Volkswagen Aktiengesellschaft

Patent Trials and Appeals Board

Nov 4, 2020

2020000534 (P.T.A.B. Nov. 4, 2020)

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.
14/696,879 04/27/2015 Benno ANDREAS-SCHOTT 1000/0184PUS1 1085
60601 7590 11/04/2020
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
11/04/2020 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENNO ANDREAS-SCHOTT
____________

Appeal 2020-000534
Application 14/696,879
Technology Center 1700
____________

Before BRIAN D. RANGE, SHELDON M. McGEE, and JANE E.
INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1, 2, 4–12, 14, and 15.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Volkswagen Aktiengesellschaft as the
real party in interest. Appeal Brief filed May 16, 2019 (“Appeal Br.”) at 2.
2 Final Office Action entered January 8, 2019 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Claim 1, the sole pending independent claim, illustrates the subject
matter on appeal, and reads as follows:
1. A membrane electrode arrangement for a fuel cell,
comprising:
a membrane electrode assembly that includes a
membrane and two electrodes that make surface contact with
both sides of the membrane;
a seal support that circumferentially surrounds and
overlaps the membrane, such that, in a fully assembled state of
the membrane electrode arrangement, a first planar surface of
the seal support, that extends continuously along a single plane,
non-integrally contacts the membrane in an overlapping region
of the seal support and the membrane;
a connecting layer that circumferentially overlaps the
membrane and the seal support, one side of the connecting layer
being coated with an adhesive such that an inner edge section of
the one side of the connecting layer is integrally connected to
the membrane electrode assembly and an outer edge section of
the one side of the connecting layer is integrally connected to
the first planar surface of the seal support by an adhesive bond;
and
a seal that is connected to the seal support outside the
membrane and outside the connecting layer,
wherein a portion of the seal directly contacts the first
planar surface of the seal support and a second portion of the
seal directly contacts a second planar surface of the seal
support, the second planar surface opposing the first planar
surface.

Appeal Br. 18 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 19, 2019 (“Ans.”):
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I. Claims 1, 2, 4, 5, 7–10, 12, 14, and 15 under 35 U.S.C. § 103(a)
as unpatentable over Numao3 in view of Kawashima4;
II. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Numao
in view of Kawashima and Kobayashi5; and
III. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Numao
in view of Kawashima and Pierpont6.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1, 2, 4–12, 14, and 15 under 35 U.S.C. § 103(a) for reasons set forth
in the Appeal and Reply Briefs, and below.
We need address claim 1 only, which requires the recited membrane
electrode arrangement for a fuel cell to comprise, in part, a seal support that
circumferentially surrounds and overlaps a membrane of a membrane
electrode assembly, such that, in a fully assembled state of the membrane
electrode arrangement, a first planar surface of the seal support, which
extends continuously along a single plane, non-integrally contacts the
membrane in an overlapping region of the seal support and the membrane.
Claim 1 also recites that the membrane electrode arrangement comprises a

3 Numao (JP 2007066766 A; published March 15, 2007). Appellant does
not contest the Examiner’s reliance on an English machine translation of
Numao obtained from the European Patent Office. Accordingly, citations to
Numao in this decision refer to the machine translation.
4 Kawashima (US 2008/0305384 A1; published December 11, 2008).
5 Kobayashi (US 2007/0264557 A1; published November 15, 2007).
6 Pierpont (US 2008/0145712 A1; published June 19, 2008).

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seal, and requires a portion of the seal to directly contact the first planar
surface of the seal support.
The Examiner finds that Figure 5B of Numao illustrates membrane
electrode assembly 11 comprising membrane 13, gasket 21 including small
piece member 21” (seal support) and large piece member 21’ (connecting
layer), and lip 23a, 23b (seal). Final Act. 3–4 (citing Numao ¶¶ 120, 121;
Fig. 5B). The Examiner finds that Figures 5A, 5B, and 5C of Numao
illustrate a first planar surface of small piece member 21” (seal support) that
extends continuously along a single plane and contacts membrane 13 in an
overlapping region of small piece member 21” (seal support) and membrane
13. Final Act. 3.
The Examiner finds that Numao does not disclose that a portion of
seal 23a directly contacts the first planar surface of small piece member 21”
(seal support), and finds that Numao’s Figures 5A, 5B, and 5C instead show
that a portion of large piece member 21’ (connecting layer) “intervenes
between” seal 23a and the first planar surface of small piece member 21”
(seal support). Final Act. 4. The Examiner finds, however, that Numao
illustrates other membrane electrode assembly embodiments in Figures 1C,
3A–D, and 4A–E in which a portion of seal 23 directly contacts gasket 21
(seal support) “on the same side as the membrane (the same side that
corresponds to the first planar surface in Figs. 5A-C).” Final Act. 4.
In view of these disclosures in Numao, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to configure
Numao’s small piece member 21” (seal support), seal 23, and large piece
member 21’ (connecting layer) such that a portion of seal 23 directly
contacts the first planar surface of small piece member 21” (seal support) “as
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a combination of the embodiments of Numao, which includes both the
disclosed features of a seal portion [23] directly contacting the same side of
the seal support [small piece member 21”] that contacts the membrane [13],
as in Figs. 1C, 3A-D and 4A-E, and of the surface of the seal support [small
piece member 21”] that contacts the membrane [13] extending along a single
plane, as in Figs. 5A-C.” Final Act. 4–5 (citing In re Kerkhoven, 626 F.2d
846, 850 (CCPA 1980)).
The Examiner further determines that “the only modification to the
embodiment of Fig. 5B that would be required to arrive at such
configuration would be to shorten the connecting layer 21’ so as to remove
the portion that intervenes between the seal support 21” and the seal 23a.”
Final Act. 5. The Examiner finds that Numao discloses that “the weight of
the whole MEA can be reduced by changing the shape of the gasket
structure, even if it requires increasing the height of the seal.” Final Act. 5.
(citing Numao ¶ 60). The Examiner finds that in view of this disclosure in
Numao, “one of ordinary skill in the art would have been motivated to
shorten the connecting layer 21’ so as to remove the portion that intervenes
between the seal support 21” and the seal 23a, thus arriving at the claimed
configuration, in order to reduce the weight of the whole MEA.”
Final Act. 5.
On the record before us, however, the Examiner does not articulate
reasoning having rational underpinning that explains why one of ordinary
skill in the art would have modified particular structural features of Numao’s
differing membrane electrode assembly embodiments so as to arrive at a
membrane electrode arrangement including a seal support having a first
planar surface that extends continuously along a single plane and non-
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integrally contacts a membrane in an overlapping region of the seal support
and the membrane, and a seal having a portion that directly contacts the first
planar surface of the seal support, as required by claim 1, for reasons
expressed by Appellant and discussed below.
First, the Examiner’s reliance on Kerkhoven to support the asserted
obviousness of the proposed combination of select structural features from
Numao’s Figures 1C, 3A–D and 4A–E with those of Numao’s Figures 5A–C
is misplaced. The factual situation at issue in Kerkhoven differs markedly
from that of the present case. Kerkhoven involved claims directed to a
process for preparing a spray-dried detergent composition that involved
mixing two conventional spray-dried detergent compositions to form a third
spray-dried detergent composition. Kerkhoven, 626 F.2d at 848. The court
held the claimed method to be prima facie obvious, explaining that “[i]t is
prima facie obvious to combine two compositions each of which is taught by
the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose.” Kerkhoven,
626 F.2d at 850. In contrast to Kerkhoven, the present case does not involve
mixing two known chemical compositions to form a third chemical
composition used for the same purpose as the first two compositions.
Rather, unlike Kerkhoven, the Examiner’s proposed modification of Numao
involves combining certain select structural elements from different
membrane electrode assembly embodiments disclosed in Numao to form a
modified membrane electrode assembly having a combination of structural
features that is neither taught nor suggested by the reference.
As Appellant argues (Appeal Br. 11), the Examiner does not provide
any reason in the Final Action for why one of ordinary skill in the art would
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have combined the select structural features from Numao’s different
embodiments as the Examiner proposes to arrive at a membrane electrode
arrangement having the particular features recited in claim 1. In response to
Appellant’s argument, the Examiner asserts in the Answer that “the claimed
configuration would have been obvious because each of the cited features
are individually taught in various embodiments of Numao.” Ans. 11.
To establish prima facie obviousness, however, the Examiner must
“identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Consequently, “a conclusory assertion with no explanation is inadequate to
support a finding that there would have been a motivation to combine”
because “[t]his type of finding, without more, tracks the ex post reasoning
KSR warned of and fails to identify any actual reason why a skilled artisan
would have combined the elements in the manner claimed.” In re Van Os,
844 F.3d 1359, 1361–62 (Fed. Cir. 2017) (citing KSR, 550 U.S. at 421).
Furthermore, “obviousness concerns whether a skilled artisan not only
could have made but would have been motivated to make the combinations
or modifications of [the] prior art to arrive at the claimed invention.” Belden
v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); see also In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior
art could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification.”).
The Examiner’s conclusory assertion that that “the claimed
configuration would have been obvious because each of the cited features
are individually taught in various embodiments of Numao,” is, therefore,
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insufficient to establish prima facie obviousness, because it lacks the
requisite explanation for why one of ordinary skill in the art would have
combined the relied-upon features in the manner proposed by the Examiner.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
As for the Examiner’s reliance on Numao’s paragraph 60 to support
the Examiner’s proposed shortening of connecting layer 21’ (connecting
layer), paragraph 60 of Numao indicates that even if weight of the lip (seal)
increases, when the weight of gasket structure 21 decreases greatly, the
weight of the entirety of the membrane electrode assembly decreases.
Numao ¶ 60 (stating that “in FIG. 1C, it is large lightening effect due to the
weight of the gasket structure than the weight increase due to increase in the
lip, it is also possible to reduce the weight of the whole MEA.”).
The Examiner does not provide sound technical reasoning that
explains why this disclosure in Numao of reducing the overall weight of the
membrane electrode assembly by reducing the weight of gasket structure 21
when increasing the weight of the lip (seal) would have led one of ordinary
skill in the art to modify large piece member layer 21’ (connecting layer) “so
as to remove the portion that intervenes between the seal support 21” [small
piece member] and the seal 23a.” Nor does the Examiner identify any other
disclosure in Numao establishing that the relied-upon disclosure in
paragraph 60 of decreasing the weight of gasket structure 21 would have
suggested shortening large piece member layer 21’ (connecting layer) in the
manner proposed by the Examiner.
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Finally, the Examiner asserts in the Answer that “the differences
between the various gasket structures taught by Numao and the claimed seal
support and connecting layer appear to amount to no more than changes of
shape which would have been a matter of choice that one of ordinary skill in
the art would have found obvious.” Ans. 11–12 (citing In re Dailey, 357
F.2d 669 (CCPA 1966); MPEP § 2144.04 IV(B)).
As Appellant explains in the Reply Brief, however, Appellant’s
Specification details how the configuration of the membrane, seal support,
connecting layer, and seal recited in claim 1 imparts stability to the claimed
membrane electrode arrangement, simplifies its process of manufacture, and
improves the reliability and cost-effectiveness of the manufacturing process.
Reply Br. 5–6 (citing Spec. ¶¶ 67, 72); see also Spec. ¶¶ 70, 71. The
Specification thus evidences that the recited configuration provides
functional advantages and solves a stated problem. The Examiner’s reliance
on design choice to support a conclusion of obviousness, therefore, is
inappropriate in the present case. In re Chu, 66 F.3d 292, 298–99 (Fed. Cir.
1995) (“design choice” is appropriate where the applicant fails “to set forth
any reasons why the differences between the claimed invention and the prior
art would result in a different function or give unexpected results.”); see also
In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (determining that the use of
the claimed feature “would be an obvious matter of design choice” when it
“solves no stated problem” and “presents no novel or unexpected result”
over the disclosed alternatives).
We, accordingly, do not sustain the Examiner’s rejections of claims 1,
2, 4–12, 14, and 15 under 35 U.S.C. § 103(a).
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CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
7–10, 12,
14, 15
103(a) Numao,
Kawashima
1, 2, 4, 5, 7–
10, 12, 14, 15
6 103(a) Numao,
Kawashima
Kobayashi
6
11 103(a) Numao,
Kawashima,
Pierpont
11
Overall
Outcome
1, 2, 4–12, 14,
15

REVERSED