GKN Sinter Metals Engineering GmbH

Patent Trials and Appeals Board

Nov 5, 2021

2020006408 (P.T.A.B. Nov. 5, 2021)

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.
15/308,444 11/02/2016 Antonio Casellas 137586.00035 5540
26710 7590 11/05/2021
QUARLES & BRADY LLP
ATTN: IP DOCKET
411 E. WISCONSIN AVENUE
SUITE 2400
MILWAUKEE, WI 53202-4428
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
11/05/2021 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTONIO CASELLAS
and EBERHARD ERNST
____________

Appeal 2020-006408
Application 15/308,444
Technology Center 1700
____________
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, and 7–222 of Application

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies GKN Sinter Metals Engineering GmbH as the real party in
interest. Appeal Br. 1.
2 Claim 5 was canceled in Appellant’s Amendment after Final Office
Action, dated January 2, 2020. Appeal Br. 3. The Examiner entered this
amendment. See Advisory Action 2 (January 17, 2020). Thus, the Final
Action’s rejection of claim 5 as indefinite is moot.
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Application 15/308,444
2
15/308,444. Final Act. (October 1, 2019). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we do not reach the provisional
rejection. We otherwise reverse.
I. BACKGROUND
The ’444 Application describes a hydrogen storage means and a
process for manufacture of the hydrogen storage means. Spec. 2. The
hydrogen storage means is said to have a prolonged lifetime relative to prior
art storage means. Id. The hydrogen storage means comprises a composite
material that includes a hydrogenatable material. Id.
Claim 1 is representative of the ’444 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A hydrogen storage means comprising a hydrogenatable
material,
with the hydrogenatable material intercalated in an
expandable material composite comprising at least one
component for compensation at least for an expansion in
volume due to the absorption or release of hydrogen by the
hydrogenatable material
wherein the hydrogenatable material is at least partly in
laminar form,
with an expansion material arranged between
individual layers of the hydrogenatable material as a
component providing higher expansion than the
hydrogenatable material such that the hydrogenatable
material can expand or contract in the event of absorption
or release of hydrogen without destruction of the material
composite.
Appeal Br. Claims Appendix A-1 (paragraphing added).
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4, and 7–22 are provisionally rejected on the
nonstatutory ground of obviousness-type double patenting over claims 1–18
of co-pending Application No. 15/307,243. Final Act. 3.
2. Claims 1, 2, 4, 7, 9, 14, 18, 19, 21, and 22 are rejected under 35
U.S.C. § 102(a)(1) as anticipated by Zimmermann.3 Final Act. 5.
3. Claims 1, 2, 4, 7–9, 14, 18, 19, 21, and 22 are rejected under 35
U.S.C. § 103 as unpatentable over the combination of Zimmermann and
Prud’Homme.4 Final Act. 6.
4. Claims 15–17 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Zimmermann, Prud’Homme, and
Mukherjee.5 Final Act. 7.
5. Claims 10–13 and 20–22 are rejected under 35 U.S.C. §103 as
being unpatentable over the combination of Zimmermann, Prud’Homme,
Eklund,6 and Rampel.7 Final Act. 8.

3 US 2010/0187468 A1, published July 29, 2010.
4 US 2010/0096595 A1, published April 22, 2010.
5 US 2014/0050910 A1, published February 20, 2014.
6 US 2005/0074612 A1, published April 7, 2005.
7 US 5,185,221, issued February 9, 1993.
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III. DISCUSSION
A. Provisional rejection of claims 1, 2, 4, and 7–22 for obviousness-type
double patenting over claims 1–18 of Application No. 15/307,243
This provisional rejection was originally entered in an Office Action
dated April 2, 2019. Since that date, the claims of both the ’444 Application
and the ’243 Application have been substantially amended. Furthermore, the
’243 Application issued as U.S. Patent No. 11,142,454 B2 on October 12,
2021.8 The ’454 Patent contains 17 claims.
In view of the foregoing, we do not address the Examiner’s
provisional double patenting rejection. We leave it to the Examiner to
determine whether it is appropriate to enter a double patenting rejection of
the ’444 Application’s claims—as they now stand—over the issued claims
of the ’454 Patent.
B. Rejection of claims 1, 2, 4, 7, 9, 14, 18, 19, 21, and 22 as anticipated
by Zimmermann
Appellant argues for the reversal of this rejection on the basis of claim
1’s limitations. Appeal Br. 4–10. The remaining claims subject to this
ground of rejection depend from claim 1. We, therefore, select claim 1 to
represent the group of claims subject to this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv) (2019).
Appellant argues that the rejection of claim 1 should be reversed
because Zimmermann does not describe or suggest every limitation of the
claim. See Appeal Br. 4–10; Reply Br. 2–7. In particular, Appellant argues

8 The ’454 Patent issued after this Board reversed the Examiner’s rejection
of all pending claims in the ’243 Application. See Ex parte Casellas, Appeal
No. 2020-003071, 2021 WL 1153869 (PTAB March 25, 2021).
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Application 15/308,444
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that Zimmermann does not describe a hydrogen storage means “wherein the
hydrogenatable material is at least partly in laminar form.” Id.
The Examiner, however, found that Zimmermann describes a
hydrogen storage device having the claimed structure. Final Act. 5–6;
Answer 6–7 (citing Zimmermann ¶ 59; Fig. 9). The Examiner specifically
found that Zimmermann’s Figure 9 depicts a composite in which the
hydrogenatable material is in laminar form. Id.
For the following reasons, we are persuaded by Appellant’s
arguments. We, therefore, reverse the rejection of claim 1 as anticipated by
Zimmermann.
We begin by considering the proper interpretation of the phrase “in
laminar form” as it is used in claim 1. During prosecution, the PTO gives the
language of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account any definitions or other
enlightenment provided by the written description contained in the
applicant’s specification. In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir.
1997).
In ordinary usage, the adjective “laminar” means “[c]onsisting of or
arranged in laminae.” 1 Shorter Oxford English Dictionary 1539 (6th ed.
2007). Laminae are thin plates or layers of a metal or other material. Id.
Thus, in its ordinary meaning, the phrase “in laminar form” specifies that the
material in question consists of or is arranged in thin plates or layers.
We have reviewed the ’444 Application’s Specification. Based upon
that review, we determine that the Specification neither specifically defines
the term “in laminar form” nor uses it in a manner inconsistent with its
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ordinary meaning. Thus, we give the phrase “in laminar form” its ordinary
meaning.
As discussed above, the Examiner found that Zimmermann’s Figure 9
depicted a hydrogenatable material that is at least partly in laminar form.
Answer 6, 10. This finding is erroneous.
We reproduce Zimmermann’s Figure 9 below.
Figure 9 is a perspective view of a
composite hydrogen storage material
structure. Zimmermann ¶ 16.
As Figure 9 shows, the composite material can be shaped as a
rectangular wafer 902. Zimmermann ¶ 59. The composite material
comprises particles of hydrogenatable material 904 that are held together by
particles of binder 908. Id. The structure includes interstitial voids 906 that
allow hydrogen to diffuse into and out of wafer 902. Id.
Based on Zimmermann’s description of Figure 9, we determine that it
does not depict a hydrogen storage means where in the hydrogenatable
material is at least partly in laminar form. Moreover, Zimmermann’s
description of the process used to make the composite hydrogen storage
material confirms that the hydrogenatable material is not in laminar form.
See Zimmermann ¶¶ 33–37. In Zimmermann’s method particles of
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hydrogenatable material are mixed with particles of a binder. Id. The
resulting mixture is according to a mold and heated to produce a composite
hydrogen storage material having a desired shape. Id.
In view of the foregoing, we determine that the Examiner erred by
finding that Zimmermann describes a hydrogenatable material at least partly
in laminar form. We, therefore, reverse the rejection of claims 1, 2, 4, 7, 9,
14, 18, 19, 21, and 22 as anticipated by Zimmermann.
C. Rejection of claims 1, 2, 4, 7–9, 14, 18, 19, 21, and 22 as unpatentable
over the combination of Zimmermann and Prud’Homme
Appellant argues for the reversal of this rejection based upon the
limitations of claim 1. Appeal Br. 4–10. The remaining claims subject to this
rejection depend from claim 1. Accordingly, we select claim 1 as
representative of the claims subject to this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv).
As discussed above, the Examiner relies upon Zimmermann as
describing the use of a hydrogenatable material that is at least partly in
laminar form. The Examiner does not find that Prud’Homme describes or
suggests this claim limitation. Final Act. 6–7. Thus, this rejection does not
cure the Examiner’s erroneous finding regarding Zimmermann’s content.
For this reason, we reverse the rejection of claims 1, 2, 4, 7–9, 14, 18,
19, 21, and 22 as unpatentable over the combination of Zimmermann and
Prud’Homme.
D. Rejection of claims 15–17 as unpatentable over the combination of
Zimmermann, Prud’Homme, and Mukherjee
Appellant does not present separate arguments for reversal of the
rejection of these claims, which depend from claim 1. Appeal Br. 4–10.
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Accordingly, Appellant’s only arguments for reversal of this rejection are
those made with respect to claim 1.
As discussed above, the Examiner relies upon the erroneous finding
that Zimmermann describes the use of a hydrogenatable material that is at
least partly in laminar form. The Examiner does not find that either
Prud’Homme or Mukherjee describes or suggests this claim limitation. Final
Act. 7–8. Thus, this rejection does not cure the Examiner’s erroneous
finding regarding Zimmermann’s content.
For this reason, we reverse the rejection of claims 15–17 as
unpatentable over the combination of Zimmermann, Prud’Homme, and
Mukherjee.
E. Rejection of claims 10–13 and 20–22 as unpatentable over the
combination of Zimmermann, Prud’Homme, Eklund, and Rampel
Appellant does not present separate arguments for reversal of the
rejection of these claims, which depend from claim 1. Appeal Br. 4–10.
Accordingly, Appellant’s only arguments for reversal of this rejection are
those made with respect to claim 1.
As discussed above, the Examiner relies upon the erroneous finding
that Zimmermann describes the use of a hydrogenatable material that is at
least partly in laminar form. The Examiner does not find that Prud’Homme,
Eklund, or Rampel describes or suggests this claim limitation. Final Act. 8–
9. Thus, this rejection does not cure the Examiner’s erroneous finding
regarding Zimmermann’s content.
For this reason, we reverse the rejection of claims 10–13 and 20–22 as
unpatentable over the combination of Zimmermann, Prud’Homme, Eklund,
and Rampel.
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IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7–22 Provisional Double Patenting; Application No. 15/307,2439
1, 2, 4, 7, 9, 14,
18, 19, 21, 22 102(a)(1) Zimmermann
1, 2, 4, 7, 9,
14, 18, 19, 21,
22
1, 2, 4, 7, 9, 14,
18, 19, 21, 22 103 Zimmermann, Prud’Homme
1, 2, 4, 7, 9,
14, 18, 19, 21,
22
15–17 103 Zimmermann, Prud’Homme, Mukherjee 15–17
10–13, 20–22 103 Zimmermann, Prud’Homme, Eklund, Rampel 10–13, 20–22
Overall Outcome 1, 2, 4, 7–22
REVERSED

9 As explained above, we do not reach this rejection. See Ex parte Jerg,
Appeal No. 2011-000044, 2012 WL 1375142, at *3 (BPAI Apr. 13, 2012)
(informative) (declining to reach nonstatutory double patenting rejections
because the claims on appeal were not clearly the same as those originally
considered by the examiner and holding that panels have the flexibility to
reach or not reach such rejections.).