Ex Parte Dewey

Board of Patent Appeals and Interferences

Aug 17, 2011

10864716 (B.P.A.I. Aug. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SCOTT DEWEY
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Appeal 2010-006525
Application 10/864,716
Technology Center 1700
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-16. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant claims a fuel cell system comprising a fuel cell stack and a
heater circuit including a heater for heating the fuel cell stack during system
start-up, the heater circuit further including a controller for controlling the
amount of heat provided by the heater, "said controller monitoring stack
Appeal 2010-006525
Application 10/864,716

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voltage and current flow through the heater and controlling the amount of
power the heater draws from the stack based on the amount of power that is
available from the stack" (claims 1, 11).
Representative claim 1 reads as follows:
1. A fuel cell system comprising:

a fuel cell stack providing output power; and

a heater circuit including a heater for heating the fuel cell stack during
system start-up, said heater being electrically coupled to the output of the
fuel cell stack, said heater circuit further including a controller for
controlling the amount of heat provided by the heater, said controller
monitoring stack voltage and current flow through the heater and controlling
the amount of power the heater draws from the stack based on the amount of
power that is available from the stack.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Lord 5,299,594 Apr. 5, 1994
Mufford US 6,186,254 B1 Feb. 13, 2001
Breault US 2005/0129991 A1 Jun. 16, 2005

Under 35 U.S.C. § 103(a), the Examiner rejects as unpatentable:
claims 1-3 and 8-10 over Breault;
claims 4 and 5 over Breault in view of Lord;
claims 6, 7, 11, 12, 15, and 16 over Breault in view of Mufford; and
claims 13 and 14 over Breault, Mufford, and Lord.
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The § 103 Rejection over Breault
Appellant argues that this rejection is improper because Breault
contains no teaching or suggestion of the independent claim 1 limitation
"said controller monitoring stack voltage and current flow through the heater
and controlling the amount of power the heater draws from the stack based
on the amount of power that is available from the stack" (App. Br. 5-8;
Reply Br. 1-2).
Concerning this claim limitation, the Examiner states:
Breault does not specifically disclose wherein said controller (15)
monitors stack voltage and current flow through the heater (50,49),
however, since Breault does disclose that that [sic] the heater is operated
at a specific wattage and receives power via lines (62,63) from a
message sent by the controller (15), as well as a temperature sensor (56)
in the accumulator (29), it would have been obvious to one of ordinary
skill in the art to presume that the current and voltage flow through the
heater are also being monitored by the controller. [Ans. para. bridging 3-4].
As an apparently alternative position concerning the claim 1
limitation, the Examiner indicates that the language of this limitation is
considered intended use or functional language which does not differentiate
the claimed apparatus from Breault's apparatus since "Breault teaches a fuel
cell stack, a heater circuit including a heater and a controller, which are the
same structural features as those claimed by Applicant" (id. at para. bridging
4-5).
In this latter regard, we clarify that there is nothing intrinsically wrong
with using functional language to define the features of an apparatus such as
the claim 1 controller. In re Schreiber, 128 F.3d 1473, 1378 (Fed. Cir.
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1997). Further, where the Patent and Trademark Office has reason to
believe that a functional limitation in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to be in the prior
art does not possess the characteristic. Id.
However, contrary to the Examiner's apparent belief, the mere fact
that Breault's fuel cell system includes a controller is not an acceptable
reason to believe that the controller inherently possesses the capability of
performing the function required by Appellant's claim 1 controller. For the
reasons detailed in the Appeal Brief and Reply Brief (App. Br. 6-8; Reply
Br. 2), the claim 1 controller is patentably distinct from a controller which is
not programmed or otherwise designed to perform the claim 1 function.
Similarly, as correctly argued by Appellant (App. Br. 5-6; Reply Br.
1-2), the record provides no acceptable reason for the Examiner's above
presumption "that [in Breault's system] the current and voltage flow through
the heater are also being monitored by the controller" (Ans. para. bridging 3-
4). In support of this presumption, the Examiner points out that paragraph
[0031] of Breault teaches the controller may start up the fuel cell stack
assembly and draw on the order of 2 kW-5 kW from the fuel cell stack to
operate the microwave heater (id. at 15). However, this controller function
could be performed, for example, by activating a simple on/off switch
having a pre-set 2-5 kW regulator. Accordingly, the paragraph [0031]
teaching does not support the Examiner's presumption that Breault's
controller performs the monitoring and controlling functions of the claim 1
controller.
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In light of the foregoing, we will not sustain the Examiner's § 103
rejection of claims 1-3 and 8-10 as unpatentable over Breault.
The Remaining § 103 Rejections
The Examiner does not rely on the other applied references for
supplying the above discussed deficiencies of Breault. In particular, the
rejection of independent claim 11, which also contains the previously
analyzed controller limitation of independent claim 1, is likewise premised
on the Examiner's unsupported presumption "that [in Breault's system] the
current and voltage flow through the heater are also being monitored by the
controller" (Ans. para. bridging 8-9).
Under these circumstances, we also will not sustain any of the
Examiner's remaining § 103 rejections.
Conclusion
The decision of the Examiner is reversed.

REVERSED

sld