Ex Parte Eickhoff

Patent Trial and Appeal Board

Oct 26, 2017

12722388 (P.T.A.B. Oct. 26, 2017)

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
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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
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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).
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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
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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
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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.
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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
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