Ex Parte BimbaudDownload PDFPatent Trial and Appeal BoardMay 17, 201611752499 (P.T.A.B. May. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111752,499 05/23/2007 30424 7590 05/19/2016 ADDMG - ST (first filed US/ Asia) 255 S. Orange A venue, Suite 1401 Orlando, FL 32801 FIRST NAMED INVENTOR Igor BIMBAUD 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 06-T0-319US01 (52073) 3870 EXAMINER CHMIELECKI, SCOTT J ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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): creganoa@addmg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IGOR BIMBAUD Appeal2014-008502 Application 11/752,499 Technology Center 1700 Before KAREN M. HASTINGS, JULIA HEANEY, and BRIAND. RANGE, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner finally rejecting claims 1-21 of Application 11/752,499. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the real party in interest as STMicroelectronics SA App. Br. 1. Appeal2014-008502 Application 11/752,499 BACKGROUND The subject matter on appeal relates to a fuel cell unit configured to cover the back side of a display panel housed on a portable electronic device. App. Br. 6. Representative claim 1 is reproduced from the Claims Appendix of the Appeal Brief as follows (emphasis added): 1. A portable electronics device, comprising: a base member containing electronic circuitry for device operation and configured for handheld use; a first housing comprising a display panel having a front side and a display at the front side operatively connected to and driven by said electronic circuitry, wherein said first housing is pivotally connected to the base member and movable from a closed position and into an open position at which a user can view the display, and including a substantially planar back side of the display panel that is typically not handled by a user when the device is in use; and a second housing attached to the first housing at the back side of the display panel and comprising a fuel cell unit operatively connected to said electronic circuitry and display for powering said display and electronic circuitry during user operation of the device wherein the fuel cell unit is configured to cover the backside when the display is moved into a closed position, said fuel cell unit comprising an anode and cathode contained within the second housing and a proton conducting polymer electrolyte membrane (PEM) secured between and engaged in contact with the anode and cathode, and said anode is operative as a catalyst to disassociate hydrogen into protons and electrons and conduct protons to the cathode through the membrane, wherein said anode is juxtaposed within the second housing at the backside of said display panel of the first housing and said cathode is oriented within the second housing opposite from the backside facilitating unobstructed air breathing, evacuation of water and heat dissipation, wherein said fuel cell unit comprises a plurality of fuel cell elements contained within said second 2 Appeal2014-008502 Application 11/752,499 housing, each.fuel cell element comprising at least one silicon substrate and said cathode formed over the silicon substrate, an insulator formed over said cathode, and said anode formed over said insulator, wherein said insulator is configured to isolate the cathode from the anode and support the PEM there between, and further comprising, and plurality of fuel delivery channels formed within the silicon substrate to receive hydrogen fuel and pass the hydrogen fuel to the PEM and mix with air flowing over the anode. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Hockaday US 6,326,097 B 1 Dec. 4, 2001 (hereinafter "Hockaday") Nakamura et al. US 2004/0136156 Al July 15, 2004 (hereinafter "Nakamura") Tseng US 2006/0183015 Al Aug. 17, 2006 (hereinafter "Tseng") Krishnan et al. US 2008/0003485 Al Jan. 3, 2008 (hereinafter "Krishnan") THE REJECTIONS 1. Claims 1, 4, 8-12, 14, and 18-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hockaday, Nakamura, Krishnan, and Tseng. 3 Appeal2014-008502 Application 11/752,499 2. Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nakamura, Hockaday, Krishnan, and Tseng.2 DISCUSSION Appellant argues that the Examiner erred in rejecting the claims as obvious because a person of ordinary skill would not have been motivated to combine the teachings of the references to form the claimed subject matter, the references teach away from a combination with each other, and combination of the references is improperly based on hindsight analysis. App. Br. 9-21. Appellant presents argument directed generally to features recited in all claims and does not present substantively distinct arguments for any of the independent or dependent claims. Id. at 9-23. Therefore, we select claim 1 as representative; all other claims stand or fall with claim 1. Hockaday discloses a base member and a first housing as recited in claim 1 (Hockaday Fig. 12, 11 :47---65), and further discloses a second housing comprising a f11el cell unit (id., 11 : 4 7-13: 3) but does not teach placement of an anode or cathode within the fuel cell unit as recited in the claims on appeal. Nakamura discloses a portable electronic device having a planar fuel cell unit within a housing having vent openings for heat dissipation and secured to the back side of a display panel. Nakamura Fig. 2, i-fi-f 16-18, 20-40. The Examiner determines that a person of ordinary skill in the art would have combined Nakamura and Hockaday because it would 2 The Examiner asserted the same references in both rejections, although rearranging them so that Hockaday is the primary reference in the first rejection, and Nakamura is the primary reference in the second rejection. Ans. 2-8. We consider both rejections together, and further consider all claims 1-21 as rejected over the combination of four references. 4 Appeal2014-008502 Application 11/752,499 have been merely a combination or substitution of known elements (i.e., locating the fuel cell such that the cathode which requires air is on a side where air can be received) according to known methods, to obtain predictable results (Ans. 4), and further that it would have been obvious to a person of ordinary skill to modify Nakamura by using two separate housings as taught by Hockaday, in order to improve the fuel cell packaging and take advantage of heat generated by the display screen, for operation of the fuel cell. Ans. 6. Krishnan and Tseng are micro fuel cells used to recharge a battery or power a portable device. Krishnan abstract, i-f 2; Tseng abstract i-fi-1 5, 16. Krishnan's fuel cell comprises a silicon substrate supporting the electrolyte and fuel delivery channels formed within the substrate for transporting hydrogen, and an insulating capping layer impermeable to hydrogen over the cathode. Krishnan Fig. 6, i-fi-125-28. The Examiner determines that it would have been obvious for a person of ordinary skill in the art to combine the silicon substrate and fuel delivery channels of Krishnan with Hockaday and Nakamura, in order to improve device operation, because silicon substrates within fuel cells were well-known in the art. Ans. 5, 10. Appellant does not dispute the Examiner's findings as to Krishnan, but argues that a person of ordinary skill would not apply Krishnan to the combination of Hockaday and Nakamura because Krishnan discloses that its electrolyte is patterned into a pedestal structure. App. Br. 19. Appellant's argument is not persuasive because obviousness does not require bodily incorporation of Krishnan's pedestal structure, nor does the Examiner rely on Krishnan for that feature. In re Keller, 642 F .2d 413, 425 (CCP A 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary 5 Appeal2014-008502 Application 11/752,499 reference"). For the same reasons, we do not find persuasive Appellant's argument about the carbon nanotube structure disclosed in Tseng. App. Br. 19-21; Reply Br. 4. As to Appellant's arguments that a person of ordinary skill would not have been motivated to combine Hockaday and Nakamura because Hockaday teaches thermal insulation to allow the fuel cell to run at elevated temperatures, whereas Nakamura teaches heat dissipation, those differences between the references do not persuade us that a person of ordinary skill in the art would not have been led to combine them. App. Br. 11-18. Simply that there are differences between two references is insufficient to establish that such references teach away from any combination thereof. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine"). Further, Appellant does not respond to the Examiner's determination that a person of ordinary skill in the art would understand "the need to elevate the fuel cell's temperature to its operating range while dissipating excess heat in order to assure continued device operation and safety." Ans. 9; Reply Br. 2-3. The Examiner provided the requisite factual basis and articulated reasoning to support the conclusion of obviousness (Ans. 6, 9). Appellant has not shown error in those findings or sufficiently responded to the Examiner's reasoning; thus, we are not persuaded that the Examiner reversibly erred. For similar reasons, we find Appellant's hindsight argument without merit. App. Br. 9. If the Examiner articulates reasoning having rational underpinnings for making a proposed modification or combination of prior art teachings, then that articulated reasoning 6 Appeal2014-008502 Application 11/752,499 demonstrates the combination is not based on impermissible hindsight. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). SUMMARY We affirm the rejection of claims 1-21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation