Ex Parte Hashim et al

Patent Trial and Appeal Board

May 21, 2018

13959242 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/959,242 08/05/2013
28395 7590 05/23/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Hasdi R. Hashim
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.
83360448 5039
EXAMINER
CONLEY,OIK
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HASDI R. HASHIM,
CRAIG WINFIELD PETERSON,
and RAYMOND ANTHONY SPITER!
Appeal2017-008179
Application 13/959,242 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY,
and JEFFREY R. SNAY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an
Examiner's decision finally rejecting claims 8-22. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real party in interest, and the Applicant, is said to be Ford Global
Technologies, LLC. Appeal Brief dated December 12, 2016 ("App. Br."), at
3.
Appeal2017-008179
Application 13/959,242
The Appellants' invention is directed to an apparatus for heating a
fuel cell stack in a cold start mode. Spec. i-f 4. A cold start operation is said
to be required at below 5°C. Spec. i-f 14.
According to the Appellants, the overall heating of a fuel cell stack
while in a cold start mode may take a considerable amount of time and may
not enable a driver to simply "driveaway" after cold starting the fuel cell
stack in the vehicle. Spec. i-f 15. In that regard, the Appellants disclose:
Some approaches have attempted to short the fuel cell stack in
order to heat the fuel cell stack and to reconnect the fuel cell
stack (e.g., remove the short condition) to a vehicle bus for
normal fuel cell stack operation after the fuel cell stack is
heated to a desired temperature. However, since the fuel cell
stack is shorted while in the cold start mode, vehicle driveaway
is not possible.
Spec. ,-r 15.
In a cold start mode, the disclosed invention is said to operate as
follows:
[T]he contactor 18 is open and the fuel cell stack 12 powers the
inductor 20, the diode 22, and the switching device 24. In this
case, the IGBT[2J 24 generates heat in response to the power
from the fuel cell stack 12. A tube (not shown) carrying
coolant is positioned about the IGBT 24 such that the coolant is
heated therefrom. The tube extends about the fuel stack 12
where the heated coolant is used to heat the fuel cell stack 12.
In addition, the IGBT 24 powers the loads 16. . . . In the cold
start mode, the IGBT 24 may provide enough power to power
at least portions of the load 16 to enable a driveaway condition
during fuel cell stack 12 cold start.
Spec. i-f 18; see also Fig. 1.
2 Insulated-gate bipolar transistor. Spec. i-f 16.
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Appeal2017-008179
Application 13/959,242
In particular, the Appellants disclose:
[T]he IGBT 24 provides enough power (or an adequate voltage
level) to activate the DC/DC converter 40 .... The boost
converter 14 [which includes IGBT 24] in conjunction with the
DC/DC converter 40 provides enough voltage (e.g., at least 125
V) and power to operate the loads 16 (including the traction
motor 34 and the air compressor 36) to perform driveway [sic]
in the cold start mode.
Spec. i-f 24; see also Fig. 2.
Independent claims 8 and 15 are reproduced below from the Claims
Appendix of the Appeal Brief. The limitations at issue are italicized.
8. An apparatus for heating a fuel cell stack in a cold start
mode, the apparatus comprising:
a controller coupled to a boost converter including a
power switch that is thermally coupled to a fuel cell stack, the
controller configured to:
receive a signal indicative of a temperature during
a vehicle startup;
compare the temperature to a predetermined
temperature value; and
activate the power switch if the temperature is
below the predetermined temperature value,
wherein the power switch provides heat to the fuel cell
stack and generates a voltage for powering a power circuit to
enable the vehicle to driveaway while the fuel cell stack
receives the heat.
App. Br., Claims Appendix 1.
15. An apparatus comprising:
a controller for being operably coupled to a boost
converter including a power switch, the controller configured
to:
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Appeal2017-008179
Application 13/959,242
receive a signal indicative of a temperature during
vehicle startup; and
activate the power switch if the temperature is
below a predetermined temperature value,
wherein the power switch heats a fuel cell stack and
generates a voltage for powering a power circuit to enable
vehicle driveaway in response to heating the fuel cell stack.
App. Br., Claims Appendix 2.
The Examiner maintains the following grounds of rejection on
appeal: 3
(1) claims 8-13, 15-19, 21, and 22 under 35 U.S.C. § 102(b) as
anticipated by Sakajo et al.; 4 and
(2) claims 14 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Sakajo.
B. DISCUSSION
1. Claims 8-14 and 21
The Examiner finds Sakajo discloses an apparatus comprising a
controller coupled to a boost converter (i.e., one of 13a-13d) that includes a
power switch (i.e., inverter 14a-14t) thermally coupled to a fuel cell stack.
The Examiner finds the power switch "provides heat to the fuel cell stack
and generates a voltage." Final Act. 4. 5 The Examiner does not find that
Sakajo discloses that the power switch "generates a voltage for powering a
power circuit to enable the vehicle to driveaway while the fuel cell stack
3 The Appellants recognize that the Board does not have jurisdiction over the
Examiner's objection to the drawings. App. Br. 4.
4 US 2006/0280977 Al, published December 14, 2006 ("Sakajo").
5 Final Office Action dated July 12, 2016.
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Appeal2017-008179
Application 13/959,242
receives the heat"6 as recited in claim 8. Nonetheless, the Examiner
concludes that the limitation is intended use and explains that "it has been
held that a recitation with respect to the manner in which a claimed
apparatus is intended to be employed does not differentiate the claimed
apparatus from a prior art apparatus satisfying the claimed structural
limitations." Final Act. 3 (citing Ex parte Mas ham, 2 USPQ2d 1647 (BP AI
1987)).
The Appellants argue that "[t]he claimed feature of the power switch
generating the voltage to enable vehicle driveaway while receiving heat at
the fuel cell stack from the power switch illustrates a concurrent interaction
that does not amount to intended use." App. Br. 7.
To the extent that claim 8 does not recite the electrical connections
and/or elements necessary to generate a voltage "for powering a power
circuit to enable the vehicle to driveaway while the fuel cell stack receives
the heat [provided by the power switch]," the claim limitation is functional.
That being said, an applicant "is free to recite features of an apparatus
either structurally or functionally." In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). The choice to define an element functionally, however,
carries with it a risk. Id. Where the Patent and Trademark Office has reason
to believe that a functional limitation may be an inherent characteristic of the
prior art, it possesses the authority to require the applicant to prove that the
prior art does not possess the characteristic in question. Id. (quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
6 App. Br., Claims Appendix 1 (emphasis added).
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Appeal2017-008179
Application 13/959,242
In this case, the Examiner finds:
[S]ince the prior art teaches "the power switch provides heat to
the fuel cell stack and generates a voltage" it is therefore
capable of "for power[ing] a power circuit" and "to enable the
vehicle to driveaway while the fuel cell stack receives heat"
since the Sakajo reference ... discloses that the system is
applied to "moveable bodies, equipped with a fuel cell system
which as an electrical power source, such as in automotive
vehicles (Paragraph 3)," the fuel cell system of [the] Sakajo
reference is capable of "powering a power circuit" and "to
enable the vehicle to driveaway while the fuel cell stack
receives heat."
Ans. 5---6. 7
Apart from finding that Sakajo discloses a power switch in an
automotive vehicle equipped with a fuel cell, the Examiner does not make
any additional factual findings to show that Sakajo's apparatus is capable of
generating a voltage "for powering a power circuit to enable the vehicle to
driveaway while the fuel cell stack receives heat"8 as recited in claim 8. See
Reply Br. 2 (disagreeing with the Examiner's assertion that "the
implementation disclosed in Sakajo is capable of providing a power circuit
that provides heat to the fuel cell stack and generates a voltage for powering
a power circuit to enable the vehicle to driveaway while the fuel cell stack
receives heat"). 9
On this record, there is no reason to believe that the functional
limitation at issue in claim 8 is an inherent characteristic of Sakajo. 10
7 Examiner's Answer dated March 8, 2017.
8 App. Br., Claims Appendix 1 (emphasis added).
9 Reply Brief dated May 8, 2017.
10 The Appellants contend that because Sakajo's switching elements 14a-14f
are turned "ON" to produce a short circuit condition, "it cannot follow that
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Application 13/959,242
Likewise, the Examiner does not make sufficient factual findings to support
a conclusion that modifying Sakajo's apparatus to function as recited in
claim 8 would have been obvious to one of ordinary skill in the art.
Therefore, the§ 102(b) rejection of claims 8-13 and 21 and the§ 103(a)
rejection of claim 14 are not sustained.
2. Claims 15-20 and 22
Claim 15 recites "[a Jn apparatus comprising: a controller for being
operably coupled to a boost converter including a power switch ... ,
wherein the power switch heats a fuel cell stack and generates a voltage for
powering a power circuit to enable vehicle driveaway in response to heating
the fuel cell stack." App. Br., Claims Appendix 2 (emphasis added).
As in the § 102(b) rejection of claim 8, the Examiner finds Sakajo
describes an apparatus comprising, inter alia, a power switch (i.e., inverter
14a-14t), wherein "the power switch provides heat to the fuel cell stack and
generates a voltage." Final Act. 4. The Examiner does not find that Sakajo
discloses that the power switch "generates a voltage for powering a power
circuit to enable vehicle driveaway in response to heating the fuel cell
stack" 11 as recited in claim 15. Nonetheless, the Examiner concludes that
the limitation is intended use. Final Act. 3.
the switching elements 14a-14f provide a voltage as the short circuit
condition is indicative of a zero-voltage condition." Reply Br. 3 (citing
Sakajo i-f 85). The Appellants also contend that "one skilled in the art would
recognize that a 'short-circuited' fuel cell prevents vehicle driveway [sic] as
expressly noted by Appellants in the application as originally filed." Reply
Br. 3 (quoting Spec. i-f 15).
11 App. Br., Claims Appendix 2 (emphasis added).
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Application 13/959,242
As discussed above, where the Patent and Trademark Office has
reason to believe that a functional limitation may be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the prior art does not possess the characteristic in
question. Schreiber, 128 F.3d at 1478 (quoting Swinehart, 439 F.2d at 213).
In this case, the Examiner does not make any factual findings specific
to the functional limitation at issue in claim 15 (i.e., the power switch
"generates a voltage for powering a power circuit to enable vehicle
driveaway in response to heating the fuel cell stack" (App. Br., Claims
Appendix 2)). Rather, the Examiner groups claim 15 together with claim
8, 12 despite the fact that the functional language at issue in claim 15 is
different from the functional language at issue in claim 8.
On this record, the Examiner has failed to show, in the first instance,
that Sakajo's apparatus is capable of generating a voltage "for powering a
power circuit to enable vehicle driveaway in response to heating the fuel cell
stack" 13 as recited in claim 15. See In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) (the examiner bears the initial burden of presenting a prima facie
case of unpatentability). Therefore, the § 102(b) rejection of claims 15-19
and 22 and the§ 103(a) rejection of claim 20 are not sustained.
C. DECISION
The Examiner's decision is reversed.
REVERSED
12 See, e.g., Final Act. 9 (stating that "[c]laim 15 is rejected and the same
arguments above are applicable").
13 App. Br., Claims Appendix 2 (emphasis added).
8