Ex Parte EickhoffDownload PDFPatent Trial and Appeal BoardOct 26, 201712722388 (P.T.A.B. Oct. 26, 2017) Copy Citation 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. 12/722,388 03/11/2010 Steven J. Eickhoff H0022734.212474 3013 92689 7590 HONEYWELL/SLW Patent Services 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 EXAMINER THOMAS, BRENT C ART UNIT PAPER NUMBER 1724 NOTIFICATION DATE DELIVERY MODE 10/30/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentservices-us @ honey well, com uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. EICKHOFF1 Appeal 2016-005284 Application 12/722,388 Technology Center 1700 Before DONNA M. PRAISS, CHRISTOPHER L. OGDEN, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL2 Appellant appeals the Examiner’s decision to finally reject claims 1— 11, 18, and 22—25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies Honeywell International Inc. as the real party in interest. App. Br. 2. 2 In our Decision, we refer to the Specification March 11, 2010 (“Spec.”); Final Office Action dated April 2, 2015 (“Final Act.”); Appeal Brief dated August 31, 2015 (“App. Br.”); Examiner’s Answer to the Appeal Brief dated February 18, 2016 (“Ans.”); and Reply Brief dated April 18, 2016 (“Reply Br.”). Appeal 2016-005284 Application 12/722,388 The Claimed Invention Appellant’s disclosure relates to a recharger for hydrogen fuel cells that includes a manifold having an input to couple to a hydrogen generating module and an output port to couple to at least one rechargeable fuel cell. Abstract; see also Spec. 11—14, Fig. 1. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (Appeal Br. 24) (key disputed claim language italicized and bolded): 1. A recharger comprising: a fuel container having multiple fuel rods and a humid air inlet, wherein the fuel rods are disposed in selectively permeable membranes, wherein the fuel container has an outlet that provides hydrogen generated from the fuel rods to recharge multiple removable hydrogen rechargeable power generators, and wherein the multiple removable hydrogen-rechargeable power generators each has its own hydrogen storage and has a shape corresponding to a form factor of primary alkaline or lithium batteries; a manifold attached to the outlet, wherein the manifold includes multiple output ports to receive the multiple removable hydrogen-rechargeable power generators and to distribute the hydrogen for storage in the multiple removable hydrogen- rechargeable power generators, wherein each output port includes an independently actuated valve; a hydrogen pump coupled to the manifold to provide pressurized hydrogen to the removable hydrogen-rechargeable power generators; a vacuum pump coupled to the manifold and adapted to remove air from the multiple removable hydrogen-rechargeable power generators prior to providing hydrogen to the removable hydrogen-rechargeable power generators; control electronics adapted to control the hydrogen pump, to control the vacuum pump, and to control each independently actuated valve within the manifold; and 2 Appeal 2016-005284 Application 12/722,388 an internal fuel cell coupled to receive generated hydrogen and provide power to the control electronics, the hydrogen pump, the vacuum pump, and a fan. The References The Examiner relies on the following references as evidence in rejecting the claims on appeal: Retallick US 4,599,867 July 15, 1986 Kerrebrock et al., US 5,372,617 (hereinafter “Kerrebrock”) Dec. 13, 1994 Voss et al., (hereinafter “Voss”) US 2002/0058168 Al May 16, 2002 Bonne et al., (hereinafter “Bonne”) US 2005/0181245 Al Aug. 18, 2005 Eickhoff et al., US 2007/0104996 Al (hereinafter “Eickhoff ’996”) May 10, 2007 Eickhoff et al., (hereinafter “Eickhoff’) US 2007/0287059 Al Dec. 13, 2007 Kaye et al., (hereinafter “Kaye”) US 2008/0057360 Al Mar. 6, 2008 Machuca et al., US 2009/0104480 Al Apr. 23, 2009 (hereinafter “Machuca”) The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1—4, 10, 18, and 22—25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bonne in view of Voss, Eickhoff, and further view of Machuca (“Rejection 1”). Ans. 2; Final Act. 3. 2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Bonne, Voss, Eickhoff, and Machuca as applied to claims 3 Appeal 2016-005284 Application 12/722,388 1—4, 18, and 22—25 above, and further in view of Eickhoff ’996 (“Rejection 2”). Ans. 8; Final Act. 9. 3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Bonne, Voss, Eickhoff, and Machuca as applied to claims 1—4, 18, and 22—25 above, and further in view of Kerrebrock (“Rejection 3”). Ans. 9; Final Act. 10. 4. Claims 7—9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bonne, Voss, Eickhoff, and Machuca as applied to claims 1—4, 18, and 22—25 above, and further in view of Retallick (“Rejection 4”). Ans. 10; Final Act. 11. 5. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Bonne, Voss, Eickhoff, and Machuca as applied to claims 1—4, 18, and 22—25 above, and further in view of Kaye (“Rejection 5”). Ans. 10; Final Act. 12. OPINION Rejection 1 The Examiner determines that the combination of Bonne, Voss, Eickhoff, and Machuca suggests a recharger (hydrogen generator) satisfying all of the limitations of claim 1 and would have rendered the claim obvious. Ans. 2. Regarding the “manifold” limitation of claim 1, the Examiner relies on Bonne and finds that the reference teaches a manifold coupled to the outlet (passage 18) adapted to provide the hydrogen to one or more rechargeable power generators (fuel cell 22). Id. at 2 (citing Bonne, Fig. 1, 122). 4 Appeal 2016-005284 Application 12/722,388 The Examiner concludes that although the combination of Bonne, Voss, Eickhoff, and Machuca does not teach or suggest charging multiple fuel cells as recited in the claim, such modification would have been an obvious variant to one of ordinary skill in the art since it would only require the duplication of parts (such as the output ports and valves to control the ports) and would provide the known benefit of additional power from the additional fuel cells. Ans. 4. Appellant argues that the Examiner’s rejection should be reversed because Bonne does not teach or suggest a “manifold,” as claimed. App. Br. 13. In particular, Appellant argues that Bonne’s passage 18 provides a single outlet of hydrogen to a hydrogen-consuming fuel cell, and does not teach or suggest “a manifold attached to the outlet, wherein the manifold includes multiple output ports to receive the multiple removable hydrogen- rechargeable power generators and to distribute the hydrogen for storage in the multiple removable hydrogen rechargeable power generators” as recited in claim 1. Id. at 13—14; see also Reply Br. 2—3. Appellant’s argument is persuasive because the Examiner has not established by a preponderance of the evidence that Bonne or any combination of Bonne and the other cited references teaches or suggests a “manifold” as required by claim 1. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of establishing a prima facie case of obviousness). The Examiner does not provide an adequate technical explanation or direct us to sufficient evidence that Bonne’s passage 18 is or would have 5 Appeal 2016-005284 Application 12/722,388 been considered by one of ordinary skill in the art to be a “manifold,” as required by the claim. None of the portions of Bonne upon which the Examiner relies teach or suggest this limitation. See Bonne, Fig. 1,122. Rather, as Appellant correctly points out (App. Br. 13), Bonne depicts and describes passage 18 as a single outlet passage that provides hydrogen gas from the reaction of metal hydride 17 (block 16) to power-consuming device 19. Bonne 122, Fig. 1. Bonne further discloses that the hydrogen gas is passed through device 19 to fuel cell 22, which consumes the hydrogen and provides electrical power 24 to power device 19. Id. 122. There is no teaching, suggestion, or even mention of Bonne’s passage 18 being or functioning as a manifold in the manner claimed. Moreover, on the record before us, we are not persuaded that the Examiner identifies evidence or reasoning sufficient to support a finding that one of ordinary skill would have had reason to modify Bonne’s device in the manner claimed. The fact that Bonne discloses a passage 18 through which hydrogen gas may flow (Bonne 122, Fig. 1), without more, does not persuade us that one of ordinary skill would have had reason to modify Bonne’s recharger device to arrive at the claimed invention, particularly to include a manifold, as claimed. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with some rational underpinning to support the legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s assertion that “the passages of Bonne would necessarily be split in order to provide hydrogen to the multiple rechargeable 6 Appeal 2016-005284 Application 12/722,388 power generators” (Ans. 11) is conclusory and, without more, insufficient to sustain the Examiner’s rejection. Kahn, 441 F.3d at 988 (holding “rejections on obviousness grounds cannot be sustained by mere conclusory statements”). We, therefore, cannot sustain the Examiner’s determination that the combination of Bonne, Voss, Eickhoff, and Machuca teaches or suggests all of the limitations of claim 1. Because claims 2—4, 10, 24, and 25 depend from claim 1 and claims 18, 22, and 23 each recite the same “manifold” element as claim 1, we also cannot sustain the Examiner’s rejection of these claims. Accordingly, we reverse the Examiner’s rejection of claims 1—4, 10, 18, and 22—25 under 35 U.S.C. § 103(a) as obvious over the combination of Bonne, Voss, Eickhoff, and Machuca. Rejections 2, 3, 4, and 5 The foregoing deficiencies in the Examiner’s analysis and conclusion regarding the combination of Bonne, Voss, Eickhoff, and Machuca are not remedied by the Examiner’s findings regarding the additional references or combination of references cited in support of the second, third, fourth, and fifth grounds of rejection. Accordingly, we also reverse the Examiner’s Rejections 2, 3, 4, and 5. 7 Appeal 2016-005284 Application 12/722,388 DECISION The Examiner’s rejections of claims 1—11, 18, and 22—25 are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation