Volkswagen AktiengesellschaftDownload PDFPatent Trials and Appeals BoardNov 4, 20202020000534 (P.T.A.B. Nov. 4, 2020) Copy Citation 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. Appeal 2020-000534 Application 14/696,879 2 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.”): Appeal 2020-000534 Application 14/696,879 3 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). Appeal 2020-000534 Application 14/696,879 4 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 Appeal 2020-000534 Application 14/696,879 5 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- Appeal 2020-000534 Application 14/696,879 6 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 Appeal 2020-000534 Application 14/696,879 7 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, Appeal 2020-000534 Application 14/696,879 8 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. Appeal 2020-000534 Application 14/696,879 9 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). Appeal 2020-000534 Application 14/696,879 10 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 Copy with citationCopy as parenthetical citation