Ex Parte Mitchell et al

Patent Trial and Appeal Board

Dec 16, 2016

13568494 (P.T.A.B. Dec. 16, 2016)

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.
13/568,494 08/07/2012 James Mitchell P018127-RDFC-CHE 1294
83938 7590 12/20/2016
Brooks Kushman P.C.
1000 Town Center, Twenty-Second Floor
Southfield, MI 48075-1238
EXAMINER
AMPONSAH, OSEI K
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
12/20/2016 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES MITCHELL,
LIJUN ZOU, and TIMOTHY J. FULLER
Appeal 2015-008307
Application 13/5 68,4941
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1, 3—10, 20, and 21 under 35 U.S.C.
§ 103(a) as obvious. Final Act. (July 8, 2014). Appellants seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction. 35
U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.
1 GM Global Technology Operations LLC is identified as the real party in
interest. Br. 2.
Appeal 2015-008307
Application 13/568,494
BACKGROUND
The ’307 Application describes a method for making a metal electrode
assembly for a fuel cell. Spec. 17. The metal electrode assembly includes
an ion-conducting membrane disposed between cathode and anode catalyst
layers. Id. The ’307 Application further describes improved methods for
making the ion-conducting membrane. Id. at || 1, 8.
Claim 1 is representative of the ’307 Application’s claims and is
reproduced below:
1. A metal electrode assembly for a fuel cell, the metal
electrode assembly comprising:
a cathode catalyst layer;
an anode catalyst layer; and
an ion conducting membrane disposed between the
cathode catalyst layer and the anode catalyst layer, the
ion conducting layer including a polyphenylene sulfide
mat with a first polymer imbibed therein, polyphenylene
sulfide mat including polyphenylene sulfide-containing
structures wherein the polyphenylene sulfide-containing
structures are selected from the group consisting of
beads, spheres, and oblong shapes.
Br. 1 (Claims App.).
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Application 13/568,494
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3—4, 6—10, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Nishibori,2
MacKinnon,3 and Okanishi.4 Ans. 3.
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Nishibori, MacKinnon, Okanishi, and
Kinoshita.5 Ans. 7.
DISCUSSION
Appellants argue for the reversal of the rejections to claims 3—5, 6—10,
20, and 21 on the basis of limitations present in claim 1. See Br. 2—6, 7.
We, therefore, limit our analysis to claim 1 for the rejections of these claims.
Claims 3—5, 6—10, 20, and 21 will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants separately argue for the reversal of the rejection of
dependent claim 9. See Br. 6—7.
Rejection 1 and Rejection 2. We affirm both obviousness rejections
based upon the factual findings and reasoning set forth on pages 3—13 of the
Examiner’s Answer, which we adopt. We add the following for emphasis.
2 JP 2003-077494 A, published Mar. 14, 2003. We shall follow the
Examiner and Appellants by referring to a machine translation that was
made of the record in this appeal on January 2, 2014.
3 US 7,897,693 B2, issued Mar. 1, 2011.
4 US 2010/0062304 Al, published Mar. 11, 2010.
5 US 2009/0246592 Al, published Oct. 1, 2009.
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Appeal 2015-008307
Application 13/568,494
Appellants separately argue that the rejection of claim 9 should be
reversed. We address Appellants’ arguments in turn.
First, Appellants argue, inter alia, that the rejection of claim 1 should
be reversed because neither Nishibori nor Okanishi teaches or suggests that
“polyphenylene sulfide-containing structures selected from beads, spheres,
and oblong shapes are able to imbibe a polymer therein.” Br. 4; see
generally Br. 3^4.
Claim 1, however, does not require that the recited polyphenylene
sulfide-containing structures are able to imbibe a polymer. The claim only
requires a polyphenylene sulfide mat with a first polymer imbibed therein.
See Ans. 10. The Examiner provided an adequate reason to combine
Nishibori, the primary reference, with Okanishi, the secondary reference, to
describe a metal electrode assembly for a fuel cell that meets these
limitations. The Examiner found that Nishibori teaches an ion conducting
membrane in the form of a reinforcing member for solid polymer
electrolytes. Ans. 3 (citing Nishibori 19). The Examiner further found that
the disclosed membrane includes a nonwoven fabric made of polyphenylene
sulfide fiber, which is “immersed and . . . impregnated” with
perfluorocarbon-sulfonic-acid resin (i.e., “a first polymer imbibed therein”
(claim 1)). Ans. 9 (citing Nishibori || 44^47); see also Ans. 3 (citing
Nishibori H 10-12, 44^49).
The Examiner acknowledges that Nishibori does not teach using
polyphenylene structures in the form of a sphere. Ans. 4. The Examiner,
however, found Okanishi teaches a fuel cell in which a polymer electrolyte
membrane includes reinforcement polyphenylene sulfide particles in fiber­
like or spherical shapes. Ans. 4 (citing Okanishi, || 279-80, 373—74). The
Examiner relied upon this subsidiary finding to determine that a person of
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Appeal 2015-008307
Application 13/568,494
ordinary skill in the art at the time of the invention would have substituted
Okanishi’s spherical-shaped particles for Nishibori’s fiber-like particles
when either structure provides predictable results of increased membrane
strength. Ans. 4. We do not discern reversible error in these findings.
Second, with respect to claim 9, Appellants argue that Rejection 1
should be reversed because the Examiner’s determination “that the ‘simple
substitution of one known element (perfluorocyclobutyl-containing
polymers) for another (perfluorocarbon-sulfonic-acid polymer)’ renders the
present claims obvious is an over-simplification.” Br. 6. According to
Appellants,
[pjolymers that contain perfluorocyclobutyl groups are very
different than the standard perfluorocarbon-sulfonic-acid
polymers that are used in fuel cells. The perfluorocyclobutyl-
containing polymers have cyclobutyl rings which are of course
highly strained. This very different chemical structure makes
their properties unpredictable as compared to perfluorocarbon-
sulfonic-acid polymers which do not have cyclobutyl groups.
Id.
We are not persuaded by these arguments. Although Appellants
correctly state that cyclobutyl rings are strained, they do not point to any
evidence that such rings provide unpredictable properties as compared to
perfluorocarbon-sulfonic-acid polymers. Without such evidence, this
assertion is not persuasive. See Estee Lauder Inc. v. L ’Oreal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997) (“[Arguments of counsel cannot take the place of
evidence lacking in the record.”).
As the Examiner found, Ans. 11 (citing MacKinnon 4:3—67),
MacKinnon teaches a polymeric ion conducting membrane comprising
perfluorocyclobutyl-containing polymers. The Examiner determined that it
would have been obvious for the ordinary skilled artisan to use
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Application 13/568,494
perfluorocyclobutyl containing polymers in Mackinnon’s solid polymer
electrolyte because such polymer electrolyte membranes maintain high ionic
conductivity and mechanical stability at both high and low relative humidity.
See Ans. 11—12 (citing MacKinnon 1:17—21). Thus, we do not discern
reversible error in the Examiner’s findings or in the Examiner’s conclusion
that the applied prior art would have suggested the claimed
perfluorocyclobutyl-containing polymers as set forth in Claim 9.
We, therefore, affirm the Examiner’s rejections of: (i) claims 1, 3—4,
6—10, 20, and 21 as unpatentable over the combination of Nishibori,
MacKinnon, and Okanishi; and (ii) claim 5 as unpatentable over the
combination of Nishibori, MacKinnon, Okanishi, and Kinoshita.
CONCLUSION
For the reasons provided in the Examiner’s Answer, and above, we
affirm the rejections of claims 1, 3—10, 20, and 21 of the ’307 Application.
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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