Ex Parte Buechi et alDownload PDFBoard of Patent Appeals and InterferencesFeb 19, 201010885126 (B.P.A.I. Feb. 19, 2010) Copy Citation 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 ____________ Decided: February 19, 2010 ____________ 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 2 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, Appeal 2009-009918 Application 10/885,126 3 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. Appeal 2009-009918 Application 10/885,126 4 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 Appeal 2009-009918 Application 10/885,126 5 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”? Appeal 2009-009918 Application 10/885,126 6 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 Appeal 2009-009918 Application 10/885,126 7 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). Appeal 2009-009918 Application 10/885,126 8 “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. Appeal 2009-009918 Application 10/885,126 9 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. Appeal 2009-009918 Application 10/885,126 10 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 11 bim SIEMENS SCHWEIZ AG I-47, INTELLECTUAL PROPERTY ALBISRIEDERSTRASSE 245 ZURICH CH-80-47 CH SWITZERLAND Copy with citationCopy as parenthetical citation