Ex Parte Owejan et al

Patent Trial and Appeal Board

Nov 2, 2012

11643403 (P.T.A.B. Nov. 2, 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.
11/643,403 12/21/2006 Jon P. Owejan GP-307611-FCAR-CHE 3871
65798 7590 11/02/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
11/02/2012 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 JON P. OWEJAN, THOMAS A. TRABOLD, and
THOMAS W. TIGHE
____________

Appeal 2011-011412
Application 11/643,403
Technology Center 1700
____________

Before LINDA M. GAUDETTE, MARK NAGUMO, and GEORGE C.
BEST, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-011412
Application 11/643,403

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-6 and 8-17.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Th[e] invention relates . . . to a method for depositing a
hydrophilic coating on the bipolar plates of the fuel cells in a fuel cell
stack that includes running a solution including the hydrophilic
material through the reactant gas flow channels in the bipolar plates
after the stack is assembled.

(Spec.3 [0001].) The purpose of the hydrophilic coating is to improve channel
water transport. (Id. at [0010].)
The Examiner maintains the following grounds of rejection under 35 U.S.C.
§ 103(a):
1. claims 1, 5, 6, and 8-10 over Masaki in view of Foerster, claim 10 as
evidenced by May (Ans. 4 3-5);
2. claim 7 over Masaki and Foerster, in view of Miyazawa (Ans. 5);
3. claims 2, 3, 11, 12, 14, 16, and 17 over Masaki and Foerster, in view
of Schwarte, claim 16 as evidenced by May (Ans. 5-7);
4. claims 4 and 13 over Masaki and Foerster, in view of Schwarte and
Stoye (Ans. 7); and
5. claim 15 over Masaki, Foerster, and Schwarte in view of Miyazawa
(Ans. 8).

1 Final Office Action mailed Dec. 7, 2010
2 Appeal Brief filed Jan. 31, 2011 (“App. Br.”).
3 Specification filed Dec. 21, 2006.
4 Examiner’s Answer mailed Apr. 11, 2011.
Appeal 2011-011412
Application 11/643,403

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Of the appealed claims, claims 1 and 11 are independent. For reference,
claim 1 is reproduced below from the Claims Appendix to the Appeal Brief
(emphasis added):
1. A method for depositing a hydrophilic material on flow
channels defined by bipolar plates in an assembled fuel cell stack, said
method comprising:
providing a solution of hydrophilic particles in a solvent;
filling the anode and cathode flow volume in the stack with the
solution;
forcing the solution out of the stack using a flow of gas; and
allowing the remaining wet solution in the stack to dry to allow
the solvent to evaporate and the hydrophilic particles to adhere to the
flow channel walls.
The Examiner’s obviousness determination as to all appealed claims is based
on a finding that Masaki discloses a method of applying a hydrophilic coating to an
assembled fuel cell stack which includes a step of “filling the anode and cathode
flow volume in the stack with the solution” (claim 1). (Ans. 3-4; see also, id. at 6-
7 (as to claim 11 which similarly recites: “filling anode and cathode inlet
manifolds, anode and cathode flow channels and anode and cathode outlet
manifolds with the solution”).) Appellants disagree with this finding.
Appellants note Masaki’s hydrophilic coating is formed by flowing down a
gas which includes a fog-like paint for the hydrophilic film. (App. Br. 9 (citing
Masaki para. [0039]).) Appellants contend this flowing step does not result in
filling the anode and cathode as required by the claims. (Id. at 9-10.) The
Examiner, in response, maintains that while the claims require a filling step, they
do not require “completely” filling the flow channels. (Ans. 8-9.)
These arguments require us to first consider whether the Examiner’s
obviousness determination is based on an erroneous interpretation of the claim 1
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Application 11/643,403

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and claim 11 “filling” steps. See Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Only when a claim is properly understood
can a determination be made . . . whether the prior art anticipates and/or renders
obvious the claimed invention.”).
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). In general, words used in a claim are
accorded their ordinary and customary meaning. Honeywell Int’l. Inc. v. Universal
Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). “Th[e] [Federal Circuit]
permits the PTO to use dictionary definitions in tandem with the specification and
prosecution history to enlighten the broadest reasonable interpretation of a claim
term. Th[e] [Federal Circuit] has previously held that ‘dictionary definitions are [ ]
pertinent.’ In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007)
(citing [Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en
banc)]).” In re Scroggie, 442 Fed. Appx. 547, 550 (Fed. Cir. 2011) (unpublished).
The ordinary meaning of the term “fill” is “to make or become full: to fill
up a bottle.” Dictionary.com. Collins English Dictionary - Complete &
Unabridged 10th Edition. HarperCollins Publishers.
http://dictionary.reference.com/browse/fill (accessed: October 23, 2012). The
Specification uses the term “fill” in a manner consistent with its ordinary and
customary meaning. (See Spec. [0026] (“According to the invention, the entire
anode and cathode volume of the fuel cell stack 62, including the flow channels
and the inlet and outlet manifolds, is filled with a solution including suspended
hydrophilic nano-particles.”).) We agree with Appellants that the appealed claims
require filling the entire anode and cathode flow volume (claim 1) or filling the
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Application 11/643,403

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entire anode and cathode inlet manifolds, flow channels, and outlet manifolds
(claim 11) with a solution of hydrophilic particles in a solvent.
Appellants argue, and the Examiner does not dispute, that Masaki, alone or
in combination with the secondary references, fails to disclose or suggest a method
which includes a step of filling the entire anode and cathode flow volume/channels
and manifolds as required by the appealed claims. Accordingly, the Examiner’s
findings of fact are insufficient to support a prima facie case of obviousness.
The Examiner’s decision to reject claims 1-6 and 8-17 is:

REVERSED

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