Ex Parte Hong et al

Patent Trials and Appeals Board

Jan 28, 2019

14182436 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/182,436 02/18/2014 Bo Ki Hong
100807 7590 01/30/2019
Mintz Levin/Special Group
One Financial Center
Boston, MA 02111
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
48268-26 lDOl us 4676
EXAMINER
FITZSIMMONS, ALLISON G
ART UNIT PAPER NUMBER
1778
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO KI HONG and KOOK IL HAN
Appeal 2018-001196
Application 14/182,436
Technology Center 1700
Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 9-17. 3 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 In this Decision, we refer to the Specification filed February 18, 2014
("Spec."), the Final Office Action dated December 29, 2016 ("Final Act."),
the Appeal Brief filed June 30, 2017 ("Br."), and the Examiner's Answer
dated September 15, 2017 ("Ans.").
2 Appellant is the Applicant, Hyundai Motor Company, which, according to
the Appeal Brief, is the real party in interest. Br. 1.
3 Independent claim 18 is withdrawn from consideration by the Examiner as
directed to a non-elected invention. Final Act. 2.
Appeal 2018-001196
Application 14/182,436
The subject matter on appeal relates to a method for manufacturing a
gas diffusion layer (GDL) for fuel cell applications. Spec. 1, 11. 8-9.
Independent claim 9, reproduced below from the Claims Appendix with
emphasis to highlight a key disputed limitation, is illustrative of the claims
on appeal.
9. A method of manufacturing a compressible gas diffusion
layer (GDL) for fuel cell applications, the fuel cell comprising a
polymer electrolyte membrane, catalyst layers, gas diffusion
layers and bipolar plates, wherein each of the gas diffusion
layers is attached to an outer surface of each of the catalyst
layers coated on both sides of the polymer electrolyte
membrane, each of the bipolar plates is attached to an outer
surface of each of the gas diffusion layers and is composed of a
major flow field having a longer accumulated length of the flow
field channels and a minor flow field having a shorter
accumulated length of the flow field channel than the major
flow field, and each of the gas diffusion layers has a width
direction perpendicular to a major flow field direction of each
of the bipolar plates and a length direction which is in parallel
with the major flow field direction of each of the bipolar plates,
the method comprising:
a first step of providing, by a GDL material supply
means, a rolled compressible GDL material having a dual layer
structure including a microporous layer and a macroporous
substrate which is formed of carbon fiber felt, or carbon fiber
paper, wherein a machine direction of the rolled compressible
GDL material is an inherent high stiffness direction and a
cross-machine direction thereof is a low stiffness direction,
a second step of determining, by an angle determining
means, a certain angle ( q) formed by the machine direction of
the inherent high stiffness of the compressible GDL material
and the major flow field direction of each of the bipolar plates
such that the machine direction of the inherent high stiffness of
the compressible GDL material is not in parallel with the major
flow field direction of the bipolar plate to reduce the
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Application 14/182,436
compressible GD L's intrusion into flow field channels of the
bipolar plate being in contact with the compressible GDL, and
a third step of cutting, by a cutting means, the rolled
compressible GDL material according to the certain angle
determined in the second step, to make the compressible GDL
in which the inherent high stiffness direction of the
compressible GDL is arranged in one direction and the inherent
high stiffness direction of the compressible GDL is not parallel
with the length direction of the compressible GDL.
Br. 14 (Claims App.).
Independent claim 17 is similar to independent claim 9. Id. at 16
(Claims App.). Appellant's arguments are directed to features common to
both independent claims 9 and 17. Br. 8-12.
REJECTIONS
The Examiner maintains the following rejections on appeal (Final
Act. 3-18; Ans. 2-18):
Rejection 1: Claims 9-17 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
Rejection 2: Claims 9-17 under 35 U.S.C. § 112, second paragraph,
as indefinite;
Rejection 3: Claims 9-11, 16, and 17 under 35 U.S.C. § I03(a) over
U.S. DEP'T OF ENERGY FLORIDA SOLAR ENERGY CENTER, DOE CONTRACT
No. DE-FC36-06G0I6028, PROCEDURE FOR PERFORMING PEM SINGLE CELL
TESTING, (2009) ("DOE") and Mathias et al. (US 2005/0042500 Al,
published February 24, 2005) ("Mathias") or over Mathias and DOE in view
of WO 97/13287 (published April 10, 1997) ("WO '287"), and Zuber et al.
(US 2002/0051901 Al, published May 2, 2002) ("Zuber");
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Application 14/182,436
Rejection 4: Claims 12 and 13 under 35 U.S.C. § I03(a) over DOE
and Mathias or alternatively over Mathias and DOE in view of WO '287,
Zuber, and Beattie et al. (US 2002/0058180 Al, published May 16, 2002)
("Beattie"); and
Rejection 5: Claims 14 and 15 under 35 U.S.C. § I03(a) over DOE
and Mathias or alternatively over Mathias and DOE in view of WO '287,
Zuber, and Connors et al. (US 2007/0087120 Al, published April 19, 2007)
("Connors").
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant 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 .... ")). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error except where
otherwise explained below. Thus, where we affirm the Examiner's
rejection, we do so for the reasons expressed in the Final Office Action, the
Answer, and below.
Rejection 1
The Examiner finds that claims 9-17 fail to comply with the written
description requirement because there is no support in the original disclosure
for the terms "GDL material supply means," "an angle determining means,"
and "a cutting means." Final Act. 3.
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Application 14/182,436
Appellant argues that the terms "GDL material supply means," "an
angle determining means," and "a cutting means" are not new matter
because "[t]hese terms can be considered well-known or conventional
process within the related arts, which needs not to be disclosed in detail."
Br. 8.
Appellant's argument is not persuasive of reversible error. As the
Examiner explains, to comply with the written description requirement, the
Appellant's Specification must "convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention." Carnegie Mellon Univ. v. Hoffmann-La Roche Inc.,
541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563---64 (Fed. Cir. 1991)).
Appellant does not substantively dispute that the terms "GDL material
supply means," "an angle determining means," and "a cutting means"
recited in claims 9 and 17 are means-plus-function limitations not disclosed
in the Specification. See Br. 8. Nor do Appellants demonstrate with
sufficient factual evidence that the disputed terms are generally understood
terms of art. See id. Thus, we sustain the rejection of claims 9--17 under 35
U.S.C. § 112, first paragraph.
Rejection 2
Claims 9 and 1 7 recite "each of the gas diffusion layers is attached to
an outer surface of each of the catalyst layers coated on both sides of the
polymer electrolyte membrane" and "each of the bipolar plates is attached to
an outer surface of each of the gas diffusion layers." Ans. 5---6. The
Examiner determines that these recitations are indefinite because it is
unclear how every gas diffusion layer can be attached to the outer surface of
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Application 14/182,436
every catalyst layer and also unclear how every bipolar plate can be attached
to an outer surface of every gas diffusion layer. Id.
Appellant persuasively argues that the language identified by the
Examiner is not indefinite because when read in light of the Specification it
is clear that the language refers to one of the diffusion layers being attached
to an outer surface of one of the catalyst layers and to one of the bipolar
plates being attached to an outer surface of one of the diffusion layers, which
is sufficiently disclosed and exemplified by Appellant's Specification.
Br. 8-9. Thus, we do not sustain this portion of the Examiner's
indefiniteness rejection.
Additionally, the Examiner concludes that claims 9-17 are indefinite
because claims 9 and 1 7 recite means-plus-function language invoking pre-
AIA 35 U.S.C. 112, sixth paragraph, for example, a "GDL material supply
means," "an angle determining means," and "a cutting means," but the
Specification fails to provide an adequate description of any structure for
performing the recited function. Final Act. 6.
Appellant does not dispute this portion of the Examiner's
indefiniteness rejection or direct us to any structure associated with the
function recited in independent claims 9 and 1 7. See Br. 8-9. Thus, we
sustain this portion of the Examiner's indefiniteness rejection.
Although we sustain the rejection of claims 9-17 as indefinite, as will
be seen, we need not speculate about the meaning of the indefinite language
in order to consider the merits of the rejection under 35 U.S.C. § 103(a).
Rejections 3-5
We focus our discussion on independent claims 9 and 17, each of
which is directed to a method of manufacturing a compressible gas diffusion
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layer (GDL) for fuel cell applications, and each of which requires that "a
machine direction of the rolled compressible GDL material is an inherent
high stiffness direction."
The dispositive issue with regard to the Examiner's§ 103(a)
rejections is: Has the Examiner reversibly erred in finding that Mathias
teaches that "a machine direction of the rolled compressible GDL material is
an inherent high stiffness direction," as required by independent claims 9
and 17? We answer this question in the affirmative.
The Examiner finds that Mathias teaches a rolled gas diffusion layer
(GDL) material that is cut at an angle such that the machine direction of the
inherent high stiffness of the GDL is not parallel with the major flow field
direction of the intended bipolar plate to reduce the compressible GD L's
intrusion into the flow field channels of the bipolar plate. Final Act. 9-11.
Specifically, the Examiner finds that Mathias teaches a GDL that "has a
stiffness in a width direction perpendicular to a major flow field direction of
a bipolar plate." Id. at 10-11 (citing Mathias ,r 8 (disclosing the stiffness is
the rigid (transverse) axis in the cross-machine direction); Mathias ,r 21
(disclosing the x-direction (transverse axis, i.e. high-stiffness) is
perpendicular to the flow field channels); Mathias ,r,r 25, 35 (disclosing that
the x-direction (i.e., the low flexibility, low stiffness direction) is aligned
with the predominant direction (i.e., parallel with the flow channel)). The
Examiner finds that it is clear from Mathias's teachings that "a major flow
field direction of the bipolar plate is not parallel with the high stiffness
direction (transverse direction) of the gas diffusion layer." Final Act. 11.
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Appellant argues that Mathias teaches that the cross machine direction
rather than the machine direction of the gas diffusion layer is the high
stiffness direction. Br. 11.
Appellant's argument is persuasive of reversible error. Although the
Examiner's findings discussed above are supported by Mathias's disclosure,
the Examiner fails to appreciate that Mathias also teaches that the cross-
machine direction of its gas diffusion layer material is a high stiffness
direction. Mathias ,r 29 (teaching that the tensile modulus of elasticity
property aligned with the cross-machine direction is high). Thus, we are
persuaded that the Examiner erred in finding that Mathias teaches that the
machine direction of the rolled compressible GDL material is the inherent
high stiffness direction, as required by independent claims 9 and 1 7. The
Examiner does not provide a reason to modify Mathias' s diffusion media
production process to meet the claimed recitation. See Final Act. 9--18.
Each of the Examiner's§ 103(a) rejections rely on the deficient
teachings of Mathias discussed above. Id. The Examiner does not make any
findings that DOE, WO '287, Zuber, Beattie, and/or Connors cure the
deficiency of Mathias. See id. Accordingly, we do not sustain the rejections
of claims 9-17 under 35 U.S.C. § 103(a).
DECISION
The rejection of claims 9--17 under 35 U.S.C. § 112, first paragraph, is
affirmed.
The rejection of claims 9--17 under 35 U.S.C. § 112, second
paragraph, is affirmed.
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Appeal 2018-001196
Application 14/182,436
The rejection of claims 9-11, 16, and 17 under 35 U.S.C. § 103(a)
over DOE and Mathias in view of WO '287, and Zuber is reversed.
The rejection of claims 12 and 13 under 35 U.S.C. § 103(a) over DOE
and Mathias in view of WO '287, Zuber, and Beattie is reversed.
The rejection of claims 14 and 15 under 35 U.S.C. § 103(a) over DOE
and Mathias in view of WO '287, Zuber, and Connors 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).
AFFIRMED
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