Appeal 2007-0128
Reexamination Control 90/006,208
Patent 5,573,648
Atwood argues that there are “invariably multiple manufacturing and
product performance concerns leading to any particular product design.” (Appeal
Br., p. 49). Atwood states that Dempsey does not address the “trade offs between
cost and performance, manufacturing, durability, etc. .. with respect to the size
and/or materials used to make the electrodes having only electronic conductors.”
(Id.).
Grot teaches that one of ordinary skill in the art was aware that prior art
electrodes suffered from problems such as the need for “substantial quantities of
expensive catalyst materials to prepare membrane and electrode structures.” (Grot,
col. 3, ll. 4-11). Grot teaches the benefits of forming electrodes having a relatively
small loading of catalyst in an efficient, inexpensive and reproducible manner. (Id.
at col. 3, ll. 49-57).
We conclude that Atwood has failed to demonstrate that the Examiner erred
in concluding that the electrode dimensions would have been obvious to one of
ordinary skill in the art. Specifically, Dempsey exemplifies counter and sensing
electrodes that are larger than those claimed by Atwood, however, Grot provides
objective evidence that one skilled in the art was aware of the need to reduce the
amount of expensive catalyst used in forming the electrodes. We find that one of
ordinary skill in the art, following the teachings of Grot, would have been
motivated to use smaller diameters than that exemplified by Dempsey.
Additionally, Atwood acknowledges that the electrode dimensions will have
an effect upon the performance and durability of the electrodes. (Id. at 49). It is
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