Ex Parte Jansen et al

Board of Patent Appeals and Interferences

May 14, 2009

11207570 (B.P.A.I. May. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AXEL JANSEN, JOSEF SONNTAG, and HUBERT URBAN
____________

Appeal 2009-1067
Application 11/207,570
Technology Center 2800
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Decided:1 May 15, 2009
____________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK,
and KARL D. EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R.§ 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1067
Application 11/207,570

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claim 1 (Br. 2).2 An oral hearing on this appeal was conducted
on April 23, 2009. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention is directed to a method for controlling switches
or contacts 4 and 5 between a fuel cell 1 and a load 8, such as a traction
motor in a vehicle. The contacts 4 and 5 electrically isolate the fuel cell
network from the load. A further network 21 has a lower voltage (e.g., 12
volts) than the isolated network fuel cell voltage (e.g., 200 to 450 volts).
Certain operating conditions that might harm personnel or the network are
monitored to prevent connection of the fuel cell to the load during start-up of
the fuel cell or otherwise. (Fig. 1; Spec. ¶¶ 0003, 0006, 0032, 0045, 0046,
0055).3
Claim 1, the sole claim on appeal, follows:
1. A method for controlling a switching connection
between i) electrical outputs of a fuel cell of a power supply
system in a device, and ii) an isolated electrical network which
supplies load elements with power from the fuel cell, wherein,
the power supply system includes a further network
whose voltage is lower than voltages of the isolated network,
and of a storage battery connected to the isolated network;
the switching connection has at least one switching
contact of a switching member connected to each output of the
fuel cell for connecting and disconnecting the electrically
isolated network to and from the outputs of the fuel cell, which

2 Appellants’ Brief (filed Jul. 20, 2007) (“Br.”) and the Examiner’s Answer
(mailed Nov. 15, 2007) (“Ans.”) detail the parties’ positions.
3 Reference is made to the Substitute Specification (filed Nov. 29, 2005).
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outputs are electrically isolated from conductive parts of the
device; and
the contacts which are connected to the outputs are part
of a first switching member or members connected to a
switching and control unit, which is supplied with power from
the further network, said method comprising:
sensors generating sensor signals indicative of an
occurrence of apparatus states for which supply of power from
the fuel cell to the electrically isolated network must be
precluded or interrupted for safety reasons;
the switching and control unit monitoring the sensors;
during starting of the fuel cell, the switching and control
unit releasing energy for closing contacts when the fuel cell has
reached operational readiness, provided that the switching and
control unit has not detected any sensor signal for precluding or
interrupting closure of the contacts of the first switching
member or members for safety reasons; and
upon detection of at least one sensor signal for precluding
or interrupting closure of contacts, the control and evaluation
unit blocking or interrupting power supply from the fuel cell to
the first switching member or members.

The Examiner relies on the following prior art references:

Spiers US 5,789,092 Aug. 4, 1998

Bitsche WO 99/46140 Sep. 16, 1999

Rannells, Jr. (“Rannells”) US 6,264,337 B1 Jul. 24, 2001
(filed Sep. 9, 1999)

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The Examiner rejected claim 1 under 35 U.S.C. § 103(a) based upon
Bitsche,4 Spiers, and Rannells.

ISSUE
Initially, in their Brief (Br. 8-9), Appellants nominally dispute the
Examiner’s determination (see Ans. 4) that Rannells, teaching a separate low
voltage network, is combinable with Bitsche. However, Appellants do not
clearly assert that Rannells is required to meet the low voltage limitation of
their claim. Appellants also do not respond to the Examiner’s reasonable
finding that Rannells low voltage control system “teaches a solution to a
particular problem with which the Appellant[s were] concerned” (Ans. 5).
Further, paragraph 0004 of Appellants’ disclosure (see infra FF 1, 2)
describes prior art duel voltage systems as known the art. Thus, Rannells’s
low voltage teachings as found by the Examiner are cumulative, and not
required to meet the low voltage element of the claim. In other words,
Bitsche’s system employs at least two voltage levels with lower voltages for
control purposes (see FF 4, FF 6 infra) and/or such duel systems were
known in prior art systems like that of Bitsche.
On the other hand, Appellants do dispute the Examiner’s finding (see
Ans. 4) that the references collectively teach “the desired contact
interruption during starting of the fuel cell” (Br. 9).
Therefore, the issue on appeal is:

4 Appellants and the Examiner (Ans. 3) refer to the US reference to Bitsche,
US 6,380,638 B1, i.e., “the U.S. counterpart” (Br. 7) to the WO 99/46140
reference. Accordingly, we also refer hereinafter to the U.S. reference to
Bitsche.
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Did Appellants demonstrate that the Examiner erred in finding that the
references collectively teach a “sensor signal for precluding or interrupting .
. . power supply from the fuel cell” to the load5 during start up of the fuel
cell as required by claim 1?

FINDINGS OF FACT (FF)
Appellants’ Disclosure
1. Appellants state, in their “Background and Summary of the
Invention” section of the disclosure, that “[m]obile power generating
systems (with fuel cells, in particular) often have two electrical networks.”
Appellants also state that drive motors required for starting and operation of
such fuel cells are powered from a rechargeable battery in a low-voltage
network. The systems have their low-voltage and high-voltage networks
isolated from each other through a DC/DC converter, through which the
battery can be recharged. (Spec. ¶ 0004 (emphasis added)). In the same
section, Appellants state: “The invention is therefore directed to a method
and apparatus . . . .” (Id. at ¶ 0006).
2. Appellants’ statements in paragraph 0004 of the disclosure
constitute admissions describing prior art fuel cell systems (see FF 1).
Bitsche
3. Bitsche discloses precluding connection between a fuel cell 1 and a
load 3, isolated therefrom via switch S6, until the fuel cell reaches full
voltage (col. 3, ll. 60-67; Table 1; Fig. 1).

5 The “load,” recited in the preamble, is in the “electrically isolated network”
- on the opposite side of the “switching member(s)” from the fuel cell.
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4. Bitsche teaches two voltage networks 5a and 5b, having different
voltages, isolated from one another by a switch S12 (col. 3, ll. 50-52; col. 4,
ll. 46-55). Different loads 3 (electric traction motor) and 4 (auxiliary loads)
(col. 2, ll. 34-36) connected to the two networks are isolated via switches S6,
S9, S11, and S12 from one another, and from the fuel cell 1 and/or the
battery energy store 2 (col. 2, ll. 42-43), based on information inputs
(regarding the operation state of the vehicle) to control unit 14, which
controls the switches based on the inputs (col. 2, l. 66 to col. 3, l. 13; col. 4,
ll. 46-55).
5. The information monitored in FF 4, via the control unit 14,
includes, inter alia, the voltage, load state, and temperature of the fuel cell 1,
and the voltage, charge state, and temperature of the energy store 2 (col. 3,
ll. 2-13; Table 1).
6. “The term electrical auxiliary loads 4 covers all electrical loads,
including a vehicle power supply, which are not used directly for driving the
vehicle” (col. 2, ll. 48-50). Bitsche also teaches that a DC/DC converter 15
allows the fuel cell 1 and energy store 2 to charge each other “irrespective of
the voltage” of either “because the voltages of the two circuits 5a, 5b can be
tuned to one another by the DC/DC converter 15” (col. 4, ll. 59-67; Fig. 2).
Spiers
7. Spiers teaches disconnecting an additional load 17 if the
temperature of a fuel cell reaches a maximum limit (Abstract). The
additional load, a resistor, is used to heat the fuel cell to avoid freezing or
excessive cooling of the cell so that it will operate properly and provide
electricity. The resistor is also set to prevent excessive current flow from the
fuel cell. (Col. 1, ll. 19-37; col. 3, ll. 6-13).
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PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). “On appeal to the Board, an applicant
can overcome a rejection by showing insufficient evidence of prima facie
obviousness . . . .” Kahn, 441 F.3d at 985-86 (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998).
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. .
. . [A] court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (citations omitted).
In “difficult . . . cases . . . the claimed subject matter may involve more than
the . . . mere application of a known technique to a piece of prior art ready
for the improvement.” Id.
The test of whether a reference is from a nonanalogous art is first,
whether it is within the field of the inventor's endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
A reference is reasonably pertinent if, even though it may be in a different
field of endeavor, it is one which, because of the matter with which it deals,
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logically would have commended itself to an inventor’s attention in
considering his problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).

ANALYSIS
The sole issue on appeal pertains to Appellants’ argument that the
references do not collectively teach “the desired contact interruption during
starting of the fuel cell” (Br. 9). This argument is not persuasive for the
following reasons.
As the Examiner found (Ans. 3-4), Bitsche’s system precludes
connection of the fuel cell 1 to a high voltage electric motor load 4 until the
fuel cell reaches its full monitored voltage (FF 3-5). Bitsche also teaches
monitoring the temperature of the fuel cell and generally controlling the fuel
cell connection based on various operating states (FF 4, 5), as the Examiner
also found (Ans. 5).
Appellants allege that the reference to Spiers is unrelated to
Appellants’ invention (see Br. 8-9), which, as the Examiner found (Ans. 5),
teaches disconnecting a fuel cell from an auxiliary load resistor if the
monitored temperature becomes too great (FF 7). Spiers also generally
teaches controlling a fuel cell to maintain its temperature between low and
high extremes (FF 7). Therefore, Spiers is directed to one of the problems
Appellants address – that of providing a functional and safe fuel cell to
provide electricity. While Appellants focus on the freeze prevention
teaching of Spiers (Br. 8), such a focus does not demonstrate error in the
Examiner’s finding with respect to the teaching of overheating prevention.
As such, the second prong of the test set forth in Wood is satisfied, and
therefore, Spiers is analogous art.
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Combining Spiers in the manner set forth by the Examiner (Ans. 5)
adds the monitoring of temperature and subsequent fuel cell/load
disconnection (FF 7) to Bitsche’s specific teachings of monitoring voltage
during start-up to prevent a high voltage fuel cell/load connection (FF 3; see
also FF 6) and Bitsche’s general teachings of monitoring temperature (FF 5).
Bitsche nowhere excludes the general monitoring of temperature from the
start-up process.
In any case, Spiers merely amplifies Bitsche’s teachings. Appellants
do not clearly indicate which claim element would be missing in the absence
of Spiers’s teaching. Appellants argue that Bitsche “teaches nothing at all
about monitored sensors” (Br. 8), which presumably relates to the
prevention of connecting a fuel cell to a load “upon detection of at least one
sensor signal” – as claim 1 recites. However, this element is at least
suggested by Bitsche’s voltage monitoring (i.e., requiring a voltage sensor)
during startup and startup prevention until full charge (FF 3). (Compare
Ans. 4-5).
While Appellants also generally argue that Bitsche does not address
“safety” (Br. 8), such an argument does not demonstrate any error as
required to meet Appellants’ burden on appeal. While the claim recites “for
safety reasons” at lines 18 and 24, the reason recited for performing a certain
step does not create a patentable distinction. That is, the description of the
purpose for the interruption recited in the claim constitutes a mere intended
result because the method performs in the same manner regardless of the
reason recited as to why it so performs.
Moreover, Bitsche’s temperature monitoring implies safety, as does
the high and low extreme temperature monitoring of Spiers. Common
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knowledge suggests that a hot fuel cell device, or any hot device, especially
an electrical device, can create unsafe conditions. Bitsche also monitors
load conditions. Common sense also indicates that high current loads also
create cause unsafe conditions. (See FF 3-5, 7). Spiers teaches
disconnecting the very load that causes high current and heat, and teaches
sizing a resistor to preclude high currents (FF 7). Hence, the references
collectively suggest disconnecting for safety (i.e., high temperature, current)
reasons during start-up (or at any time).
The combination of such familiar techniques amounts to no “more
than the predictable use of prior art elements according to their established
functions.” See KSR, 550 U.S. at 417. Appellants have not presented
evidence to show that monitoring for safety reasons to prevent a power
supply connection to a load during start-up would have been “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Accordingly, for the reasons explained supra, we will sustain the
Examiner’s rejection of claim 1.

CONCLUSION
Appellants did not demonstrate that the Examiner erred in finding that
the references collectively teach a “sensor signal for precluding or
interrupting . . . power supply from the fuel cell” to the load during start up
of the fuel cell.

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DECISION
We affirm the Examiner’s decision rejecting claim 1.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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