Ex Parte Yan et al

Patent Trial and Appeal BoardOct 25, 2012

11762103 (P.T.A.B. Oct. 25, 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. 11/762,103 06/13/2007 Susan G. Yan 8540G-000169/DVA 1174 27572 7590 10/25/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 EXAMINER MCCLELLAND, KIMBERLY KEIL ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 10/25/2012 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 SUSAN G. YAN, MICHAEL SCOZZAFAVA, and ZHILEI (JULIE) WANG ____________ Appeal 2011-006438 Application 11/762,103 Technology Center 1700 ___________ Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-13 under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM.1 1 Our decision makes reference to Appellants’ Brief (App. Br.) filed September 10, 2010, Appellants’ Reply Brief (Rep. Br.) filed January 10, 2011, and the Examiner’s Answer (Ans.) mailed November 9, 2010. Appeal 2011-006438 Application 11/762,103 2 The rejections In the Answer, the Examiner has maintained the following rejections: Rejection 1: Claims 1, 3-8, and 10-11 have been rejected under 35 U.S.C. § 103(a) as unpatentable over Wilson2 in view of Fujita3 and Afzali- Ardakani4. Ans. 4-7. Rejection 2: Claim 2 has been rejected 35 U.S.C. § 103(a) as unpatentable over Wilson in view of Fujita and Afzali-Ardakani as applied against claim 1, and further in view of Oh5. Ans. 7-9. Rejection 3: Claim 9 has been rejected 35 U.S.C. § 103(a) as unpatentable over Wilson in view of Fujita and Afzali-Ardakani as applied to claim 1, and further in view of Grot6. Ans. 9-10. Rejection 4: Claims 12-13 have been rejected 35 U.S.C. § 103(a) as unpatentable over Wilson in view of Fujita and Afzali-Ardakani as applied to claim 1, and further in view of Tou7. Ans. 11. Claim 1 is illustrative of the subject matter on appeal: 1. A method of fabricating an assembly comprising an electrode in a continuous process comprising: moving a continuous strip of a non-porous polymeric substrate along a feed path; forming a slurry comprising an ionically conductive material, an electrically conductive material, a catalyst, and a casting solvent at a first station along said feed path; 2 Wilson, M.S. et al., Thin-film catalyst layers for polymer electrolyte fuel cell electrodes, Journal of Applied Electrochemistry 22 (1992), at 1-7. 3 WO 03/073440 A1, published Sep. 4, 2003. 4 US 5,591,285, issued Jan. 7, 1997. 5 US 2003/0121603, published Jul. 3, 2003 (incorrectly identified as US 2003/012603 in the Answer). 6 US 5,330,860, issued Jul. 19, 1994. 7 US 5,518,831, issued May 21, 1996. Appeal 2011-006438 Application 11/762,103 3 advancing said continuous strip of said non-porous polymeric substrate to said first station; applying said slurry at said first station to one or more discrete regions on a surface of said continuous strip of said non-porous polymeric substrate; drying said slurry to form a film at each of said discrete regions; advancing said continuous strip to position a membrane adjacent a respective one of said films at said discrete regions; bonding said film to said membrane to form an electrode; removing said electrode from said continuous strip; advancing said continuous strip to a cleaning station to clean said discrete regions of said surface from which said electrode was removed; and advancing said cleaned continuous strip of said substrate to said first station. App. Br., Claims App’x. PRINCIPLES OF LAW "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls . . . . The first error of the Court of Appeals in this case was . . . by holding that courts and patent examiners should look only to the problem the patentee was trying to solve." KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-420 (2007). The Supreme Court explained that “[w]hen a work is available in one field of endeavor, design incentives and other market forces [(not the subjective intent of inventors provided in the Specification)] can prompt variations of it, either in the same field or a different one.” Id. at 417. In other words, a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which Appeal 2011-006438 Application 11/762,103 4 one of ordinary skill in the art is concerned. Further, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” Id. at 421. ANALYSIS Appellants do not set forth separate, substantive arguments for any particular claim on appeal except claim 1. Accordingly, all of the appealed claims stand or fall together with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. Appellants’ main argument in the Appeal Brief is that Wilson and Afzali-Ardakani are non-analogous prior art. App. Br. 7. Appellants’ argue that Wilson and Afzali-Ardakani have different functions and uses (App. Br. 7-10), and are directed to different problems (App. Br. 10-11). In particular, Appellants argue that Afzali-Ardakani’s Teflon® carrier substrate is formed Appeal 2011-006438 Application 11/762,103 5 on a copper substrate and is more akin to Wilson’s electrode slurry, not Wilson’s Teflon® carrier substrate. App. Br. 8. In addition, Appellants argue that Afzali-Ardakani is concerned with the porosity of the Teflon® carrier substrate merely because the substrate is exposed to metal plating baths, whereas Wilson’s Teflon® carrier substrate is not. Id. As such, Appellants argue that Wilson would not be concerned with excess ion buildup, the problem for which Afzali-Ardakani provides the solution of a non-porous Teflon® carrier substrate. Id. at 11. This argument is unpersuasive. The Examiner found that Wilson’s Teflon® carrier substrate must either be porous or nonporous. Ans. 12. The Examiner found that Afzali-Ardakani identified these two as the only predictable solutions for the carrier substrate. Id. With regard to Appellants’ argument that Wilson is not concerned with the problem of ion permeation, the Examiner found, and Appellants do not contest, that it was well-known in the art that porous carriers collect particles and ions during coating, whether by metal plating or slurry coating. Id. at 13. Indeed, not only do Appellants not contest this finding, but Appellants disclose that one of skill in the art has recognized that there is always some loss of the catalyst layer into the pores when using a porous substrate. Spec. 15:1-5. The Examiner concluded that one of ordinary skill in the art would recognize the advantage of using a non-porous substrate as taught by Afzali-Ardakani to prevent such accumulation in Wilson’s substrate. Id. We agree. Afzali-Ardakani discloses that there are a finite number of predictable solutions to the problem of substrate contamination. In a situation in which the art recognizes the problem of substrate contamination when using porous substrates, as both the Examiner found and Appellants Appeal 2011-006438 Application 11/762,103 6 disclosed, it would have been obvious for one skilled in the art to try the other predictable solution, a non-porous substrate, as suggested by Afzali- Ardakani. Moreover, because the art had recognized the problem of substrate contamination, Afzali-Ardakani’s teaching of the advantage of non-porous substrates over porous substrates for this problem is analogous prior art under the test set forth in KSR Int’l Co., supra. Ans. 15. Appellants further argue that unexpected results have been presented in their Specification with regard to the use of a non-porous substrate versus a porous substrate. App. Br. 12. This argument is unavailing for the reasons stated by the Examiner. Ans. 15-16. In particular, the Examiner correctly notes that “the current claim language does not limit the method to a specific operating pressure.” Id. at 15. Also, Figure 8 demonstrates similar performance using either porous or non-porous. Id. at 15-16. Only Figure 9 demonstrates any performance difference, but only “at a specific operating pressure, which is not required by the current claim language.” Id. at 16. Therefore, unexpected results, for the claimed method using a non-porous substrate, has not been established on this record. Accordingly, the preponderance of the evidence supports all of the Examiner’s rejections on appeal. DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED cam