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Home > Nanotechnology Columns > Magda Carvalho PhD, JD > Nanotechnology: BPAI Brand New Rejection.

Magda Carvalho
Patent Attorney
Patent Law at M. Carvalho

The Board of Patent Appeals and Interferences (BPAI) did not speculate on the meaning of Claim language of a patent application concerning fuel cell electrode. Instead, the Board applied its power to enter a new ground of rejection. It should be understood, however, that this decision does not reflect on the merits of the underlying rejection.(1)

October 16th, 2009

Nanotechnology: BPAI Brand New Rejection.

In ex parte O'Neil (BPAI 09/28/2009), appealing to the BPAI did not resolve the impasse between the Examiner and the inventors. The patent application involved a method of forming a fuel cell electrode. A fuel cell is an electrochemical device that generates electricity by a chemical reaction. The invention was not limited to the application of a specific type of thin-film electrode but broadly encompassed the application of any type of material layer suitable for deposition to form an electrode. Moreover, it did not provide a description of specific desired electrode properties or how to produce such electrodes. During prosecution of the application, the Examiner combined prior art that suggested "developing a deposition characteristic profile having at least one porous layer based on pre-determined desired electrode properties" as recited in the claims. The inventors disputed the rejection under 103. The BPAI determined instead that the scope of claims were indefinite under 35 U.S.C. 112, 2 (metes and bounds of the claimed subject matter must be clear).

Section 112 2 states: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

The inventors stated that the first step of the process is to determine the desired profiles of deposition characteristics. The next step involved a determination of any suitable substrate on which the electrode is to be formed. Also requiring a determination was the thickness of the film formed on the substrate; the formation of pores such as nano-pores would result in nano-chambers which limit the size of metal nano-particles through agglomeration.

However, the BPAI found it difficult for a person of ordinary skill in the art designing a thin-film electrode to appreciate when the claimed invention has been infringed. Simply put, the BPAI could not have determined "the metes and bounds" of the claimed subject matter. Therefore, it was imprudent to speculate as to the scope of the claims in order to reach a decision on the obviousness of the claimed subject matter under section103. The BPAI pointed to the problems in the Specification: (1) failed to describe the morphology and components of the electrodes; (2) failed to describe the components utilized for deposition, or the resulting properties of the deposited film; (3) failed to describe as to how the desired compositional and/or morphological characteristics are determined; and (4) failed to discuss as to how to adjust the apparatus to achieve desired or acceptable results. As such, the claims rose to the level of making them indefinite.

In reaching its decision the Board must understand the scope of what is claimed. Here, the BPAI found that the claims were not sufficiently definite in claim scope so as to evaluate the patentability of the claims in view of the prior art relied by the Examiner. In particular, the BPAI focused on whether the inventors' Specification disclosed adequate material, morphology or characteristics in the determinations recited in the claims.

The applicant has two options if a new ground of rejection pursuant to 37 CFR 41.50(d) is designated: (i) request rehearing by the Board upon the same record, 37 CFR 41.50(d)(2) or (ii) reopen prosecution before the Examiner, 37 CFR 41.50(d)(1) and cure the deficiency. Importantly, these two options are alternatives. Under 37 CFR 1.702(e) certain Board remands are eligible for patent term adjustment.

(1) 37 C.F.R. 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review."

Please send your comments to Magda Carvalho at

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