Ex Parte Buechi et al

Board of Patent Appeals and Interferences

Feb 19, 2010

10885126 (B.P.A.I. Feb. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FELIX BUECHI, MARTIN RUGE, and DANIEL SCHMID
____________

Appeal 2009-009918
Application 10/885,126
Technology Center 1700
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Decided: February 19, 2010
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Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009918
Application 10/885,126

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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2, 5, 6, 10, 12, 13, and 23 (Appeal Brief filed August 29, 2007,
hereinafter “Br.,” at 2; Final Office Action mailed February 6, 2007). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
Appellants’ invention relates to a fuel cell stack comprising, inter alia,
a specified intermediate layer (Specification, hereinafter “Spec.,” 1, ll. 12-
14).
Claim 23, as well as claims 2, 5, and 6 dependent thereon, read as
follows:
23. A fuel cell stack comprising:
a first end plate,
a second end plate,
a number of conductive and flexible intermediate layers,
and
a number of fuel cells between the first end plate and the
second end plate,
wherein:
each fuel cell comprises in series an anode-facing end
plate, an anode, an ion-exchanging layer, a cathode and a
cathode-facing end plate to constitute an assembled and
operational fuel cell,
each intermediate layer is fluid-tight and comprises
sealing edge sections for fluid channels,
adjacent fuel cells are separated by one of the
intermediate layers so that the intermediate layer is disposed
between an anode-facing end plate and a cathode-facing end
plate,
one of the intermediate layers is disposed between the
first end plate and a cooling plate coupled to the first end plate,
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one of the intermediate layers is disposed between the
second end plate and a cathode-facing end plate, and
one of the intermediate layers is disposed between the
cooling plate and an anode-facing end plate.

2. The fuel cell stack according to claim 23, wherein the
intermediate layer is placed over at least one of the anode-
facing and cathode-facing end plates of individual fuel cells.

5. The fuel cell stack according to claim 23, wherein the
intermediate layer is a foil.

6. The fuel cell stack according to claim 23, wherein the
intermediate layer comprises flexible graphite.
(Br. 16-17; Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed June 16, 2008, hereinafter
“Ans.,” 2):
Kaufman 4,945,010 July 31, 1990
Inventor Unknown1 DE 200 16 734 U1 Feb. 15, 2001

The Examiner rejected the claims as follows:
I. Claims 2, 5, and 6 under 35 U.S.C. § 112, ¶ 2, as
indefinite (Ans. 3);
II. Claims 2, 5, 6, 10, 12, 13, and 23 under 35 U.S.C. §
102(b) as anticipated by Proton (Ans. 3); and

1 For consistency with the appeal record, we refer to this document as
“Proton.” Regarding this document, Appellants state that a translation was
provided with the Information Disclosure Statement (IDS) filed on July 7,
2004 (IDS at 2). It appears, however, that Appellants merely submitted a
Derwent abstract. Nevertheless, the United States Patent and Trademark
Office obtained and entered a full translation of the reference on May 5,
2009.
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III. Claims 2, 5, 6, 10, 12, 13, and 23 under 35 U.S.C. §
103(a) as unpatentable over Kaufman (Ans. 4-5).

ISSUES
I: Claims 2, 5, and 6: Indefiniteness
The Examiner asserted that the recitation “the intermediate layer” in
each of dependent claims 2, 5, and 6 renders them indefinite because
independent claim 23 refers to “multiple intermediate layers and it is unclear
which of the intermediate layers are being further limited by claims 2, 5,
and/or 6” (Ans. 3).
Appellants countered that claim 2 further limits the corresponding
“intermediate layer . . . disposed between an anode-facing end plate and a
cathode-facing end plate” recited in independent claim 23 (App. Br. 5). As
to “the intermediate layer” in claims 5 and 6, Appellants appear to be
arguing that the term refers to all intermediate layers recited in independent
claim 23 (App. Br. 5-6).
Thus, the issue is:
Does the term “the intermediate layer” in each of claims 2, 5, and 6
lack reasonable clarity such that one skilled in the relevant art would not be
able to ascertain which one of the multiple intermediate layers (e.g., in
instances where three or more fuel cells are present) is being further limited?

II: Claims 2, 5, 6, 10, 12, 13, and 23: Anticipation over Proton
The Examiner found that Proton describes a fuel cell comprising, inter
alia, an “intermediate layer [that] may be disposed between an end plate of a
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stack and an attached cooling plate, and, thus between end plates of two
adjacent stacks” (Ans. 3).
Appellants contend, inter alia, that Proton does not disclose a cooling
plate in the manner recited in claim 23 (App. Br. 6-8).
Thus, a dispositive issue is:
Does Proton describe a fuel cell stack comprising a cooling plate, as
required in the claimed invention?

III: Claims 2, 5, 6, 10, 12, 13, and 23: Obviousness over Kaufman
The Examiner considered element 37 (positioned between hydrogen
gas distribution plate 18 and oxygen distribution plate 20) of Kaufman’s
Figure 2 (reproduced below) as corresponding to Appellants’ claimed
“intermediate layer” (Ans. 4).
Appellants contend that Examiner’s obviousness conclusion did not
account for all claim limitations, including “each intermediate layer . . .
comprises sealing edge sections for fluid channels” (App. Br. 10).
Thus, a dispositive issue is:
Did the Examiner sufficiently account for the disputed claim
limitation, which requires an intermediate layer with “sealing edge sections
for fluid channels”?

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FINDINGS OF FACT (“FF”)
1. Appellants’ Figure 6 is reproduced below:

Figure 6 depicts a fuel cell stack 1 comprising fuel cells, end
plates 41 and 51, cooling plate 44, a plurality of intermediate
layers 30 (not labeled) and 70, wherein the fuel cells comprise
end plates 2a and 2b next to cathode 6 and anode 5, respectively
(Spec. 12, l. 25 and ll. 28-29; 14, l. 12 to 15, l. 4).
2. Figure 2a of Proton is reproduced below:

Figure 2a depicts a fuel cell stack comprising end plates 6 and
6', fuel cells 8, intermediate spaces 4 between the fuel cells 8,
and a coolant jacket 9 that surrounds the fuel cell stack and
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provides a space on opposite sides of the stack for coolant 13,
which flows from one side of the fuel cell stack to the other
through the intermediate spaces 4 (Proton at 10).
3. Kaufman’s Figure 2 is reproduced below:

Figure 2 depicts a portion of a fuel cell stack including a bi-
polar assembly 36 that comprises an interface layer 37 arranged
between a hydrogen gas distribution plate 18 of one fuel cell
and an oxygen distribution plate 20 of an adjacent fuel cell (col.
6, ll. 31-41).

PRINCIPLES OF LAW
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994).
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“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
I. Rejection of Claims 2, 5, and 6 Under 35 U.S.C. § 112, ¶ 2, as Indefinite
We concur with the Examiner that the term “the intermediate layer” in
each of claims 2, 5, and 6 renders these claims indefinite. The article “the,”
coupled with the singular form “layer,” indicates to one skilled in the
relevant art that these claims further limit one intermediate layer. But, e.g.,
in situations where three or more fuel cells are present, one skilled in the
relevant art would not be able to ascertain which one of the multiple
intermediate layers is being further limited (FF 1).
Moreover, for claims 5 and 6, Appellants appear to be arguing that
“the intermediate layer” actually refers to all the intermediate layers in the
claimed fuel stack and have even offered (but have not timely submitted) a
corrective amendment (App. Br. 6). Appellants’ plea to read the claims
contrary to their plain language underscores a failure to particularly point out
and distinctly claim the subject matter that they regard as their invention, in
violation of 35 U.S.C. § 112, ¶ 2.
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II. Rejection of Claims 2, 5, 6, 10, 12, 13, and 23 Under U.S.C. § 102(b)
as Anticipated by Proton
We agree with Appellants that the Examiner failed to account for all
claim limitations. The Examiner asserted that Proton describes an
“intermediate layer [that] may be disposed between an end plate of a stack
and an attached cooling plate, and thus, between end plates of two stacks”
(Ans. 3; FF 2). Upon challenge by Appellants, the Examiner failed to
identify the specific portions of Proton’s “claims and figures” that support
this finding.
Accordingly, we cannot affirm.

III. Rejection of Claims 2, 5, 6, 10, 12, 13, and 23 Under U.S.C. § 103(a) as
Unpatentable over Kaufman
Appellants have argued that Kaufman does not disclose the limitation
“each intermediate layer . . . comprises sealing edge sections for fluid
channels” in independent claim 23 and that the Examiner failed to address
this difference (App. Br. 10 and 13; FF 3). We agree.
For this reason alone, we must reverse. See MPEP §§ 1207 and
1207.02 (8th ed., Rev. 7) (July 2008).

CONCLUSION
Rejection I
The term “the intermediate layer” renders claims 2, 5, and 6
indefinite.

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Rejection II
The Examiner failed to provide sufficient evidence demonstrating that
Proton describes a fuel cell stack comprising a cooling plate in the manner
claimed.

Rejection III
The Examiner failed to sufficiently account for the disputed claim
limitation “each intermediate layer . . . comprises sealing edge sections for
fluid channels,” as required in the claimed invention.

DECISION
We affirm the Examiner’s decision to reject:
claims 2, 5, and 6 under 35 U.S.C. § 112, ¶ 2, as indefinite.
We reverse, however, the Examiner’s decision to reject:
claims 2, 5, 6, 10, 12, 13, and 23 under 35 U.S.C. § 102(b) as
anticipated by Proton; and
claims 2, 5, 6, 10, 12, 13, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Kaufmann.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

Appeal 2009-009918
Application 10/885,126

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