Ex Parte Budinski

Patent Trial and Appeal BoardNov 26, 2012

12015929 (P.T.A.B. Nov. 26, 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. 12/015,929 01/17/2008 Michael K. Budinski GP-308882-FCA-CHE 3265 104102 7590 11/26/2012 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER FORREST, MICHAEL ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 11/26/2012 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 ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL K. BUDINSKI __________ Appeal 2011-011605 Application 12/015,929 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011605 Application 12/015,929 2 Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 13-25. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant’s invention is said to be directed to a method of making membrane electrode assemblies (Spec. para. [0001]; Claims App’x claim 13). Claim 13 is illustrative: 13. A method of making a membrane electrode assembly comprising: casting onto a nonporous release surface a solvent ink layer comprising a volatile solvent, a catalyst, an electrically conductive particulate material, and an ionomer binder; disposing a porous releasable decal over the solvent ink layer; drying to remove the volatile solvent from the solvent ink layer to form an electrode layer, peeling off the electrode layer and the decal together from the nonporous release surface; providing a polymer electrolyte membrane having two sides; pressing the electrode layer and the decal together against at least one of the sides of the membrane with the electrode layer in intimate contact with the membrane, causing the electrode layer to bond securely onto the membrane; and removing the releasable decal from the electrode layer. Appeal 2011-011605 Application 12/015,929 3 Appellant appeals the following rejection: Claims 13-25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yan (US 2006/0204831 A1 published Sept. 14, 2006) in view of Yoshimura (US 6,669,801 B2 issued Dec. 30, 2003) as evidenced by Carmo (Marcelo Carmo et al., Physical and Electrochemical Evaluation of Commercial Carbon Black as Electrocatalysts Supports for DMFC Applications, 173 J. POWER SOURCES 860 (2007)). ISSUE Did the Examiner reversibly err in concluding that Yan would have rendered obvious the placement of a porous decal layer over the ink layer formed on a nonporous substrate as recited in claim 13? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES Appellant argues that the Examiner engaged in impermissible hindsight in concluding that Yan would have suggested placing a porous decal over an ink layer formed on a non-porous substrate (App. Br. 15). Appellant contends that the Examiner selects teachings from two separate embodiments and combines these teachings to arrive at a third embodiment never contemplated by Yan in order to arrive at the claimed invention (id. at 14-15). Appeal 2011-011605 Application 12/015,929 4 The Examiner finds that Yan1 teaches forming electrode layers on either non-porous and/or porous decals that may be later adhered to electrode membranes to form a fuel cell structure (Ans. 4-5). The Examiner finds that Yan teaches the electrode formed on the porous or non-porous substrate has a particular ionomer gradient depending on the solvent used and the decal type (i.e., porous or non-porous) (id. at 5). Based on these teachings, the Examiner concludes that it would have been obvious to “dispose a non-porous substrate opposite to the slurry disposed on the porous releasable decal to improve the formation of an ionomer gradient.” Id. The preponderance of the evidence supports the Appellant’s argument of nonobviousness. While the Examiner is correct that Yan teaches separate embodiments that include forming electrode layers on porous and/or non- porous decals, the Examiner’s reading of Yan to teach or to suggest forming a sandwich structure where a non-porous decal is placed over an electrode layer formed on a porous decal to improve the ionomer gradient is based on impermissible hindsight. Yan teaches embodiments were the electrode layer is deposited on a porous or non-porous decal and this is transferred from the decal to the electrode membrane by using pressure and heat (Yan, paras. [0002], [0008], [0009], [0016]-[0020], [0077]). Yan teaches that the ionomer gradient may be controlled depending upon the type of decal and solvent used (Yan, para. [0062], [0075]). Yan’s embodiments involve forming an exposed electrode 1 We focus solely on the Examiner’s findings regarding Yan because the dispositive issue centers on Yan. The Examiner relies on Yoshimura and Carmo for teachings not germane to the dispositive issue. Appeal 2011-011605 Application 12/015,929 5 layer on a decal and then transferring the electrode layer from the decal to the membrane. Id. While Yan does teach and claim that the decal material may be porous and/or non-porous as found by the Examiner (Ans. 9), we fail to see how such disclosure would have suggested forming a non-porous decal-electrode layer-porous decal structure as required by the claims absent impermissible hindsight reasoning. Rather, within the context of Yan such a disclosure reasonably means that porous and non-porous decals may be used to form different, individual electrode layers for attachment to a fuel cell membrane. Yan teaches that the multiple electrode layers with different ionomer gradients may be formed and transferred to a membrane with the different layers adjacent one another to form a particular ionomer gradient in the fuel cell (see, e.g., Yan, para. [0091]). On this record, the Examiner has not established that the prior art would have suggested the proposed modification to Yan to arrive at the claimed non-porous-electrode material-porous decal structure. Rather, we agree with Appellant that the proposed modification of Yan is based on impermissible hindsight. We reverse the Examiner’s § 103 rejection. DECISION The Examiner’s decision is reversed. ORDER REVERSED bar