2020005194 (P.T.A.B. Dec. 2, 2020)

PANASONIC INTELLECTUAL PROPERTY MANAGEMENT CO., LTD.

Patent Trials and Appeals BoardDec 2, 2020

2020005194 (P.T.A.B. Dec. 2, 2020)

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. 14/432,264 03/30/2015 Toshiyuki KOJIMA 2015-0363A 1093 52349 7590 12/02/2020 WENDEROTH, LIND & PONACK L.L.P. 1025 Connecticut Avenue, NW Suite 500 Washington, DC 20036 EXAMINER WEI, ZHONGQING ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 12/02/2020 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): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIYUKI KOJIMA, MASAHIRO MORI, SHINYA KIKUZUMI, YASUHIRO UEYAMA, and YASUSHI TANIGUCHI Appeal 2020-005194 Application 14/432,264 Technology Center 1700 BEFORE BEVERLY A. FRANKLIN, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Panasonic Intellectual Property Management Co., Ltd. Appeal Br. 2. Appeal 2020-005194 Application 14/432,264 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. An electrolyte membrane for a fuel cell, comprising an electrolyte resin and a nanofiber unwoven cloth buried in the electrolyte resin, wherein the nanofiber unwoven cloth is exposed only from a first face of the electrolyte membrane, and an anode electrode is disposed on the first face of the electrolyte membrane. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Banerjee 5,795,668 Aug. 18, 1998 Gummalla WO 2012/099582 A1 July 26, 2012 REJECTIONS Claims 1–8 are rejected under35 U.S.C. § 103 as being unpatentable over Banerjee in view of Gummalla. OPINION We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse the Examiner’s rejection on appeal Appeal 2020-005194 Application 14/432,264 3 essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. At issue is the interpretation of the teachings of Banerjee (relied upon by the Examiner as the primary reference). Specifically, the Examiner believes that the use of the word “membrane” in column 7, lines 20–22 refers to Banerjee’s ion exchange resin layer. Based upon this interpretation, the Examiner believes that Banerjee teaches the claim element of the “nanofiber unwoven cloth buried in the electrolyte resin.” Final Act. Ans. 3–10. We agree with Appellant that this understanding of Banerjee is in error for the following reasons. As pointed out by Appellant on page 12 of the Appeal Brief, Banerjee teaches that the Banerjee membrane is a combination of the porous support layer and one or more ion exchange resin layers. See, e.g., col. 3, ll. 35–38 of Banerjee. Banerjee’s Abstract also teaches the same disclosure, and teaches that the ion exchange resin layer is supported on one or both sides of the porous support layer. Thus, Banerjee’s membrane can have two types of structures (as depicted below), wherein the first type is when the ion exchange resin layer is supported on one side of the porous support layer, and the second type is when the ion exchange resin layer is supported on both sides of the porous support layer. Two diagrams are shown below showing these two types (Diagram 1 and Diagram 2). Appeal 2020-005194 Application 14/432,264 4 Porous support layer Ion exchange resin layer Diagram 1 membrane having an ion exchange resin layer that is supported on one side of the porous support layer OR Ion exchange resin layer Porous support layer Ion exchange resin layer Diagram 2 membrane having an ion exchange resin layer that is supported on both sides of the porous support layer Hence, the disclosure at lines 20–21 in column 7 of Banerjee of “[t]he porous support layer may be on either one or both surfaces of the membrane” is a reference to the two types of structures of the membrane as shown above. Further, the disclosure at lines 21–22 in column 7 of Banerjee of “[i]t may also be fully or partially embedded in the membrane” is also a reference to the two types of structures of the membranes as shown above. The first type of structure shown above depicts the membrane when the porous support layer can be partially embedded within it, and the second type of structure shown above depicts a membrane when the porous support Appeal 2020-005194 Application 14/432,264 5 layer is fully embedded within it (i.e., the porous support layer is located fully within the membrane). In addition, as Appellant points out, the manner in which the porous support layer is attached to the ion exchange resin layer is by being adhered or laminated to the porous support layer. Reply Br. 2. Banerjee, col. 11, ll. 21–22. Therefore, the Examiner does not adequately explain how a Banerjee porous support layer is “buried” in the ion exchange layer. In summary, the porous support layer is partially or fully embedded in the membrane, as discussed. supra. The Examiner, however, does not adequately establish that the membrane is an ion exchange resin layer or is otherwise equivalent to claim 1’s “electrolyte resin”. In view of the above, we reverse the rejection. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 1–8 103 Banerjee, Gummalla 1–8 REVERSED