Ex Parte Davis

Board of Patent Appeals and Interferences

Feb 27, 2009

10438004 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STUART M. DAVIS
____________

Appeal 2008-4934
Application 10/438,004
Technology Center 1700
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Decided:1 February 27, 2009
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-4, 6-10, 12-18, 20-23, 25, 37-40, 42-44, and 64. Claims 5, 24, 41,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4934
Application 10/438,004

and 45 have been withdrawn from consideration. (App. Br. 1). We have
jurisdiction under 35 U.S.C. § 6.2
Appellant’s invention relates to relates to fuel consuming agents and
methods of consuming fuel. A fuel consuming agent is located in the
vicinity of or on the surface of a fuel cell or fuel cartridge. The
Specification discloses that in the event of a fuel leak from a fuel cell the
fuel consuming agent, located in or near a fuel cell, is able to convert the
fuel to a harmless byproduct. (Spec. 4). Claim 1 is illustrative:
1. An electrochemical cell system comprising:
a fuel cell comprising:
a fuel cell housing having a first external surface and a first
internal surface defining a first internal volume of the fuel cell
housing, and
a cathode, an anode, and an electrolyte disposed within the first
internal volume;
a fuel cartridge connected to the fuel cell, the cartridge
comprising:
a cartridge housing having a second external surface and a
second internal surface defining a second internal volume of the
cartridge housing, wherein the second internal volume includes a
fuel; and
a fuel consuming agent comprising a mixture and an activating
material, the fuel consuming agent being disposed on at least one
of the first external surface and the second external surface,
wherein the oxidizing material and the activating material each
comprise a metal.

2 In rendering this decision we have considered the Appellant’s arguments
presented in the Appeal Brief dated December 21, 2007 and the Reply
Brief dated April 8, 2008.
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Appeal 2008-4934
Application 10/438,004

The Examiner rejected the claims on appeal as follows:
Claims 1-4, 6-10, 12, 15-18, 20-21, 23, 25, 37-40, 42-44, and 64
stand rejected under 35 U.S.C. § 102(e) as anticipated by Pratt (US.
6,689,194 B2, issued February 10, 2004). Claims 12-18 and 21-22 stand
rejected under 35 U.S.C. §103(a) as unpatentable over Pratt combined with
Davis (U.S. 6,500,576 B1, issued December 31, 2002).3 Claim 25 stands
rejected as unpatentable over Pratt combined with Boneberg (U.S. Patent
Application 3002/0127458, published May 1, 2003). Claim 64 stands
rejected as unpatentable over Pratt combined with Gore (U.S. 6,998,185
B2, issued February 14, 2006).
The §102 rejection
Claims 1-4, 6-10, 12, 15-18, 20-21, 23, 25, 37-40, 42-44, and 64
stand rejected under 35 U.S.C. § 102(e) as anticipated by Pratt
The issue before us is whether Appellant has shown that the
Examiner reversibly erred in rejecting the claims under 35 U.S.C. § 102(b).
We answer this question in the affirmative. Therefore, WE REVERSE.4

3The Examiner lists claim 11 in a heading within the discussion of the
rejection over Pratt (Ans. 7). However, claim 11 was not included in the
listing of claims for the § 103(a) rejection in the Answer or the Final
Rejection of April 3, 2007. The procedures for making a new ground of
rejection in an Examiner’s Answer were not followed. Thus, a rejection of
claim 11 under 35 U.S.C. § 103(a) is not before us on appeal.
4 We select independent claim 1 as representative of the rejected subject
matter.
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Appeal 2008-4934
Application 10/438,004

The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element
as set forth in the claim is found, either expressly or inherently described,
in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999).
The Examiner found that Pratt disclosed a fuel purification system
comprising a fuel source and a getter element and a fuel cell. The
Examiner contends that the getter of Pratt anticipates the subject matter of
the claimed invention. (Ans. 3-4). According to the Examiner:
Getter element 20 is an element sufficient for chemisorbing the
oxides of carbon from the hydrogen and is removable connected to
the fuel cell anode side as to be easily replaced when spent (P0006,
0008). Particularly the getter is a substance that binds gases on its
surface. Active gases are chemisorbed and/or physisorbed onto the
surface. Chemisorption is a well known chemical adsorption
process in which weak chemical bonds are formed between gas or
liquids molecules and a solid surface (P0008). Thus, it is
contended that the getter element acts as a fuel consumption agent.
Further disclosed is that the getter element 20 contains a material
suitable for chemisorbing such as platinum, silver, tungsten, iron
and iron compounds and/or sodium hydroxide (P0008). All of the
foregoing materials comprises a metal. In this case, it is noted that
the examiner construing the oxidizing material in the activating
material as not having a different composition There is no
indication in the present claims that the oxidizing material and the
activating material are indeed different materials. Thus, a first
portion of the getter element constitutes the activating material,
while [the] second portion thereof further constitutes the oxidizing
material.
(Ans. 4, emphasis original)
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Appeal 2008-4934
Application 10/438,004

Appellant contends that Pratt does not disclose a fuel consuming
agent and therefore does not anticipate the claimed invention. (App. Br.
4). Appellant avers that the getter of Pratt only consumes impurities and
therefore is not a fuel consuming agent as required by the claimed
invention. (Reply Br. 2). We agree with Appellant.
The claimed invention is directed to a fuel consuming agent. The
Specification discloses representative fuels include hydrogen, methanol,
ethanol, methane, propane, butane, formic acid, hydrazine, ammonia, or a
combination thereof. (Spec. 3). The Specification, pages 3-4, exemplifies
the various components of a hydrogen fuel cell. The Specification
discloses the hydrogen fuel cell has a housing with an external surface and
an internal surface defining an internal volume. (Spec. 3). In a hydrogen
fuel-cell the fuel consuming agent is described as a hydrogen consuming
agent such as a hydrogen recombining agent or a hydrogen getter. (Spec.
3). The Specification discloses that in the event of a fuel leak from a fuel
cell the fuel consuming agent, located in or near a fuel cell, is able to
convert the fuel to a harmless byproduct. (Spec. 4). Thus, the purpose of
the fuel consuming agent is to specifically transform fuel (of the particular
type utilized in the fuel cell or cartridge) in to harmless byproducts. There
is no disclosure in the Specification that indicates the fuel consuming agent
is utilized to absorb only impurities from fuel to produce a purified fuel
source. As correctly stated by Appellant, the getter of Pratt only consumes
impurities and therefore is not a fuel consuming agent as required by the
claimed invention.

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Appeal 2008-4934
Application 10/438,004

The §103 rejections
Claims 12-18 and 21-22 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Pratt combined with Davis; claim 25 stands rejected as
unpatentable over Pratt in view of Boneberg; and claim 64 stands rejected
as unpatentable over Pratt in view of Gore.
WE REVERSE.
The Examiner relied on the Davis, Boneberg, and Gore references to
address the specific limitations of these dependent claims. The Examiner
did not rely on these references for describing a fuel consuming agent.
Thus, a combination of Pratt with Davis, Boneberg, or Gore does not
address the distinction between the claimed invention and the invention of
Pratt discussed above. Therefore, we reverse each of these rejections.
For the foregoing reasons and those presented in Appellant’s Briefs,
the rejections of claims 12-18, 21, 22, 25, and 64 under 35 U.S.C. § 103(a)
are reversed.

ORDER
The decision of the Examiner rejecting claims 1-4, 6-10, 12, 15-18,
20-21, 23, 25, 37-40, 42-44, and 64 under 35 U.S.C. § 102(e), is reversed.
The decision of the Examiner rejecting claims 12-18, 21, 22, 25, and
64 under 35 U.S.C. § 103 (a) is reversed.

REVERSED

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Appeal 2008-4934
Application 10/438,004

PL Initial:
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FISH & RICHARDSON PC
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
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