Ex Parte Chowdhury

Patent Trial and Appeal Board

Mar 26, 2014

12134445 (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/134,445 06/06/2008 Akbar Chowdhury P005090-FCA-CHE 1657
65798 7590 03/26/2014
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
BUCHANAN, JACOB
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
03/26/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AKBAR CHOWDHURY
____________

Appeal 2012-007699
Application 12/134,445
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
DONNA M. PRAISS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-12 and 21. We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.
Appeal 2012-007699
Application 12/134,445

2
Appellant claims a method for starting a fuel cell stack which
comprises determining whether membranes in the fuel cell stack are too dry
to effectively conduct protons and, if so, performing remedial actions
(independent claim 1; see also remaining independent claim 9).

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method for reliably starting a fuel cell system including a fuel
cell stack, said method comprising:
performing a predetermined fuel cell stack start-up operation to
determine whether membranes in the fuel cell stack are too dry to effectively
conduct protons; and
performing one or more remedial actions that prevents the membranes
within the fuel cell stack from further drying out if it is determined that the
membranes in the fuel cell stack are too dry to effectively conduct protons.

The Examiner rejects claims 1 and 2 under 35 U.S.C. § 102(b) as
anticipated by Takemoto et al. (WO 2007/052500 A1, published May 10,
2007; as translated via English equivalent US 2009/0117419 A1, published
May 7, 2009) or Nakamura et al. (US 2007/0048568 A1, published Mar. 1,
2007) and rejects remaining claims 3-12 and 21 under 35 U.S.C. § 103(a) as
unpatentable over Takemoto or Nakamura in combination with additional
prior art.

The Examiner also rejects claims 1-12 on the ground of obviousness-
type double patenting as unpatentable over claims 1, 3-8, and 10-12 of U.S.
Patent 8,088,523 in view of St-Pierre et al. (US 2003/0186093 A1, published
Oct. 2, 2003) and Nakamura.

Appeal 2012-007699
Application 12/134,445

3
We sustain each of the above rejections for the reasons well stated by
the Examiner in the Office Action mailed 17 August 2011 and the Answer.
The following comments are added for emphasis.

Appellant's only argument in the Appeal Brief against the § 102 and
§ 103 rejections based on Takemoto is that the rejections should be
withdrawn because the § 102(e) filing date of this reference has been
antedated via a declaration under 37 C.F.R. § 1.131 (see, e.g., App. Br. 11).
However, as correctly explained by the Examiner and not disputed by
Appellant, the Takemoto reference is available as prior art under § 102(b)
and therefore cannot be antedated via a § 1.131 declaration (Ans. 33). In the
Reply Brief, Appellant presents new arguments against the rejections based
on Takemoto (Reply Br. ¶ bridging 1-2, 3 (1st ¶)). We will not consider
these new arguments since they have not been accompanied by a showing of
good cause explaining why these arguments could not have been presented
in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI
2010) (informative).

Appellant argues that the § 102 rejection based on Nakamura is
improper because Nakamura's use of elapsed time (i.e., from the last power
generation) for determining whether the fuel cell membranes are too dry
does not satisfy the determining step of claims 1 and 2 (App. Br. 13-14).
This argument is unpersuasive because the claimed determining step also
uses elapsed time as fully explained by the Examiner (see, e.g., Ans. 6, 34).

Appeal 2012-007699
Application 12/134,445

4
Concerning the § 103 rejections based on Nakamura, Appellant in the
Appeal Brief does not contest the Examiner's obviousness rationale in these
rejections but instead merely reiterates unsuccessful argument discussed
previously (see, e.g., App. Br. 22-24). In the Reply Brief, Appellant
presents a new argument against these rejections, namely, "a person of
ordinary skill in the art would not be motivated to combine, for example,
Nakamura and Yasuda" (Reply Br. 2 (last ¶)). We will not consider this new
argument for the reasons explained above. See Borden, 93 USPQ2d at 1477.
Finally, Appellant argues that the obviousness-type double patenting
rejection should be withdrawn without requiring a terminal disclaimer
according to the Manual of Patent Examining Procedure (MPEP) (App. Br.
31 (citing "MPEP 804, I, B, 1")). For the reasons detailed by the Examiner
(Ans. 47), Appellant misinterprets this section of the MPEP which, unlike
the rejection under consideration, relates to provisional obviousness-type
double patenting rejections.

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

cdc