner’s finding that Burlatsky teaches distinct catalyst
and catalyzed layers having different porosities, but contend that Burlatsky
provides “no specificity regarding the relative positions of these layers, such
as how far they extend into an edge seal.” Id. at 7. As to the Examiner’s
interpretation that specific portions of Smith’s gas diffusion layers are gas
diffusion layers and not electrodes, while other portions are electrodes and
not gas diffusion layers, Appellants urge that this interpretation is
unsupported in Smith. Reply Br. 2. Appellants assert that the Examiner
fails to cite any portion of Smith in support of this interpretation. Id.
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Appellants’ arguments and contentions are not persuasive of
reversible error. We note that Smith teaches that MEA 22 can include a
catalyzed membrane (i.e., a membrane with catalyzed layers on each side
thereof), two catalyzed gas diffusion layers (i.e., anode and cathode with
catalyst layers and gas diffusion layers), or a combination of a catalyzed
membrane and catalyzed gas diffusion layers. Smith ¶ 23. Thus, contrary to
Appellants’ argument, Smith’s combination provides distinct electrode
catalyst layers as well as membrane catalyzed layers.
Moreover, in the embodiment of Figure 3, as the Examiner finds (Ans.
3–5), Smith shows an MEA 121 comprising a membrane 124 and catalyzed
layers 126 extending into an edge seal, and gas diffusion layers 130, 132
abutting the edge seal. Smith Fig. 3, ¶ 25. Because Smith teaches that the
gas diffusion layers 130, 132 may include catalyst layers and, as Appellants
acknowledge, electrode material, a person of ordinary skill in the art would
reasonably interpret Smith’s Figure 3 embodiment as teaching that the
electrode catalyst layers and gas diffusion layers do not extend into the edge
seal.
Appellants do not separately argue dependent claims 7–12, 14–18, 25,
and 26. Accordingly, we sustain the Examiner’s obviousness rejection of
claim 23, and its dependent claims.

Claim 26
Unlike the rejection of claim 23, the Examiner relies on Smith’s
Figure 2 embodiment in concluding that claim 26 would have been obvious
over the combination of Smith, Burlatsky, and Fannon. Ans. 8–9. This
obviousness conclusion relies on the Examiner’s finding that Smith’s Figure
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2 embodiment teaches an MEA whose membrane and catalyst layer extend
further into the edge seal than the anode or cathode, but that the gas
diffusion layers do not extend into the edge seal. Id.
Appellants argue that neither Smith nor Burlatsky teaches or suggests
the relative positions of distinct catalyst and catalyzed layers, such as
whether and how far they extend into the edge seal. Appeal Br. 9.
Appellants contend that the Examiner’s rejection is premised on the finding
that specific portions of Smith’s gas diffusion layers are the recited
electrodes, while other portions are the gas diffusion layers. Id. at 9–10.
Appellants urge that this interpretation is unsupported in Smith. Id. To the
contrary, Appellants assert that Smith’s Figure 2 embodiment clearly shows
that the gas diffusion layers 30, 32 extend into the edge seal. Id. at 10.
Appellants’ argument is persuasive of reversible error. As
Appellants’ contend, the Examiner’s interpretation of Smith’s gas diffusion
layers in Figure 2 is premised on the assumption that these gas diffusion
layers would contain electrodes as layers therein closest to the membrane
and that gas diffusion layers would be layers therein furthest from the
membrane. While this interpretation is reasonable, the Examiner fails to
direct our attention to any description of the thickness of the electrodes in
the gas diffusion layers 30, 32 that reasonably would have led one skilled in
the art to understand that only the electrodes extend into the edge seal and
not the gas diffusion layers, nor do we find any. Indeed, Smith teaches that
gaskets 34, 36 are secured around the perimeters of gas diffusion layers 30,
32, and Figure 2 appears to be depicting these gaskets as compressing the
gas diffusion layers, thereby suggesting that the entire thickness of the gas
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diffusion layers extend into the edge seal. As such, the Examiner’s finding
lacks sufficient support in Smith’s disclosure.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. 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”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). Here, the Examiner has not carried the burden of
establishing, by a preponderance of the evidence, the factual basis for the
conclusion that the claimed invention would have been obvious.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
claim 26.

DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner’s Answer, the decision of the Examiner rejecting claims 7–
12, 14–18, 23, and 25 is affirmed.
However, for the reasons given in the Appeal and Reply Briefs and
above, the decision of the Examiner rejecting claim 26 is reversed.
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).

AFFIRMED-IN-PART