Ex Parte Ishikawa

Patent Trial and Appeal Board

Mar 24, 2016

12742583 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121742,583 05/12/2010 Norimasa Ishikawa
23838 7590 03/28/2016
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
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.
140061177 6927
EXAMINER
GILLIAM, BARBARA LEE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIMASA ISHIKAWA 1
Appeal2014-006917
Application 12/742,583
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained final rejections of claims 1-5. We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant's claimed invention is directed to a fuel cell system
comprising, inter alia, an on-off valve that regulates the state of fuel gas in a
1 According to Appellant, the Real Party in Interest is Toyota Jidosha
Kabushiki Kaisha. App. Br. 2.
Appeal2014-006917
Application 12/742,583
fuel supply flow path, a pressure sensor that detects a pressure value of the
fuel gas on an upstream side of the on-off valve, and a pressure correcting
device programmed to correct the pressure value detected by the pressure
sensor. Spec. Abstract.
Claim 1 is illustrative:
1. A fuel cell system comprising:
a fuel cell;
a fuel supply flow path for supplying a fuel gas supplied
from a fuel supply source to the fuel cell;
an on-off valve which regulates the state of a gas on an
upstream side of the fuel supply flow path and supplies the gas
to a downstream side;
a pressure sensor which detects a pressure value of the
fuel gas on the upstream side of the on-off valve of the fuel
supply flow path;
a control portion which controls the on-off valve on the
basis of the pressure value detected by the pressure sensor; and
a pressure correcting device programmed to correct the
pressure value detected by the pressure sensor on the basis of at
least one of the power generation amount in the fuel cell, a fuel
consumption amount in the fuel cell, the drive cycle of the on-
off valve, and open valve command time of the on-off valve.
REJECTIONS
The Examiner maintains the following grounds of rejection:
Claims 1, 2, and 5 stand rejected under 35 U.S.C. §102(b) as
anticipated by Ishikawa et al. (US 2009/0130510 Al, published May 21,
2009) ("Ishikawa").2
2 Appellant does not contest the Examiner's reliance on the published U.S.
national stage application of WO 2007/069554 Al (US 2009/0130510 Al,
published May 21, 2009) as an English language translation. Final Office
Action ("Final Act."), 2; Appeal Brief ("App. Br."), generally. Accordingly,
2
Appeal2014-006917
Application 12/742,583
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as obvious
over Ishikawa in view ofKuriiwa et al. (US 2002/0100518 Al, published
August 1, 2002) ("Kuriiwa").
Claims 1-5 stand rejected for non-statutory, obviousness-type double
patenting over claims 1-14 of U.S. patent no. 8,071,249 B2.
Claims 1-5 stand provisionally rejected for non-statutory,
obviousness-type double patenting over claims 1-16 of U.S. patent
application no. 12/083,981.
Claims 1-5 stand provisionally rejected for non-statutory,
obviousness-type double patenting over claims 2-8 of U.S. patent
application no. 12/085,167.
DISCUSSION
Having carefully reviewed the Examiner's anticipation and
obviousness rejections in light of arguments advanced by Appellant in the
Reply and Appeal Briefa, we are not persuaded that the Examiner erred
reversibly in finding that claims 1, 2, and 5 are unpatentable for anticipation
and in concluding that claims 3 and 4 are unpatentable for obviousness.
The Examiner's rejections of claims 1-5 for obviousness-type double
patenting stand uncontested.
We add the following for emphasis. 3
citations to Ishikawa in this document refer to the U.S. national stage
application.
3 We refer to the Final Office Action (mailed May 22, 2013), the Appeal
Brief (filed December 5, 2013), the Examiner's Answer (mailed April 2,
2014), and the Reply Brief (filed May 27, 2014).
3
Appeal2014-006917
Application 12/742,583
Rejection of Claims l, 2, and 5 as Anticipated by Ishikawa
Appellant argues claims 1, 2, and 5 as a group on the basis of claim 1,
to which we limit our discussion. App. Br. 5-10.
To prevail in an appeal to this Board, an Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See 37
C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make
a prima facie case, it has long been the Board's practice to require an
appellant to identify the alleged error in the examiner's rejections); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting Shinseki v.
Sanders, 556 U.S. 396, 409 (2009) ("the burden of showing that the error is
harmful normally falls upon the party attacking the agency's
determination.").
The Examiner finds that Ishikawa discloses a fuel cell system
comprising a fuel cell 10, a fuel supply flow path 31 for supplying a fuel gas
from a fuel supply source 30 to the fuel cell 10; an on-off valve 35 that
regulates the state of the fuel gas on an upstream side of the fuel supply flow
path 31, and supplies the gas to a downstream side of the path 31; a pressure
sensor 41 that detects a pressure value of the fuel gas on the upstream side of
the on-off valve 35; and a control portion 4 that controls the on-off valve 35
on the basis of the pressure value detected by the pressure sensor 41. Final
Act. 2 citing Ishikawa i-fi-1 9, 4 7; Fig. 1. The Examiner finds that Ishikawa
discloses that the controller 4 corrects the pressure value detected by the
pressure sensor 41 on the basis of the power (current) generated by the fuel
cell 13. Final Act. 2 citing Ishikawa i-fi-19, 45, 53. Specifically, the
4
Appeal2014-006917
Application 12/742,583
Examiner finds that Ishikawa discloses that the controller 4 functions to
adjust the flow rate of the on-off valve (injector) 35 in accordance with an
operation state of the fuel cell 10 by calculating a drive cycle and drive
frequency of the on-off valve 35 based on the current produced by the fuel
cell 13. Final Act. 2 citing Ishikawa i-fi-16, 50.
Appellant argues that Ishikawa does not disclose correcting the
pressure value detected by the pressure sensor 41 as recited in claim 1, but
instead describes controlling the on-off valve 35 based on the pressure value
detected by the pressure sensor 41. App. Br. 5, 9-10.
Ishikawa' s fuel cell system, however, appears to have the same
structure, and appears to operate in the same way, as Appellant's fuel cell
system. Figure 1 of Ishikawa, which depicts Ishikawa's fuel cell system, is
identical to Figure 1 of Appellant's disclosure, and shows a control device 4
in communication with an on-off valve (injector) 35, and also depicts a
pressure sensor 41 upstream of the on-off valve 35. As found by the
Examiner and not disputed by Appellant, Ishikawa discloses that the control
device 4 sets the drive cycle of the on-off valve (injector) 35 in accordance
with an operation state of the fuel cell. Compare Final Act. 3 citing
Ishikawa i150 with App. Br. 5-10. Specifically, Ishikawa discloses that the
control device 4 "controls the gas injection time and the gas injection timing
of the injector 35 to adjust the flow rate and pressure of the hydrogen gas
supplied to the fuel cell 10" (Ishikawa i154) based on numerous parameters
that are calculated and measured in the fuel cell system, including the power
generated by the fuel cell (the current measured by the current sensor 13)
and the pressure detected by the primary (upstream) pressure sensor 41.
Ishikawa i-fi-1 45-54.
5
Appeal2014-006917
Application 12/742,583
Although paragraphs 30-32, and 46 of Appellant's Specification, and
Appellant's Figures 3, 4, 6, and 7, relate to correcting the pressure value of
the hydrogen gas on the upstream side of the on-off valve, we do not find
anything in this disclosure defining or describing with particularity the
meaning of "correct[ing] the pressure value detected by the pressure sensor
on the basis of at least one of the power generation amount in the fuel cell,"
as recited in claim 1. However, Appellant's Specification does indicate that
"the controller 4 functions as the pressure correcting means in the present
invention." Spec. i-f 30. Therefore, the means by which the controller 4
corrects the pressure value detected by the pressure sensor 41 on the basis
of, for example, the power generation amount in the fuel cell 13, is not
limited to any particular process, and could encompass setting the drive
cycle and drive frequency of the on-off valve (injector) 35, as found by the
Examiner. Final Act. 3. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255,
1259---60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir.
1997). "While the Board must give the terms their broadest reasonable
construction, the construction cannot be divorced from the specification and
the record evidence." In re NTP, Inc., 654 F3d 1279, 1288 (Fed. Cir. 2011)
(citing In re Suitco Surface, 603 F.3d at 1259); In re Baker Hughes, Inc., 215
F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that
is "beyond that which was reasonable in light of the totality of the written
description" in the Specification).
Accordingly, we find that Appellant has not identified reversible error
in the Examiner's finding that one of ordinary skill in the art reasonably
would have inferred that Ishikawa's fuel cell system, which has the same
structure as the fuel cell system recited in claim 1 ; monitors the same
6
Appeal2014-006917
Application 12/742,583
parameters as recited in claim 1, including monitoring the pressure value of
the fuel gas on the upstream side of the on-off valve, and monitoring the
power generation amount in the fuel cell; and controls the on-off valve on
the basis of the pressure detected by the pressure sensor 41 as recited in
claim 1, would also function to correct the pressure value detected by the
pressure sensor 41 based on the power generation amount in the fuel cell, as
recited in claim 1. In re Preda, 401 F. 2d 825, 826 (CCP A 1968) ("[I]t 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.")
Appellant's argument does not, on this record, establish that
Ishikawa's control device 4 would not function to correct the pressure value
detected by the pressure sensor 41 based on the power generation amount in
the fuel cell, as recited in claim 1. App. Br. 5-10. Nor does Appellant
explain with particularity how the claimed fuel cell system that corrects the
pressure value detected by the pressure sensor 41 differs from Ishikawa's
system. Id. As Ishikawa and the present application are both assigned to the
same assignee, Appellant is in the best position to identify any patentable
distinction between the claimed invention and Ishikawa's system cited by
the Examiner, but we find that Appellant has failed to do so. Moreover,
nothing in Appellant's argument identifies or explains any error in the
Examiner's specific findings directed to Ishikawa's disclosure of the claimed
fuel cell system, as required by 37 C.F.R. § 41.37(c)(l)(iv) (2012). App. Br.
5-10. We accordingly are unpersuaded that the Examiner erred reversibly in
finding that Ishikawa's fuel cell system, having the same structure as the
claimed system, also functions in the manner claimed. It follows, therefore,
7
Appeal2014-006917
Application 12/742,583
we sustain the Examiner's rejection of claims 1, 2, and 5 as anticipated by
Ishikawa.
Rejection of Claims 3 and 4 as Obvious over Ishikawa and Kuriiwa
Appellant relies on contentions that the Examiner erred in rejecting
the base claim, independent claim 1, from which claims 3 and 4 depend.
App. Br. 4. Because we are unpersuaded of reversible error in the
Examiner's rejection of claim 1, Appellant's reliance on the argument as to
anticipation of claim 1 is without merit. Accordingly, we sustain the
rejection of claims 3, and 4 under 35 U.S.C. § 103(a).
Obviousness-type Double Patenting Rejections
Appellant does not contest the Examiner's rejection of claims 1-5 for
non-statutory obviousness-type double patenting over claims 1-14 of U.S.
patent no. 8,071,249 B2, and the Examiners provisional rejections of claims
1-5 for non-statutory obviousness-type double patenting over claims 1-16 of
U.S. patent application no. 12/083,981, and over claims 2-8 of U.S. patent
application no. 12/085,167. App. Br., generally. Accordingly, we
summarily sustain these rejections without comment. 37 C.F.R.
§ 41.37(c)(l)(iv); see also Manual of Patent Examining Procedure (MPEP)
§ 1205.02 (9th ed. Mar. 2014) ("If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner's answer.").
8
Appeal2014-006917
Application 12/742,583
DECISION
The Examiner's rejection of claims 1, 2, and 5 under 35 U.S.C.
§ 102(b), the Examiner's rejection of claims 3 and 4 under 35 U.S.C.
§ 103(a), the Examiner's provisional rejections of claims 1-5 for non-
statutory, obviousness-type double patenting, and the Examiner's rejection
of claims 1-5 for non-statutory, obviousness-type double patenting, are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
9