CIPOLLINI, Ned E.

Patent Trials and Appeals Board

Oct 1, 2019

14758572 - (D) (P.T.A.B. Oct. 1, 2019)

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.
14/758,572 06/30/2015 Ned E. CIPOLLINI 67715-049 PUS1 4666
26096 7590 10/01/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
CARRICO, ROBERT SCOTT
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NED E. CIPOLLINI
____________

Appeal 2019-000902
Application 14/758,572
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 11 and 15–31, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed June 30, 2015
(“Spec.”); Final Office Action dated Nov. 21, 2017 (“Final Act.”); Advisory
Action dated Mar. 7, 2018 (“Adv. Act.”); Appeal Brief filed June 1, 2018
(“Appeal Br.”); Examiner’s Answer dated Sept. 10, 2018 (“Ans.”); and
Reply Brief filed Nov. 12, 2018 (“Reply Brief”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Doosan Fuel Cell America, Inc. as the
real party in interest. Appeal Br. 1.
Appeal 2019-000902
Application 14/758,572
2
The Claimed Subject Matter
Appellant’s disclosure relates to a method for making an electrode for
a phosphoric acid fuel cell using a soluble fluoropolymer. Abstract; Spec.
¶¶ 1, 10, 11. Claim 11 is illustrative of the claimed subject matter on appeal
and is reproduced below from the Claims Appendix to the Appeal Brief:
11. A method for making an electrode for a phosphoric
acid fuel cell, the method comprising:
combining catalyst particles with a fluoropolymer
solution to form a catalyst-fluoropolymer dispersion;
depositing the catalyst-fluoropolymer dispersion
onto a heated substrate to produce a deposit on the
substrate;
wetting the deposit and the substrate with solvent;
and
pressing the wetted deposit and the substrate to
obtain the electrode.
Appeal Br. 12 (key disputed claim language italicized and bolded).
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Reddy et al. (“Reddy”) US 5,084,144 Jan. 28, 1992
Dhar US 5,521,020 May 28, 1996
Hampden-Smith et al.
(“Hampden-Smith”)
US 2003/0198849 A1 Oct. 23, 2003
Gascoyne et al. (“Gascoyne”) US 2004/0076871 A1 Apr. 22, 2004
Hong et al. (“Hong”) US 2007/0184334 A1 Aug. 9, 2007
Natter et al. (“Natter”) US 2010/0273085 A1 Oct. 28, 2010
Ziser et al. (“Ziser”) US 2011/0091788 A1 Apr. 21, 2011
Mitchell et al. (“Mitchell”) US 2014/0045095 A1 Feb. 13, 2014

Appeal 2019-000902
Application 14/758,572
3
The Rejections
On appeal, the Examiner maintains (Ans. 3) the following rejections3:
1. Claims 21, 24, 26, and 27 are rejected under 35 U.S.C. § 112(b)
or pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor or for pre-AIA, the applicant regards as the invention
(“Rejection 1”). Final Act. 3–4.
2. Claims 11, 15–19, 21, 22, and 24–27 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hong in view of
Dhar and Ziser (“Rejection 2”). Id. at 5–9.
3. Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hong in view of Dhar and Ziser as applied to claim 11
above, and further in view of Hampden-Smith (“Rejection 3”). Id. at 9.
4. Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hong in view of Dhar and Ziser as applied to claim 11
above, and further in view of Gascoyne (“Rejection 4”). Id. at 9–10.
5. Claim 28 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hong in view of Dhar and Ziser as applied to claim 27
above, and further in view of Mitchell (“Rejection 5”). Id. at 10–11.
6. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hong in view of Dhar and Ziser as applied to claim 11
above, and further in view of Gascoyne and Natter (“Rejection 6”). Id.
at 11–12.

3 The Examiner’s § 112 rejections of claims 15, 28, and 29 for indefiniteness
(see Final Act. 3–4) and § 101 rejection of claims 28 and 29 (id. at 4) are
withdrawn by the Examiner at page 3 of the Answer.
Appeal 2019-000902
Application 14/758,572
4
7. Claims 30 and 31 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Hong in view of Dhar and
Ziser as applied to claim 11 above, and further in view of Reddy
(“Rejection 7”). Id. at 12–13.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 21, 24, 26, and 27 under § 112 for
indefiniteness. Final Act. 3–4. In particular, the Examiner determines that
the phrase “moderate temperature and pressure” of claim 21; the term
“ultraporous” of claim 24; and the terms “high sheer” and “ultra sheer” of
claims 26 and 27 are all indefinite because they are relative terms, i.e., terms
of degree, which are not defined by the claim, and the Specification does not
provide a standard for ascertaining the requisite degree. Id. at 3. Thus, the
Examiner determines one of ordinary skill in the art would not be reasonably
apprised of the scope of the invention, as recited in each of the rejected
claims. Id. at 3–4. The Examiner also determines that claim 27 is indefinite
because there is insufficient antecedent basis for “the catalyst suspension”
recitation of the claim. Id. at 4.
In response, Appellant principally argues the Examiner’s rejection
should be reversed because the claim terms identified by the Examiner are
Appeal 2019-000902
Application 14/758,572
5
not indefinite, but instead, are sufficiently clear to a person of skill in the art
and a person of skill in the art reading each claim in its entirety would have
understood each term’s meaning. See Appeal Br. 3–4; Reply Br. 1–2.
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection. During prosecution, a claim is properly rejected as
indefinite if, after applying the broadest reasonable interpretation, the metes
and bounds of the claimed subject matter are not clear. Ex parte McAward,
Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (quoting In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014))
(“[A] claim is indefinite when it contains words or phrases whose meaning
is unclear.”). Claim language reciting “words of degree” is imprecise unless
a definition or guideline is set forth in the Specification by which the recited
degree can be measured, such that the scope of the claim can be ascertained.
Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.
Cir. 1984) (“When a word of degree is used the . . . court must determine
whether the patent’s specification provides some standard for measuring that
degree.”).
Based on the Examiner’s fact-finding and reasoning provided at pages
3–4 of the Answer and pages 3–4 of the Final Office Action, we concur with
the Examiner’s determination that claims 21, 24, 26, and 27 are indefinite.
In particular, as the Examiner finds (Ans. 3–4; Final Act. 3–4), the phrase
“moderate temperature and pressure” of claim 21, the term “ultraporous” of
claim 24, and the terms “high sheer” and “ultra sheer” of claims 26 and 27
are all relative terms of degree and the Specification does not provide a
standard by which the recited degree can be measured, such that the scope of
the claims cannot be ascertained.
Appeal 2019-000902
Application 14/758,572
6
For example, although the Specification states that “amorphous
fluoropolymers can be soluble in solvent at ambient temperatures, while the
semi crystalline copolymers can require an elevated temperature in order to
be soluble in solvent” (Spec. ¶ 36), it does not provide a standard or
guideline for determining what may constitute a “moderate temperature and
pressure,” as recited in claim 21. Similarly, although paragraph 41 of the
Specification states that the catalyst dispersion and fluoropolymer solution
are “mixed in a high sheer/ultra sheer mixing step 26” and the “deposit is
ultraporous due to the large volume of gas generated by solvent
evaporation,” the Specification does not define these terms. Appellant also
does not identify or direct us to any portion of the Specification where these
terms are defined or a standard for measuring the recited degree is provided.
Appellant’s contentions that the recited terms are sufficiently clear to
a person of skill in the art and a person of skill in the art would have
understood the meaning of each term (Appeal Br. 3–4) are not persuasive of
reversible error in the Examiner’s rejection because they are conclusory. In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s
arguments or conclusory statements, which are unsupported by concrete
factual evidence, are entitled to little probative value).
Accordingly, we affirm the Examiner’s rejection of claims 21, 24, 26,
and 27 under 35 U.S.C. § 112 for indefiniteness.
Rejection 2
Appellant argues claims 11, 15–19, 21, 22, and 24–27 as a group.
Appeal Br. 6. We select independent claim 11 as representative and the
Appeal 2019-000902
Application 14/758,572
7
remaining claims subject to the Examiner’s rejection stand or fall with
claim 11. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Hong, Dhar, and
Ziser suggests a method of making an electrode for use in a phosphoric acid
fuel cell satisfying all of the steps of claim 11 and, thus, concludes the
combination would have rendered the claimed method obvious. Final
Act. 5–7 (citing Hong, Abstract, Figs. 1A, 2, ¶¶ 23, 24, 30, 34, 38–42, 45;
Abstract, 5:25–40; Ziser, Abstract, ¶¶ 127–130, 138).
Appellant argues that the Examiner’s rejection should be reversed
because “the Hong reference teaches away from using the technique of the
Dhar reference.” Appeal Br. 6; see also Reply Br. 2 (arguing the “Examiner
cannot avoid the way in which the Hong reference teaches away from the
technique of the Dhar reference”). In particular, relying on paragraph 48 of
Hong, Appellant contends that because Hong teaches binding water repellant
material to a catalyst before exposing the catalyst to an electrolyte such as
phosphoric acid and Dhar teaches mixing a catalyst with an electrolyte and
applying that mixture to the electrode that already contains the water
repellant material, “a person of skill would be led away from using the Dhar
reference for . . . modifying the Hong reference.” Appeal Br. 6.
We do not find Appellant’s teaching away argument persuasive of
reversible error in the Examiner’s rejection because Appellant does not
identify sufficient evidence to support it, and we will not read into the
references a teaching away where no such language exists. Cf. DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006). Appellant does not direct us to any teaching in Hong or Dhar which
discourages one of ordinary skill in the art from depositing the
Appeal 2019-000902
Application 14/758,572
8
catalyst-fluoropolymer dispersion onto a heated substrate in the manner
claimed. In re Fulton, 391 F.3d 1195, 1201 (finding there is no teaching
away where the prior art’s disclosure “does not criticize, discredit, or
otherwise discourage the solution claimed”).
Although paragraph 48 of Hong describes an embodiment where the
“electrode may be doped with an acid, such as phosphoric acid” and “[w]hen
the electrode is doped with the acid, the metal catalyst is prevented from
sinking in the acid,” such disclosure, without more, does not teach away
from Dhar’s method of catalyzing a gas diffusion electrode over a hot plate.
See In re Susi, 440 F.2d 442, 445-46 (CCPA 1971) (explaining disclosure of
a particular embodiment does not teach away from a prior art reference’s
broader disclosure). Contrary to what Appellant’s argument suggests,
paragraph 48 of Hong, when read in context, does not require that the
electrode be doped. Rather, it merely states that the electrode “may be
doped with an acid, such as phosphoric acid.” See id. at ¶ 48 (emphasis
added).
Moreover, as the Examiner finds (Final Act. 5–6), Hong discloses a
method of making an electrode for use in a phosphoric acid fuel cell
comprising a catalyst-fluoropolymer dispersion (Hong, Abstract, ¶¶ 23, 24,
30, 45, 51, Figs. 1A, 2) and Dhar discloses applying a catalyst paste to the
catalyzable side of the gas diffusion electrode while the electrode is
preferably kept over a hot plate at a temperature of about 80°–100° C (Dhar
5:25–40). Hong’s disclosure at paragraph 48 regarding a specific
embodiment where the electrode may be doped does criticize or teach away
from Dhar’s disclosure in this regard.
Appeal 2019-000902
Application 14/758,572
9
Appellant further argues the “Dhar reference . . . does not teach
depositing a catalyst-fluoropolymer onto a heated substrate,” as required by
the claim. Appeal Br. 7. We do not find this argument persuasive of
reversible error because Appellant attacks the references individually rather
than the combined teachings of the prior art as a whole. One cannot show
non-obviousness by attacking references individually where the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Appellant’s argument is premised on what Appellant
contends Dhar teaches individually, and not the combined teachings of the
cited references as a whole and what the combined teachings would have
suggested to one of ordinary skill in the art.
As the Examiner finds (Final Act. 5–6) and previously discussed
above, Hong is relied upon in the rejection for teaching combining catalyst
particles with a fluoropolymer solution to form a catalyst-fluoropolymer
dispersion (Hong ¶¶ 23, 24, 30, Figs. 1A, 2), while Dhar is relied upon for
teaching depositing the catalyst-fluoropolymer dispersion onto a heated
substrate, i.e., a “hot plate” (Dhar 5:25–40).
Appellant also argues the Examiner’s rejection should be reversed
because Ziser does not teach or suggest the steps of “wetting the deposit and
the substrate” and “pressing the wetted deposit,” as claimed, and there is no
reason for combining Ziser’s teachings with the combination of Hong and
Dhar. Appeal Br. 8. In particular, Appellant contends Ziser teaches
assembling an electrode into a membrane and “[t]hat is not the same thing as
applying a catalyst-fluoropolymer dispersion to a substrate under pressure.”
Id. at 8 (citing Ziser ¶ 130). Appellant also contends that impregnating an
Appeal 2019-000902
Application 14/758,572
10
electrode with phosphoric acid, as described in paragraph 138 of Ziser, “is
not the same thing as wetting [the deposit],” as recited in the claim. Id. at 8.
We do not find Appellant’s contentions persuasive because they are
conclusory and unsupported by persuasive evidence in the record.
De Blauwe, 736 F.2d at 705; Geisler, 116 F.3d at 1470. On the contrary, we
find a preponderance of the evidence supports the Examiner’s finding that
Ziser teaches or suggests the steps of “wetting the deposit and the substrate”
and “pressing the wetted deposit” in the manner claimed.
In particular, as the Examiner finds (Final Act. 6–7), Ziser discloses
transferring the electrode into a membrane-electrode assembly by hot
pressing via application of pressure and temperature (Ziser ¶¶ 127–130) and
that the electrodes are impregnated with phosphoric acid, combined with the
electrolyte membrane, and hot-pressed (id. at ¶ 138), which a person of
ordinary skill in the art would have reasonably understood as corresponding
to the “wetting the deposit and the substrate” and “pressing the wetted
deposit” recitations of the claim.
The Examiner also provides a reasoned basis, which is supported by a
preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of Ziser with Hong and Dhar to
arrive at Appellant’s claimed method. Final Act. 6–7. See also KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Appellant fails to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning lacks a rational underpinning or is otherwise based on some other
Appeal 2019-000902
Application 14/758,572
11
reversible error. Appellant’s disagreement as to the Examiner’s factual
findings and reasoning for combining the references, without more, is
insufficient to establish reversible error. Cf. SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of
disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Accordingly, we affirm the Examiner’s rejection of claims 11, 15–19,
21, 22, and 24–27 under 35 U.S.C. § 103(a) as obvious over the combination
of Hong, Dhar, and Ziser.
Rejections 3, 4, 6, and 7
The Examiner’s Rejections 3, 4, 6, and 7 (stated above) are all
obviousness rejections based primarily upon the combination of Hong, Dhar,
and Ziser, which is discussed above for Rejection 2.
Appellant, however, does not present any new or additional
substantive arguments in response to these rejections. Rather, Appellant
relies on principally the same arguments previously presented and discussed
above in response to Rejection 2. See Appeal Br. 9–10.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner’s rejection of claims 11, 15–19, 21, 22, and 24–27
based on the combination of Hong, Dhar, and Ziser (Rejection 2, stated
above), we affirm Rejections 3, 4, 6, and 7.
Rejection 5
Claim 28 depends from claim 27 and further recites “wherein the
sonicating comprises using an ultrasonic sonicator for 5 minutes with pulses
Appeal 2019-000902
Application 14/758,572
12
of 5 seconds on and 5 seconds off at a power of 20%, 50 w.” Appeal Br. 13
(Claims Appendix).
The Examiner determines that the combination of Hong, Dhar, Ziser,
and Mitchell suggests a method satisfying all of the steps of claim 28 and
thus, concludes the combination would have rendered the claim
obvious. Final Act. 10–11.
Appellant argues the Examiner’s rejection of claim 28 should be
reversed for the same reasons previously presented and discussed above in
response to the Examiner’s Rejection 2. Appeal Br. 9. We do not find this
argument persuasive for principally the same reasons discussed above for
affirming the Examiner’s Rejection 2.
Appellant further argues the cited art does not teach the “using an
ultrasonic sonicator for 5 minutes with pulses of 5 seconds on and 5 seconds
off at a power of 20%, 50 w” recitation of the claim. Appeal Br. 9. We do
not find this argument persuasive of reversible error in the Examiner’s
rejection based on the fact-finding and reasoning provided by the Examiner
at pages 6–7 of the Answer and pages 10–11 of the Final Action.
In particular, we find a preponderance of evidence and sound
technical reasoning support the Examiner’s determination that it would have
been obvious to a person having ordinary skill in the art at the time of the
invention to have performed the sonicating for the claimed time period,
pulse length, and power through routine experimentation because the general
conditions of the claim are known. See Mitchell ¶ 44 (disclosing the
“material is then sonicated again for about 5 minutes, set to a pulse mode of
10 seconds on and 10 seconds off at 18 watts”); see also In re Aller, 220
F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are
Appeal 2019-000902
Application 14/758,572
13
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”). In this regard, we observe
that the Specification assigns no particular criticality to the pulse times and
power in the ultrasonic sonicator, but rather describes the pulses of five
seconds on and five seconds off and power of 20%, 50 W as “example”
conditions. Spec. ¶ 43.
Appellant’s contentions that “the Mitchel reference teaches different
conditions” (Appeal Br. 9) and “[t]he parameters taught by the Mitchel
reference are different than those required for establishing a prima facie case
of obviousness” (Reply Br. 4) are conclusory and, without more, insufficient
to rebut or otherwise establish reversible error in the Examiner’s factual
findings and analysis in this regard.
Accordingly, we affirm the Examiner’s rejection of claim 28 under
35 U.S.C. § 103(a) as obvious over the combination of Hong, Dhar, Ziser,
and Mitchell.
Appeal 2019-000902
Application 14/758,572
14
CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
21, 24, 26, 27 § 112

21, 24, 26, 27
11, 15–19, 21,
22, 24–27
§ 103(a)
Hong, Dhar, Ziser
11, 15–19,
21, 22, 24–27

20 § 103(a)
Hong, Dhar, Ziser,
Hampden-Smith
20
23 § 103(a)
Hong, Dhar, Ziser,
Gascoyne
23
28 § 103(a)
Hong, Dhar, Ziser,
Mitchell
28
29 § 103(a)
Hong, Dhar, Ziser,
Gascoyne, Natter
29
30, 31 § 103(a)
Hong, Dhar, Ziser,
Reddy
30, 31
Overall
Outcome
11, 15–31

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