Ex Parte BIMBAUD

Patent Trial and Appeal Board

May 17, 2016

11752499 (P.T.A.B. May. 17, 2016)

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
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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.
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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.
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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
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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
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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
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