Ex Parte Frost et al

Patent Trial and Appeal Board

Sep 28, 2016

12711144 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121711,144 02/23/2010
65798 7590 09/29/2016
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD A VENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
FIRST NAMED INVENTOR
Patrick Frost
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P005512-FCA-CHE 1142
EXAMINER
ESSEX, STEPHAN J
ART UNIT PAPER NUMBER
1727
MAILDATE DELIVERY MODE
09/29/2016 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 PATRICK FROST, DANIEL C. DIFIORE, and RALF SENNER1
Appeal2015-000053
Application 12/711, 144
Technology Center 1700
Before CHUNG K. PAK, CATHERINE Q. TIMM, and JEFFREY R. SNAY,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 1-5, 7-10, 12, 13, and 20. 3 We have
jurisdiction under 35 U.S.C. § 6(b ).
1 The real party in interest is said to be GM Global Technology Operations LLC, a
Delaware Limited Liability Company. Appeal Brief filed February 26, 2014
("App. Br.") at 3.
2 Final Action entered October 22, 2013 ("Final Act.") at 2-9 and the Examiner's
Answer entered July 29, 2014 ("Ans.") at 2-8.
3 The Examiner withdrew method claims 14-19 from consideration as they are
directed to a non-elected invention. Final Act. l; Non-Final Action entered May 8,
2013; and Requirement for Restriction/Election entered December 26, 2012. The
Examiner also objected to claims 4 and 11 "as being dependent upon a rejected
base claim," but indicated to "be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims."
Final Act. 9.
Appeal2015-000053
Application 12/711, 144
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a fuel cell system comprising,
inter alia, a fuel cell having a cathode side and anode side, an injector for injecting
hydrogen gas into the anode side, a water separation device having a bleed/drain
valve for receiving an anode exhaust gas and water, and a controller that controls
the injector and the bleed drain valve and "determines when the bleed/drain valve
transitions from draining water to bleeding the anode exhaust gas [in a nitrogen
accumulation model.]" Spec. ,-i 11 and claim 1. The controller controls the
operation the injector and the bleed /drain valve based on signals from a water
level indicator in a reservoir of the water separation device and a pressure sensor
for detecting the pressure in the anode side of the fuel cell. Spec. ,-i,-i 17 and 19.
"[T]he water in the water separator device ... acts as a pressure barrier in the
valve ... to determine when the water is completely drained from the reservoir ...
and gas begins to flow out of the valve .... " Spec. ,-i 19.
The term "a nitrogen accumulation model" is not specifically defined in the
Specification. The Specification, however, states that "[such] a model is typically
used to calculate how much nitrogen is in the anode side of the fuel cell stack 12 to
determine when to perform an anode bleed through the bleed/drain valve 40."
Spec. ,-i 18 (emphasis added). Paragraphs 7 and 8 of the Specification also state
that:
.. .It is known in the art to provide a bleed valve at the anode
gas output of the fuel cell stack to remove nitrogen from the anode
side of the stack.
Models are typically used to calculate the concentration of
nitrogen in the anode side of the fuel cell stack based on the operating
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Application 12/711, 144
parameters of the fuel cell system, such as stack current density,
system pressure, etc. [(Emphasis added).]
Details of the appealed subject matter are recited in illustrative claims 1,
2, and 9, 4 which are reproduced below from the Claims Appendix of the Appeal
Brief (with disputed limitations in italicized form):
1. A fuel cell system comprising:
a fuel cell stack including a cathode side and an anode side;
an injector for injecting hydrogen gas into the anode side of the fuel
cell stack;
a water separation device receiving an anode exhaust gas from
the anode side of the fuel cell stack, said water separation device
including a water holding reservoir and a bleed/drain valve; and
a controller programmed to control the injector and the
bleed/drain valve, said controller opening the bleed/drain valve in the
water separation device and determining when the bleed/drain valve
transitions from draining water to bleeding anode exhaust gas,
wherein the controller uses the bleeding of the anode exhaust gas
through the bleed/drain valve and the determination of when the
bleed/drain valve transitions from draining water to bleeding anode
exhaust gas in a nitrogen accumulation model such that the model
determination of the amount of nitrogen in the anode side of the stack
has increased accuracy.
2. The system according to claim 1 wherein the controller
compares the flow rate through the water separation device and the
flow rate through the injector to determine when the bleed/drain valve
transitions from draining water to bleeding the anode exhaust gas.
9. A fuel cell system comprising:
a fuel cell stack including a cathode side and an anode side;
an injector for injecting hydrogen gas to the anode side of the
fuel cell stack;
4 Appellants only argue claims 1, 2, 3, 9, 10, and 20 separately. App. Br. 6-15.
Therefore, for purposes of this appeal, we limit our discussion to those claims.
37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Appeal2015-000053
Application 12/711, 144
a recirculation line for recirculating anode exhaust gas from an
anode output of the fuel cell stack to the injector;
a water separation device positioned in the recirculation line
and receiving the anode exhaust gas from the anode output, said water
separation device including a water holding reservoir and a
bleed/drain valve; and
a controller programmed to control the injector and the
bleed/drain valve, said controller comparing the flow rate through the
water separation device and the flow rate through the injector to
determine when the bleed/drain valve transitions from draining water
to bleeding the anode exhaust gas, said controller using the bleeding
of the anode exhaust gas in a nitrogen accumulation model.
App. Br. 17-19, Claims Appendix.
The Examiner has maintained the following grounds of rejection:
1. Claims 1-5, 7, 8, and 20 under 35 U.S.C. § 112(b) or 35 U.S.C. §112,
(pre-AIA), second paragraph, as being indefinite;
2. Claim 1-5, 7, 8, and 20 under 35 U.S.C. § 101 because the recitation
of a use, without setting forth any steps involved in the process, is not a proper
process claim;
3. Claims 1, 7, and 8 under 35 U.S.C. § 102(b) as anticipated by the
disclosure ofUmayahara (US 2007/0196709 Al published in the name of
Umayahara et al. on August 23, 2007); and
4. Claims 2, 3, 9, 10, and 13 under 35 U.S.C. § 103(a) as unpatentable
over the disclosures of Umayahara. Final Act. 2-11 and Ans. 2-14.
DISCUSSION
Having considered the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we affirm the
Examiner's § 102(b) rejection of claims 1, 7, and 8 for the reasons set forth in the
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Application 12/711, 144
Final Action and the Answer, but reverse the Examiner's§§ 112 and 101 rejections
of claim 1-5, 7, 8, and 20 and§ 103 rejection of claims 2, 3, 9, 10, and 13 for the
reasons set forth in the Appeal Brief. We add the following primarily for emphasis
and completeness.
35 U.S.C. §§ 112 and 101
The Examiner has rejected claims 1-5, 7, 8, and 20 under 35 U.S.C. §§ 112
and 101. Final Act. 2-3. In reference to the functional limitation associated with
the recited controller, the Examiner has determined that it "is indefinite where it
merely recites a use without [setting forth] any active, positive steps delimiting
how this use is actually practiced." Id. The Examiner has also determined that
"the ... recitation of a use, without setting forth any steps involved in the
process ... results in an improper definition of a process ... under 35 U.S.C. [§]101."
Id. In support of these determinations, the Examiner referred to Ex parte Dunki,
153 USPQ 678 (Bd. App. 1967) and Clinical Prods., Ltd. v. Brenner, 255 F. Supp.
13 ler (D.D.C. 1966) referred to in Manual of Patent Examining Procedure
2173.05(q) (Rev. 6, Sept. 2007). According to the Manual of Patent Examining
Procedure 2173 .05( q), the claims in Ex parte Dunki and Clinical Prods., Ltd,
which are not in compliance with the requirements of 35 U.S.C. § 112, second
paragraph, and/or 35 U.S.C. §101, read:
"The use of a high carbon austenitic iron alloy having a proportion of
free carbon as a vehicle brake part subject to stress by sliding fric-
tion." ... "The use as a sustained release therapeutic agent in the body
of ephedrine absorbed upon polystyrene sulfonic acid."
However, the Examiner has not shown that claims 1-5, 7, 8, and 20 on appeal
correspond to such use claims. As explained by Appellants, claims 1-5, 7, 8, and
20 are directed to an apparatus (a fuel cell system), rather than to a process. In
these apparatus claims, one of the components, i.e., a controller, is programmed to
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Appeal2015-000053
Application 12/711, 144
provide the function recited in claims 1-5, 7, 8, and 20. 5 As our reviewing court
stated in In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997):
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210
(CCPA 1971) ("[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent
claims.").
On this record, the Examiner has not identified any adequate basis or reasoning to
demonstrate that the functional limitation referred at page 3 of the Final Action
would have rendered the scope of the recited controller indefinite or rendered the
fuel cell system claims on appeal ineligible as apparatus claims under 35 U.S.C.
§ 101. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of presenting a
primafacie case ofunpatentability.").
Accordingly, we reverse the Examiner's§§ 112 and 101 rejections of claims
1-5, 7, 8, and 20 substantially for the reasons set forth at pages 6-9 of the Appeal
Brief.
35 U.S.C. § 102(b)
There is no dispute that Umayahara teaches a fuel cell system comprising a
fuel cell stack 2 having cathode and anode sides, an ejector 10 (the recited injector)
for injecting hydrogen gas into the anode side of the fuel cell stack 2, and a
gas/liquid separation device 12 (the recited water separation device) for receiving
an anode exhaust gas and water from the anodes side of the fuel cell stack 2, which
has a water holding reservoir 12a and a discharge (bleed/drain) valve 16. Compare
Final Act. 4 and Ans. 3 with App. Br. 9-12 and Reply Brief filed September 24,
5 Claim 20 is dependent on independent claim 9.
6
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Application 12/711, 144
2014 ("Reply Br.") 1--4. Nor is there any dispute that Umayahara teaches an
electronic control unit (ECU) 20 programmed to control the operation of the
ejector 10 and the discharge valve (bleed/drain valve) 16. Compare Final Act. 4-5
and Ans. 3--4 with App. Br. 9-12 and Reply Br. 1--4.
The disputed issue in this case is: Has the Examiner shown that
Umayahara' s controller is programmed to control
opening the bleed/drain valve in the water separation device and
determining when the bleed/drain valve transitions from draining
water to bleeding anode exhaust gas, wherein the controller uses the
bleeding of the anode exhaust gas through the bleed/drain valve and
the determination of when the bleed/drain valve transitions from
draining water to bleeding anode exhaust gas in a nitrogen
accumulation model such that the model determination of the amount
of nitrogen in the anode side of the stack has increased accuracy
as recited in claim 1. On this record, we answer this issue in the affirmative.
As correctly found by the Examiner, Umayahara teaches that ECU
(electronic control unit) 20 controls the opening of the discharge valve 16 (the
recited bleed/drain valve) in the gas/liquid separation unit 12 to drain the water
accumulated in the gas/liquid separation device 12 to the outside of the fuel cell
system and bleed or discharge the fuel gas (anode exhaust gas) containing nitrogen
in the anode circulation system to the outside of the fuel cell. Final Act. 4-5 and
Ans. 3--4, 12; see also Umayahara iii! 59 and 61. The Examiner has also correctly
found that Umayahara's controller (ECU) determines when its discharge valve 16
transitions from draining water to bleeding anode exhaust gas and uses the
bleeding of the anode exhaust gas through its discharge valve 16. Final Act. 4 and
Ans. 12; see also Umayahara iii! 63-65. In the words of Umayahara (iJiJ 63-65):
[0063] ... The fuel cell system includes the ECU 20 as a control
unit for controlling the discharge valve 16. A pressure sensor 22
which provided for the gas/liquid separation device 12 and which
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Application 12/711, 144
detects pressure in the gas/liquid separation device 12 is connected to
the ECU 20 on the input side ....
[0064] FIG. 2 is a timing chart showing a relationship between
an operation state of the discharge valve 16 and a change in pressure
in the gas/liquid separation device 12 ... . when the discharge valve 16
is opened (time tl 1) until when the pressure in the gas/liquid
separation device 12 starts to change (time t12) indicates that the
accumulated water is discharged from the gas/liquid separation device
12 during the time lag period .... The pressure in the gas/liquid
separation device 12 drastically changes after the water has been
completely discharged from the discharge passage 14 and
communication between the inside of the gas/liquid separation device
12 and the atmosphere is permitted.
[0065] When the water is completely discharged from the
discharge passage 14 and communication between the inside of the
gas/liquid separation device 12 and the atmosphere is permitted, the
pressure in the gas/liquid separation device 12 gradually decreases as
the fuel gas is discharged through the discharge passage 14 . ...
Further, the Examiner has found that Umayahara, at paragraphs 61 and 62, teaches
that:
[0061] In the fuel cell 2, the oxidizing gas on the cathode side
permeates through the electrolyte membrane and leaks to the anode
side due to an operation of the fuel cell 2. Therefore, in a system in
which fuel gas is circulated such as the fuel cell system according to
the embodiment, nitrogen contained in oxidizing gas is gradually
accumulated in a circulation system [(the recited anode circulation
system).] An increase in nitrogen concentration in the [anode]
circulation system reduces power generation performance of the fuel
cell 2. Accordingly, it is necessary to discharge nitrogen from the
[anode] circulation system to the outside of the fuel cell system along
with the fuel gas periodically or when a predetermined condition is
satisfied so as to decrease the nitrogen concentration in the [anode]
circulation system. In the fuel cell system, the fuel gas [containing
nitrogen concentration] is discharged from the [anode] circulation
system by using the discharge valve 16. The discharge valve 16 also
serves as an exhaust valve for discharging the fuel gas to the outside
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Application 12/711, 144
of the fuel cell system in addition to serving as a water discharge
valve as mentioned above.
[0062] When the discharge valve 16 is used as an exhaust
valve, it is necessary to accurately control the amount discharged fuel
gas .. .. Therefore, in the fuel cell system, in order to reliably and
accurately discharge the desired amount of fuel gas, the amount of
fuel gas discharged due to an opening operation of the discharge
valve 16 is estimated, and operation of the discharge valve 16 is
controlled based on the estimated amount of discharged fuel gas.
[(Emphasis added.)]
Implicit in these passages in Umayahara is that the nitrogen concentration in the
anode circulation system are determined (a nitrogen accumulation model) in order
to set a predetermined condition for discharging the accurate amounts of the
nitrogen gas and the fuel gas through the discharge valve 16. In re Preda, 401 F.
2d 825, 826 (CCP A 1968) (In determining whether a reference anticipates a
claimed subject matter, "it is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom."). This implication from Umayahara is
consistent with Appellants' admission at paragraphs 7 and 8 of the Specification
that:
It is known in the art to provide a bleed valve at the anode gas output
of the fuel cell stack to remove nitrogen from the anode side of the
stack.
Models are typically used to calculate the concentration of
nitrogen in the anode side of the fuel cell stack based on the operating
parameters of the fuel cell system, such as stack current density,
system pressure, etc. [(Emphasis added).]
Accordingly, we affirm the Examiner's decision rejecting claims 1, 7, and 8
under 35 U.S.C. § 102(b) as anticipated by the disclosure ofUmayahara.
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Application 12/711, 144
35 U.S.C. § 103(a)
Claim 2, which further limits claim 1 discussed supra, recites that the
controller is programmed to compare "the flow rate through the water separation
device and the flow rate through the injector to determine when the bleed/drain
valve transitions from draining water to bleeding the anode exhaust gas." Claim 9
also recites that a controller programmed ... comparing the flow rate through the
water separation device and the flow rate through the injector to determine when
the bleed/drain valve transitions from draining water to bleeding the anode exhaust
gas .... " Claims 3, 10, and 13, which are either dependent on claim 2 or 9, include
the same limitation recited in claim 2 or 9. In other words, they all require a
controller capable of comparing "the flow rate through the water separation device
and the flow rat through the injector to determine when the bleed/drain valve
transitions from draining water to bleeding the anode exhaust gas," without further
programming or modification. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d
1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v.
Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)); In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997).
In rejecting the above claims, the Examiner has found that "Umayahara
teaches that a pressure difference [in the gas/liquid separation device 12] may be
determined using two pressure sensors-one pressure sensor provided upstream of
the discharge valve [ 16] and one pressure sensor located downstream of the
discharge valve 16 (see paragraphs 69, 72[,] and 73)." Final Act. 5-6; Ans. 5.
The Examiner acknowledges that Umayahara does not teach "the upstream
pressure sensor being provided in the ejector 10" to determine the flow rate
through the ejector 10 or determine the pressure difference in the gas/liquid
separation device. Final Act. 5-6; Ans. 5.
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Application 12/711, 144
To account for this missing feature, the Examiner has found that "it is
understood by one of ordinary skill in the art that the upstream pressure sensor
could be provided in any number of locations, including in the ejector 10, without
altering the function of the discharge valve 16." Final Act. 5-6; Ans. 5. The
Examiner has not taken any official notice or proffered any evidence to support
this finding. Final Act. 5-6; Ans. 5; see also In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) ("A rejection based on section 103 clearly must rest on a factual
basis, and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art"). Nor does such finding demonstrate, much less
explain, why one of ordinary skill in the art would have been led to employ the
upstream pressure sensor taught by Umayahara in its ejector 10 for the purpose of
determining a pressure difference in the gas/liquid separation device 12-the
purpose for which Umayahara is employing its upstream pressure sensor.
Even if we were to assume that one of ordinary skill in the art would have
had an apparent reason to employ the upstream pressure sensor taught by
Umayahara in its ejector 10, the Examiner still has not shown that Umayahara
would have suggested a controller capable of comparing "the flow rate through the
water separation device and the flow rate through the injector to determine when
the bleed/drain valve transitions from draining water to bleeding the anode exhaust
gas," without further programming or modification, as recited in claims 2 and 9.
The fact that "one of ordinary skill in the art understands that pressure and flow
rate are related by the empirical laws and principles of fluid dynamics"6 does not
indicate that one of ordinary skill in the art would have been led to utilize a
controller programmed to compare the flow rates at the specific locations recited in
6 Again, the Examiner has not taken any official notice of this fact or proffered any
evidence to support this finding. Final Act. 5-6; Ans. 5.
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Application 12/711, 144
claims 2 and 9 for the purpose of determining when the bleed/drain valve
transitions from draining water to bleeding the anode exhaust gas.
Accordingly, we reverse the Examiner's decision rejecting claims 2, 3, 9, 10,
and 13 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Umayahara.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-5, 7, 8, and
20 under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112, (pre-AIA), second paragraph, is
REVERSED;
FURTHER 0 RD ERED that the decision of the Examiner to reject claims 1-
5, 7, 8, and 20 under 35 U.S.C. §101 is REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject claims 1,
7, and 8 under 35 U.S.C. §102(b) as anticipated by the disclosure ofUmayahara is
AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claims 2,
3, 9, 10, and 13 under 35 U.S.C. §103(a) as unpatentable over the disclosures of
Umayahara is REVERSED; and,
FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED-IN-PART
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