Ex Parte Abd Elhamid et al

Patent Trial and Appeal BoardOct 24, 2012

11562597 (P.T.A.B. Oct. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/562,597 11/22/2006 Mahmoud H. Abd Elhamid GP-308683 9471 83938 7590 10/24/2012 Brooks Kushman P.C. 1000 Town Center, Twenty-Second Floor Southfield, MI 48075-1238 EXAMINER RUDDOCK, ULA CORINNA ART UNIT PAPER NUMBER 1729 MAIL DATE DELIVERY MODE 10/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GM GLOBAL TECHNOLOGY OPERATIONS LLC (Application 11/562,597) ____________ Appeal 2011-011740 from Technology Center 1700 Robert W. Hodge, Examiner ____________ Before RICHARD TORCZON, MARK NAGUMO and GEORGE C. BEST, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The appellant (GM) seeks relief1 from the rejection of all its pending claims. We REVERSE.2 OPINION INTRODUCTION GM's application, entitled an "Inexpensive approach for coating bipolar plates for PEM fuel cells", relates to bipolar plates in proton exchange membrane (PEM) fuel cells.3 Claims 1, 2, 4-8, 10, 13 and 15-18 are pending and rejected over prior art. Specifically, the following grounds of rejection are on appeal: 1 35 U.S.C. 134(a). 2 35 U.S.C. 6(b). 3 Spec. title & Â¶Â¶0001-0002. Appeal 2011-011740 Application 11/562,597 2 Claims 1, 2, 5-8, 10, 13 and 16-18 are finally rejected as having been anticipated by a Tarutani patent.4 Claims 1, 6, 7, 10, 17 and 18 are finally rejected as having been anticipated by a Vyas published patent application.5 Claims 1, 2, 4, 7, 10, 13, 15 and 18 are finally rejected as having been anticipated by a Seo published patent application.6 Claims 5, 6, 8, 16 and 17 are finally rejected as having been obvious in view of Seo. Claims 2, 4, 13 and 15 are newly rejected7 as having been obvious in view of Vyas. CLAIMS GM has two independent claims on appeal, claims 1 and 10.8 GM contests rejections on the basis of two phrases common to both claim 1 and claim 10.9 We 4 Y. Tarutani et al., Stainless steel product for producing polymer electrode fuel cell, US 6,379,479 B1 (granted 20 April 2002). 5 G. Vyas et al., Ultra-low loadings of Au for stainless steel bipolar plates, US 2003/0228512 A1 (pub'd 11 Dec. 2003). We note that three of the four named Vyas inventors appear to be named inventors on the present GM application. 6 J.-W. Seo, The bipolar plate for the fuel battery, and the manufacturing method thereof and fuel battery including the same, KR 10-2005-0122452 (pub'd 29 Dec. 2005) (machine translation). 7 Ans. 3. 8 Br., Claims App. We rely on the claim language as it is reproduced in GM's claims appendix. 9 In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (focusing on contested limitation). Appeal 2011-011740 Application 11/562,597 3 select claim 1 as representative of the claims on appeal.10 Claim 1 defines the invention as follows:11 A metallic bipolar plate for use in a fuel cell having an anode diffusion layer, an anode, a cathode, and a cathode diffusion layer, the metallic bipolar plate comprising: a metal plate having a first and second surface, at least one of the first and second surfaces defining one or more channels and a contact surface, the contact surface having a surface roughness defined by a plurality of peaks and valleys wherein at least a portion of the valleys are filled with an electrically conductive material consisting of electrically conductive particles, wherein the contact surface is adapted to contact the anode diffusion layer or the cathode diffusion layer. The phrase "an electrically conductive material consisting of electrically conductive particles" means that the electrically conductive material must be (and only be, except for possible trace impurities) electrically conductive particles.12 The examiner contends that the "comprising" transitional phrase for the metallic bipolar plate permits more than just the contact-surface valleys to have more than just electrically conductive material in them.13 GM has not pointed us to a relevant, express definition in the specification. 10 MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687 F.3d 1377, 1379 (Fed. Cir. 2012) (selecting a representative claim); 37 C.F.R. Â§ 41.37(c)(1)(iv). 11 Indenting added for clarity, see 37 C.F.R. Â§ 1.75(i), and emphasis added to highlight the contested phrases. 12 Conoco, Inc. v. Energy & Envt'l Int'l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006). 13 Ans. 7. Appeal G illustrat bipolar showing filling v contact plate 50 T of the v at least conduct valleys) other m electrica places o "avoidin languag consiste F T with a l surface. 14 Spec. 15 See In give a c 16 Br. 4 17 Bell A Cir. 200 2011-0117 M Figure ion of an e plates of th conductiv alleys in th surface 62 .14 he examin alleys" are one15 cont ive materi may cont aterials or lly condu n the cont g a somew e does not nt with GM ACTS AN he examin ayer, coati Â¶Â¶0008 & re Zletz, laim its br (citing no tl. Networ 1) (relying 40 2 (right) is mbodimen e inventio e materia e roughen of a bipol er's claim "filled wi act-surface al, while o ain a heter even no el ctive mate act surface hat more exclude s 's disclos D FINDIN er contend ng or film 0023-002 893 F.2d 3 oadest rea support). k Servs. v. on patent a schema t of the n, l 64 ed ar interpretat th [the] ele valley mu ther valley ogeneous ectrically rial may b , includin expensive uch a coat ure, startin GS s that the with elect 4. 19, 321-2 sonable int Covad Co 's title to d 4 tic ion is part ctrically c st be com s (even th mix of ele conductive e present a g the peak coating st ing. Indee g with its contested rically con 2 (Fed. Cir erpretatio mmc'ns. C istinguish Appli ially corre onductive pletely ful e overwhe ctrically co material lone or in s. While G ep" is des d, inclusio title.17 limitations ductive m . 1989) (re n). o., 262 F between t cation 11/ ct. At leas material" l of electri lming maj nductive at all. Sim a mixture M argues irable,16 th n of a coa of claim aterial on versing fo .3d 1258, erms). 562,597 t "a portio , which me cally ority of th material an ilarly, the in other that e claim ting is 1 may be m the contac r failure t 1270 (Fed. n ans e d et t o Appeal T T [in] a po Tarutan the state film 12 of stainl precipit of borid inclusio inclusio and thes examine w B p c The exa F a M GM poi 18 Tarut 19 Id. at 20 Ans. 21 Ans. molybd 22 Br. 4, 2011-0117 arutani pa arutani "re lymer ele i Figure 2 in which is formed ess steel 1 ated metal e 13 and m ns of carb ns 14 are e e inclusio r also poi hen stainl is pressed olishing an ontinuousl miner furt ine powde nd the ave o2C, and nts to Taru ani 1:15-1 9:51-56. 8, citing T 8, citing T enum and citing Tar 40 tent lates to a b ctrode fuel (right) "sh a passive on the surf 0, and lic inclusio etallic ide 15 and xposed on ns are brou nts20 to dis ess steel is into stain d grinding y maintain her points rs used for rage partic B4C powd tani's disc 8. arutani 14 arutani 21 boron carb utani 9:57 ipolar pla cell".18 ows ace ns protruded the surfa ght into c closure th shot-blast less steel s , the cont ed low. 21 to the fo shot blast le size of t ers used fo losure tha :63-67. :29-32. W ide, respe -64. 5 te produce metallic ce of stain ontact with at: ed with fin o as to rem act electric llowing di ing were a he powder r shot blas t:22 C, Mo2C a ctively. Appli d from [a less steel, a carbon e particle ain there al resistan sclosure: ll industri was abou ting were nd B4C ar cation 11/ ] stainless plate 11." s of B4C, o in during ce of the s ally produ t 200 Î¼m. of high pu e tungsten 562,597 steel produ 19 The r when teel is ced, WC, rity[.] , ct Appeal 2011-011740 Application 11/562,597 6 The surface roughness of stainless steel after pickling may affect contact electrical resistance, and thus the arithmetical mean roughness of stainless steel is preferably 0.06-5 Î¼m. When the arithmetical mean roughness (Ra) of stainless steel is less than 0.06 Î¼m, the surface is very even, and thus even when conductive metallic inclusions are present in the vicinity of the surface, contact electrical resistance is rarely enhanced. The passive film causes resistance, which metallic inclusions overcome.23 Tarutani teaches a number of methods24 to expose metallic inclusions including a method for pressing metallic micro-powder of B4C, WC, or MO2C, which powder is electrically conductive, into the surface of stainless steel to remain therein, during machining of the powder such as shot blasting, polishing, or grinding[.] We find that Tarutani teaches conductive the use of metallic inclusions that extend through a passive film to provide electrical contact between the facing plates. We further find that Tarutani teaches surface roughness on the stainless steel plate, going so far as to set a lower bound for the preferred arithmetical mean roughness of the surface. While Tarutani's metallic inclusions might incidentally fill a valley in the roughened contact surface, the examiner has not pointed to an indication that filling would necessarily occur. Vyas published application The Vyas publication relates to stainless steel bipolar plates for fuel cells, including PEM fuel cells.25 23 Tarutani 7:36-43. 24 Id. 7:65-8:15. 25 Vyas, title & Â¶Â¶ 1, 2, 13 & 14. Appeal V of a sec conduct PEM fu faces 59 covered oxidatio coating another which c another In least on materia S S has a su S carbon c T materia 26 Vyas 27 Id. Â¶Â¶ 28 Seo, a the prec 29 Id. 2011-0117 yas Figure tional view ive fluid d el cell stac , 63 of the with an el n-resistan 94 compri option, on ase, only a are coated Vyas, the e embodim l necessari eo publish eo relates rface roug eo uses a s omposite he examin l of any kin Â¶Â¶0014-00 0034-0037 bstract & ise meanin 40 4 (right) of an exe istribution ks.26 The bipolar p ectrically t, and acid sing a nob ly the land djacent el .27 electrical ent, but th ly fills at l ed applica to a bipola hness.28 urface coa .29 er has not d necessa 16. . 3-4. The u g of some shows a m mplary ele element f working late 60 are conductiv -resistant le metal. s 64, 84 a ectrically c ly conduct e examine east one gr tion r plate for ting form pointed to rily fills th northodo passages 7 agnified p ctrically or use in e, In nd not the onductive ive coatin r has not p oove. a fuel batt ed from a d an indicat e valleys x grammar elusive. Appli ortion grooves 6 surfaces i g should c ointed to ery (fuel c eposited m ion that el of the roug of the ma cation 11/ 6, 86 are c n contact over every an indicat ell). The etal and ectrically hened con chine tran 562,597 oated, in with one groove in ion that th bipolar pla graphite o conductiv tact surfac slation ma at e te r e e. kes Appeal 2011-011740 Application 11/562,597 8 ANALYSIS Anticipation requires all of the limitations to be present (expressly or inherently) in a single reference.30 The examiner has not shown how Tarutani, Vyas or Seo expressly or implicitly show valleys filled with conductive material, much less conductive material consisting of electrically conductive particles. The examiner is correct that the limitation could be met by a coating of conductive particles, but has not demonstrated that the coatings of these references meet the limitation. The obviousness rejections rely on the sufficiency of the anticipation rejections; hence, they too lack the requisite factual support. HOLDING Properly interpreted, the claims require a feature that the cited references have not been shown to disclose expressly or implicitly. Consequently, final rejection of the claims isâ€” REVERSED cam For the appellant: JAMES W. PROSCIA, Brooks Kushman P.C., of Southfield, Michigan. 30 In re Gleave, 560 F.3d 1331, 1334 [90 USPQ2d 1235] (Fed. Cir. 2009).