Ex Parte Kearl et al

Board of Patent Appeals and Interferences

Jul 17, 2008

10222417 (B.P.A.I. Jul. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL A. KEARL, TED W. BARNES,
DAVID CHAMPION, and GREGORY HERMAN
____________

Appeal 2008-3332
Application 10/222,417
Technology Center 1700
____________

Decided: July 17, 2008
____________

Before BRADLEY R. GARRIS, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-9, 23-32, 34-40, and 45-52. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2008-3332
Application 10/222,417

I. BACKGROUND
The invention relates to a fuel cell system or apparatus including fuel
cells or fuel cell blocks which can be electrically reconfigured by a control
module. (Spec. 2, ¶ 8). Fuel cells or fuel cell blocks may be reconfigured,
for example, to maximize efficiency, to provide for multiple voltages and
currents to be supplied simultaneously to electrical appliances, or to rotate
usage among individual fuel cells or fuel cell blocks to add longevity and
reliability to the system. (Spec. 5, ¶ 29; 7, ¶ 34). Another aspect of the
invention includes positioning the cells that operate most often centrally
such that outer, non-operational cells or blocks can utilize heat from the
centrally located cells or blocks to quickly bring those cells online. (Spec.
12-13, ¶ 45). Claims 1, 5, 7, 8, 25 and 35 are illustrative of the subject
matter on appeal:
1. A fuel cell apparatus comprising fuel cell blocks electrically re-
configurable by a control module, wherein said control module re-configures
said fuel cell blocks by selectively connecting said fuel cell blocks with any
of series, parallel or a combination of series and parallel connections so as to
maximize apparatus efficiency, said control module being configured and
able to selectively make series, parallel and a combination of series and
parallel connections between said fuel cell blocks.

5. A fuel cell apparatus comprising fuel cell blocks electrically re-
configurable by a control module, wherein said control module re-configures
said fuel cell blocks by selectively connecting said fuel cell blocks in series,
in parallel or in a combination of series and parallel so as to maximize
apparatus efficiency,
wherein said control module is programmed to reconfigure said fuel
blocks to simultaneously provide multiple electrical outputs comprising
different currents and/or different voltages.

7. The apparatus of claim 6, wherein said control module is
programmed to accept feedback from parasitic components of said fuel cell
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apparatus as input for calculating an optimal reconfiguration of said fuel cell
blocks.

8. The apparatus of claim 1, wherein said control module is
programmed to reconfigure said fuel cell blocks at regular intervals to even
out usage of said fuel cell blocks

25. A fuel cell control module comprising circuitry programmed to re-
configure connections among a plurality of fuel cells to selectively connect
the plurality of fuel cells in series, parallel, or a combination of series and
parallel in response to load conditions;
wherein one or more of said plurality of fuel cells that is in active
operation most often is placed central to said plurality of fuel cells to provide
heat to less active fuel cells of said plurality of fuel cells.

34. A method of varying the power output of a fuel cell apparatus
comprising:
arranging fuel cell blocks in an automatically re-configurable
structure; and
selectively re-configuring said fuel cell blocks by selectively
connecting the multiple fuel cell blocks with any of series, parallel, or a
combination of series and parallel connections to load conditions.

35. The method of claim 34, further comprising simultaneously
providing multiple voltages to a load device by re-configuring said fuel cell
blocks.

The Examiner relies on the following prior art references to show
unpatentability:
Marsh US 2002/0045082 A1 Apr. 18, 2002
Foster US 6,500,577 B2 Dec. 31, 2002
Dickman US 6,835,481 B2 Dec. 28, 2004
Schmidt US 6,858,335 B2 Feb. 22, 2005

The Examiner maintains the following rejections:
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1. Claims 1-4, 6-9, 23-26, 29-32, 34-40, and 50-52 rejected under 35
U.S.C. § 103(a) as obvious over Dickman et al. (“Dickman”) in view of
Marsh;
2. Claims 5, 25, and 45-49 rejected under 35 U.S.C. § 103(a) as
obvious over Dickman in view of Marsh and further in view of Foster; and
3. Claims 27 and 28 rejected under 35 U.S.C. § 103(a) as obvious
over Dickman in view of Marsh and further in view of Schmidt et al.
(“Schmidt”).
We discuss the claims under the following subheadings:
Rejection based on Dickman in view of Marsh
A. Claims 1, 23, 29, 34, and 38;
B. Claims 2-3, 24, 26, 30-32, 36-37, and 39-40;
C. Claims 4, 6, and 9;
D. Claim 7;
E. Claim 8;
F. Claims 25 and 50-52;
G. Claims 51 and 35;
Rejection based on Dickman in view of Marsh and Foster
H. Claims 25, 45, and 46;
I. Claims 47-49; and
Rejection based on Dickman in view of Marsh and Schmidt
J. Claims 27 and 28.

1 Even though claim 5 was finally rejected further in view of Foster,
Appellants and Examiner have limited the issue regarding claim 5 to those
coincident with claims 35 and 50, which stand rejected based only on
Dickman in view of Marsh. (See App. Br. 15; Ans. 11; Reply Br. 9-10).
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Our rationale for grouping the claims under these particular
subheadings are discussed below under each separate subheading.
II. DISCUSSION
Rejection based on Dickman in view of Marsh
A. Claims 1, 23, 29, 34, and 38
Appellants present separate arguments for claims 1, 23, 29, 34, and 38
as a group. Therefore, we select claim 1 to represent the issues on appeal for
this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that “Dickman teaches a fuel cell system in which
fuel cell stacks may be electrically hard-wired in any desired configuration”
but “does not ever teach or suggest that this configuration of the fuel cell
stacks, once made, can be changed or ‘selectively’ re-configured to
‘maximize apparatus efficiency’ as clamed.” (App. Br. 8; Reply Br. 2-3).
Appellants argue that the Examiner erred in finding that “Dickman teaches
that the ‘fuel cell blocks are electrically reconfigurable to be in series, in
parallel or in a combination of series and parallel.’” (App. Br. 8-9; Reply Br.
3). Appellants argue that the only function of the control system taught by
Dickman “is to turn individual fuel cell stacks on or off” or “activating or
deactivating the cells.” (App. Br. 9; Reply Br. 2-3). Further, Appellants
argue that “Marsh only considers the possibilities of connecting the cells in
series or in parallel” and not a combination of series and parallel. (App. Br.
9-10).
The Examiner responds that in Dickman “there are switches between
the stacks to control which fuel cells are on- or off-line, depending on load
demand.” (Ans. 7). The Examiner argues that “it is apparent to one having
ordinary skill in the art that the configuration of the stacks may be changed.”
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(Ans. 7). According to the Examiner, the fuel cell stacks could be wired in
both series and parallel, and switching off the parallel switches would leave
reconfigured fuel cell stacks in series. (Ans. 8).
The issue on appeal arising from the contentions of Appellants and the
Examiner is: have Appellants demonstrated that the Examiner reversibly
erred in determining that Dickman and Marsh would have suggested to one
of ordinary skill in the art a control module that can reconfigure the fuel cell
blocks by selectively connecting the fuel cell blocks with any of series,
parallel or a combination of series and parallel connections as recited in
claim 1? We answer this question in the negative.
The evidence of record supports the following Findings of Facts (FF):
1. The Specification recites that “the fuel cell supply (400) may
include at least one tap [412] between each of the fuel cell blocks [402]” and
that “[e]ach of the taps [412] may be electrically tied to at least one switch
[422] to selectively connect or disconnect one or more of the fuel cell stacks
[402] to one another and/or to a voltage converter.” (Spec. 8, ¶ 36; Figure
5A-5C).
2. The Specification recites
The fuel cell supply (602) preferably includes a
number of fuel cells or fuel cell stacks that are
interconnected by switches that can be opened or
closed to create different configurations of fuel
cells and fuel cell stacks connected to the rest of
the system (600). The control module may be
programmed to reconfigure the fuel cell supply
(602) by selectively and/or progressively
connecting one or more fuel cells or fuel cell
stacks of the fuel cell supply (602) to the DC-to-
DC converter (604) or to one another to meet the
load demands and operate at peak performance.
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The connection of fuel cells or fuel cell stacks may
be done in series, parallel, or a combination of
series and parallel according to the calculations
made by the control module (606). When the
control module (606) receives the various inputs
and calculates an optimal fuel cell stack
configuration to meet the load demands, the
control module may cause various switches in the
fuel cell supply (602) to open or close to effect the
reconfiguration of the fuel cell supply (602) and
the resulting output of the fuel cell supply (602) to
the rest of the system (600).
(Spec. 7, ¶ 34; Figures 5A-5C).
3. Alternatively, the Specification states that “[a]ccording to the
embodiment of FIG. 7, the fuel cell power system (700) may include the
multiple fuel cell blocks [402] each electrically connected to a switch
network (702).” (Spec. 13, ¶ 46; Figure 7).
4. The Specification also states that “[a]ccording to the
embodiment of FIG. 8, there may be multiple nodes (401) for
interconnecting the fuel cell blocks [402] in any number of configurations.
Each of the nodes (401) represents a possible electrical connection point that
may include a switch (FIGs. 5B and 5C) that can be selectively opened and
closed to electrically reconfigure the fuel cell blocks [402].” (Spec. 13, ¶ 47;
Figure 8).
5. Dickman teaches
contactors or other suitable devices 100 that may
be actuated to electrically isolate one or more of
the fuel cell stacks 76 in assembly 77 from the
applied load. The contactors may be actuated
either manually, such as to remove a stack for
servicing, automatically, such as upon exceeding
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certain operating parameters or load conditions,
and/or by a control system.
(Dickman, col. 10, ll. 10-16).
6. Dickman teaches that the control system 120 including the
controller 122 can “selectively isolate a stack from the applied load by
sending a control signal to the corresponding contactor 100,” for example, if
“operating outside of acceptable operating parameters.” (Dickman, col. 11,
ll. 46-52; Figure 10).
7. Dickman teaches automatically taking stacks off-line when load
demands are reduced, for example, late at night, for increase efficiency and
life of stacks. (Dickman, col. 12, ll. 14-21).
8. Dickman teaches that “[t]he fuel cell stacks may be electrically
connected in series, parallel or a combination of series and parallel to meet
the output voltage requirements of system 60.” (Dickman, col. 8, ll. 61-63).
9. Marsh teaches a microprocessor monitoring changes in the load
such that “the processor 88 can adjust the system configuration to
achieve/maintain the required performance.” (Marsh 3, ¶ ¶ 51-52).
10. Figure 9 of Marsh clearly illustrates cells wired in a
combination of parallel and series using switches allowing “the individual
cells or groups of cells (power chip 15) to be wired in various
configurations, i.e., parallel or series.” (Marsh 4, ¶¶ 56 and 57; Figure 9).
“[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
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applicant's specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
We look first to Appellants’ Specification to determine what is meant
by the phrase “re-configures said fuel cell blocks by selectively connecting
said fuel cell blocks with any of series, parallel or a combination of series
and parallel connections” of claim 1.2 According to Appellants’
Specification, a control module may “reconfigure” fuel cell blocks by
causing various switches to open to disconnect or to close to connect certain
fuel cells to one another or to a voltage converter. (FF 1-4). Thus, we note
that Appellants’ Specification provides no other examples of reconfiguring
fuel cell blocks other than opening and closing switches to change the
electrical arrangement of pre-wired fuel cell blocks. (FF 1-4).
A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the pertinent art. 35 U.S.C. § 103(a)(2000); Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 13-14 (1966). Factors to consider in determining
obviousness include “‘the scope and content of the prior art,’ the
‘differences between the prior art and the claims at issue,’ and ‘the level of
ordinary skill in the pertinent art.’” Dann v. Johnston, 425 U.S. 219, 226
(1976) (quoting Graham, 383 U.S. at 17). “On appeal to the Board, an

2 We note that claim 1 is an apparatus claim and, therefore, is directed to a
structure. We construe the operational limitations of claim 1 as requiring
that the structural components are capable of operating as claimed. If the
prior art structure possesses all the claimed characteristics including the
capability of performing the claimed function, then there is a prima facie
case of unpatentability. In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971).
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applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86,
(Fed. Cir. 2006) (emphasis omitted). We find that the Appellants have
neither shown that the evidence was insufficient for a prima facie case of
obviousness nor sufficiently rebutted the prima facie case of obviousness.
Dickman clearly teaches an apparatus including fuel cell blocks
electrically connected through contactors 100 (switches). (FF 5). Dickman
also teaches that a controller 122 can selectively open contactors 100 to
disconnect, or close contactors 100 to connect, the fuel cell blocks as
needed, for example, to meet the load demands and operate at peak
performance. (FF 6-8). The electrical connections may be series, parallel or
a combination of series and parallel connections (FF 8). Thus, we determine
that it would have been obvious to one of ordinary skill in the art having the
teachings of Dickman to electrically connect fuel cell blocks together using
contactors 100 in such an arrangement that merely connecting or
disconnecting the fuel cells via the connectors 100 would cause the cell
blocks to be reconfigured to any of series, parallel or combination of series
and parallel arrangements to meet the load demands and operate at peak
performance. We determine that, based on the teachings of Dickman, it
would have been within the skill of one of ordinary skill in the art to provide
such an arrangement of fuel cells, connectors 100 and controller 122 with a
reasonable expectation of success with mere routine experimentation. See
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007)(“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).
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Marsh provides further evidence that the claimed apparatus
configuration would have been within the capabilities of one of ordinary
skill in the art. Figure 9 of Marsh illustrates one particular arrangement of
switches 97A, 97B and 97C and fuel cell blocks 12 in a combination of
series and parallel, whereby merely opening and closing the switches would
change whether the fuel cells were connected in series, parallel or a
combination of series and parallel. (FF 10). Since Marsh also teaches
adjusting the system configuration to achieve/maintain performance (FF 9),
one of ordinary skill in the art would have utilized the arrangement taught by
Figure 9 of Marsh in the system of fuel cells and connectors taught by
Dickman to meet the load demands and operate at peak performance.
We determine that the Examiner has not reversibly erred in
determining that Dickman or the combination of Dickman and Marsh would
have suggested to one of ordinary skill in the art a control module that can
reconfigure the fuel cell blocks by selectively connecting the fuel cell blocks
with any of series, parallel, or a combination of series and parallel
connections as recited in claim 1. Accordingly, we sustain the Examiner's
rejection of claims 1, 23, 29, 34, and 38 under 35 U.S.C. § 103(a).
B. Claims 2-3, 24, 26, 30-32, 36-37, and 39-40
Appellants have provided no separate arguments directed to the merits
of claims 2-3, 24, 26, 30-32, 36-37, and 39-40. Claims 2-3 depend from
independent claim 1, claims 24 and 26 depend from independent claim 23,
claims 30-32 depend from independent claim 29, claims 36-37 depend from
independent claim 34, and claims 39-40 depend from independent claim 38.
See In re Wood, 582 F.2d 638, 642 (CCPA 1978)(holding that it is
appropriate for the Board to consider the appealed dependant claims to stand
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or fall with the independent claim where Appellants fail to argue separately
the patentability of dependent claims). Thus, we sustain the rejection of
claims 2-3, 24, 26, 30-32, 36-37, and 39-40 for the same reasons discussed
above for claims 1, 23, 29, 34, and 38.
C. Claims 4, 6, and 9
Appellants present separate arguments for claim 4. (App. Br. 11).
Appellants argue that “Dickman does not teach or suggest any
reconfiguration of the fuel cell blocks, let alone in response to changes in
load demand.” (App. Br. 11; Reply Br. 5-6). The Examiner responds that
“[t]he reconfiguration argument was addressed above, and the
reconfiguration in response to load demand is taught by Dickman
specifically.” (Ans. 8-9).
Appellants present separate arguments for claim 6. (App. Br. 12).
Appellants also present separate arguments for claim 9. (App. Br. 13).
However, for claims 6 and 9, Appellants merely argue that “[t]he cited prior
art fails to teach or suggest this subject matter. Moreover, the final Office
Action fails to indicate where the cited prior art suggests this subject
matter.” (App. Br. 12 and 13). When the Examiner responds by indicating
what portion of the prior art is being relied upon for the various teachings
(Ans. 9 and 10), Appellants merely reply by arguing that Dickman still does
not teach the reconfiguring requirement discussed above. (Reply Br. 6 and
7-8).
Since Appellants arguments regarding claims 4, 6, and 9 are based on
the “reconfiguring” argument discussed above for claims 1, 23, 29, 34, and
38, the contentions regarding claims 4, 6, and 9 fail for the same reasons
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discussed above for claims 1, 23, 29, 34, and 38. Accordingly, we sustain
the Examiner's rejection of claims 4, 6, and 9 under 35 U.S.C. § 103(a).

D. Claim 7
Appellants present separate arguments for claim 7. (App. Br. 12).
Specifically, Appellants argue that “[t]he cited prior art fails to teach or
suggest this subject matter. Moreover, the final Office Action fails to
indicate where the cited prior art suggests this subject matter.” (App. Br. 12;
Reply Br. 7).
The Examiner responds that “both Dickman and Marsh teach control
systems that receive inputs and configure the sells [sic, cells] or stacks
accordingly” and that “Dickman teaches that suitable inputs to the controller
include current operating conditions such as load.” (Ans. 9). The Examiner
further responds that “Marsh can receive inputs from the load in order to
control the power profile.” (Ans. 9).
The issue on appeal arising from the contentions of Appellants and
the Examiner is: have Appellants demonstrated that the Examiner reversibly
erred in determining that one of ordinary skill in the art having the teachings
of Dickman and Marsh would have programmed the control module “to
accept feedback from parasitic components of said fuel cell as input?” We
answer this question in the negative.
The evidence of record supports the following additional Findings of
Facts (FF):
11. Appellants’ Specification recites that “[t]he capacity of the
secondary battery (610) and/or a super-capacitor may involve weighing
several factors including, but not limited to: anticipated load profiles, system
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weight and volume, component cost and complexity, fuel cell start-up
duration and parasitic load (e.g. electrical control, switch, and devices, etc.),
and system efficiency.” (Spec. 6, ¶ 31).
12. Dickman teaches that “[t]wo-way communication links enable
the controller to receive inputs from and send control signals to various
components of the fuel cell system. Examples of suitable inputs include one
or more current operating conditions, such as temperature, pressure, flow
rate, composition, state of actuation, load, etc.” (Dickman, col. 11, ll. 29-
34).
13. Marsh teaches a separate power circuit 96 “to tap off some part
of the electricity generated by the fuel cell 12 to power the onboard
electronics” having its own regulation and conditioning circuits. (Marsh 3, ¶
54).
We look to Appellants’ Specification to find a meaning to the term
“parasitic components.” In re Morris, 127 F.3d at 1054. However, the
Specification only uses the term “parasitic loads,” which appears to refer to
the load required to power controls, switches and devices of the fuel cell
system itself. (FF 11). Thus, it appears that the term “parasitic components”
refers to the controller, switches and the internal devices requiring power
that make up the fuel cell system.
As indicated by the Examiner, Dickman clearly teaches that the
controller receives input from “various components” and examples of inputs
include “current operating conditions.” (FF 12). We determine that one of
ordinary skill in the art would have appreciated that “current operating
conditions” include those operating conditions required to power the
controller, connectors and the other components of the fuel cell system itself,
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i.e., the “parasitic components.” Further, Marsh clearly teaches the need to
power “onboard electronics,” i.e., the “parasitic components,” from the fuel
cells. (FF 13). Thus, it would have been within the skill of one of ordinary
skill in the art to arrange the controller taught by Dickman to receive inputs
from parasitic components, such as the “onboard electronics” taught by
Marsh, in order to consider the overall load needed to operate the fuel cell
system. See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1742.
Therefore, we determine that the Examiner did not reversibly err in
determining that one of ordinary skill in the art having the teachings of
Dickman and Marsh would have programmed the control module “to accept
feedback from parasitic components of said fuel cell apparatus as input.”
Accordingly, we sustain the Examiner's rejection of claim 7 under 35 U.S.C.
§ 103(a).
E. Claim 8
Appellants present separate arguments for claim 8. (App. Br. 12).
Specifically, Appellants argue that “[t]he cited prior art fails to teach or
suggest this subject matter. Moreover, the final Office Action fails to
indicate where the cited prior art suggests this subject matter.” (App. Br. 12;
Reply Br. 7).
Although discussed along with paragraphs directed towards claims 6
and 7, the Examiner responds that “the control system of Dickman may be
used to selectively isolate a stack from the applied load… thus reconfiguring
the fuel cell block to an optimal configuration.” (Ans. 9). The Examiner
also responds that “Dickman teaches that the controller may select a stack to
be removed … in a sequence that rotates the stacks such that the overall
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operating time of the stacks is approximately the same, thus evening out
usage of the stacks.” (Ans. 9).
The issue on appeal arising from the contentions of Appellants and the
Examiner is: have Appellants demonstrated that the Examiner reversibly
erred in determining that one of ordinary skill in the art having the teachings
of Dickman and Marsh would have programmed the control module “to
reconfigure said fuel cell blocks at regular intervals to even out usage”? We
answer this question in the negative.
The evidence of record supports the following additional Findings of
Facts (FF):
14. The Specification recites that “the control module (606) may
regularly, continuously, or otherwise rotate usage among the individual
stacks of the fuel cell supply (602) to add longevity and reliability to the
system (600).” (Spec. 7, ¶ 34).
15. Dickman teaches automatically taking one or more cells out of
service at regular intervals (hourly, daily, weekly or monthly) to increase the
lifetime of the total system. (Dickman, col. 12, ll. 32-47).
16. Marsh also teaches “moving the active ‘loaded’ area [of the fuel
cells] around on the chip” for better performance and better utilization
characteristics. (Marsh 4, ¶ 61).
We resort to the Specification to determine what is meant by the
phrase “reconfigure said fuel cell blocks…to even out usage.” In re Morris,
127 F.3d at 1054. We find that the Specification indicates that usage is
rotated “among the individual stacks.” (FF 14). In other words, the fuel cell
blocks are “reconfigured” to halt the usage of one or more of the fuel cells at
a regular interval.
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Dickman and Marsh both teach reconfiguring or halting the usage of
one or more fuel cells or fuel cell blocks. (FF 15-16). In particular,
Dickman clearly suggests doing so at regular intervals, e.g., “hourly, daily,
weekly or monthly.” (FF 15). Thus, one of ordinary skill in the art having
the teachings of Dickman and/or Marsh would have been motivated and able
to program a controller to halt the usage of one or more fuel cells at regular
intervals. See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1742.
Therefore, we determine that the Examiner did not reversibly err in
determining that one of ordinary skill in the art having the teachings of
Dickman and Marsh would have programmed the control module “to
reconfigure said fuel cell blocks at regular intervals to even out usage.”
Accordingly, we sustain the Examiner's rejection of claim 8 under 35 U.S.C.
§ 103(a).
F. Claims 25 and 50-52
Under the subsequent heading addressing the rejection of claim 25
based on Dickman in view of Marsh and Foster, Appellants state that
“Dickman and Marsh fail to teach or suggest the subject matter of claims 25,
45 and 46.” (App. Br. 16).
We note that the Examiner has provided no specific evidence to
support a determination that it would have been obvious for one of ordinary
skill in the art having the teachings of Dickman and Marsh to arrange the
fuel cell operated most often placed central to the other fuel cells. (App. Br.
3-4). To the contrary, in the subsequent rejection of claim 25, the Examiner
acknowledges that “[t]he combination of Dickman et al. and Marsh as
described above … fail to teach the placement of the cells programmed to be
used most often in a location central to the other cells in order to dissipate
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heat to the outer cells” and relies on the teaching of Foster instead. (Ans. 5-
6). Therefore, we cannot sustain the Examiner’s rejection of claim 25 based
on the teachings of Dickman and Marsh under 35 U.S.C. § 103(a).
Appellants present separate arguments for claim 50, claims 4 and 51
as a group, and claims 9 and 52 as a group. (App. Br. 11 and 13). We
adressed the merits of claims 4 and 9 above. Claims 50-52 depend from
independent claim 25 and thus include all the limitations of this independent
claim. See 35 U.S.C. § 112. Thus, the rejections of claims 50-52 based on
the teachings of Dickman and Marsh fail for the same reasons as claim 25,
and we also cannot sustain the Examiner's rejection of claims 50-52 under
35 U.S.C. § 103(a).
G. Claims 5 and 35
Appellants present separate arguments for claims 5 and 35 but do not
present these arguments as a group. (App. Br. 11, 13, and 15). We group
these claims together, however, because Appellants’ arguments regarding
these claims are similar and because it is unclear how the scope of these
claims are distinguishable based on Appellants’ Specification, as discussed
below.
Regarding claim 35, Appellants argue that “the Action utterly fails to
address the subject matter of claim 35 or to indicate how or where Dickman
and Marsh actually teach or suggest ‘simultaneously providing multiple
voltages to a load device by re-configuring said fuel cell blocks,’” (App. Br.
11).
The Examiner responds that “[t]he control system of Marsh … is
capable of providing ‘various voltages.’” (Ans. 8). To which Appellants
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reply that “[n]either Marsh, nor the other cited prior art, teach or suggest
‘simultaneously’ providing multiple voltages, as claimed.” (Reply Br. 5).
Regarding claim 5, Appellants argue that “the final Office Action
addresses exclusively the subject matter of claim 25” and never addresses
“how or where the cited references teach or suggest a ‘control module [that]
is programmed to reconfigure said fuel blocks to simultaneously provide
multiple electrical outputs comprising different currents and/or different
voltages.’” (App. Br. 15).
The Examiner responds that the limitation of providing multiple
outputs is “discussed above in the rebuttal of claim 50” and “is taught by
Dickman.” (Ans. 11). With respect to claim 50, the Examiner discussed
that “Dickman teaches that in a residential fuel cell system, major household
appliances (dishwasher, dryer, hairdryer, etc.) are plugged into the fuel cell
system… [such that] [t]he control system of Dickman is capable of
providing power to all or some of these devices.” (Ans. 10). The Examiner
further argues that “one of ordinary skill in the art would recognize that
these devices would have different current or voltage requirements.” (Ans.
10).
Appellants reply that “[n]either Dickman nor the other cited prior art
teach or suggest ‘simultaneously’ providing multiple voltages, as claimed.”
(Reply Br. 8). Appellants reply that “Appellant’s claims recite not just the
provision of multiple electrical outputs, but the simultaneous output of such
multiple currents or voltages” which is “outside the scope and content of the
cited prior art.” (Reply Br. 9-10).
The issue on appeal arising from the contentions of Appellants and the
Examiner is: have Appellants demonstrated that the Examiner reversibly
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erred in determining that one of ordinary skill in the art having the teachings
of Dickman and Marsh would have programmed the control module of
Dickman’s fuel cell apparatus to simultaneously provide multiple “voltages”
or multiple “electrical outputs comprising different current and/or different
voltages” as recited in claims 5 and 35? We answer this question in the
negative.
The evidence of record supports the following additional Findings of
Facts (FF):
17. Appellants’ Specification recites that “the fuel cell power
structures enabling electrical reconfigurability according to the present
invention advantageously provide for multiple voltages and currents to be
supplied simultaneously to electrical appliances.” (Spec. 5, ¶ 29).
18. Appellants’ Specification also recites
[i]t will be understood that the multiple
configurations enabled by the structures described
above may be implemented to simultaneously
provide multiple voltages to a load device by re-
configuring the fuel cell blocks. Many modern
electronics require multiple and different voltages
currents (e.g. a computer requiring power for a
CPU, a display, a fan, etc.), and the present
invention allows for the fuel cell stacks to be
reconfigured to provide the multiple electrical
requirements simultaneously.
(Spec. 14, ¶ 48).
19. Figure 8 illustrates a switch network 702 connected to multiple
fuel cell stacks and lines labeled V1 and V2. (Spec. Figure 8). However,
there is no text in Appellants’ Specification to describe what is meant by V1
and V2. (See Spec.). Further, none of the examples provided in Appellants’
Specification appear to be directed to a configuration of fuel cell stacks that
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specifically provide for multiple voltages or multiple outputs. (See Spec. 13-
14, ¶ 47-48; Figures 8-12).
20. The term “outputs” is not separately used in Appellants’
Specification. (See Spec.).
21. Dickman teaches that the current from a stack assembly “may
be used to satisfy the energy demands, or applied load, of an energy-
consuming device 80.” (Dickman, col. 4, ll. 44-46).
22. According to Dickman, “energy consuming device 80” could
include a single appliance, tool, or vehicle, “one or more residential
dwellings,” “commercial buildings, microwave relay stations, signaling or
communication equipment, etc.” (Dickman, col. 4, ll. 46-51).
23. Further, device 80 is “meant to represent one or more devices or
collection of devices that are adapted to draw electric current from the fuel
cell system. To further illustrate this point, device 80 is shown in FIG. 5 as
including a pair of devices 801 and 802.” (Dickman, col. 4, ll. 53-58).
We look to the Specification in determining what is meant by
simultaneously providing “multiple voltages” or “multiple electrical outputs
comprising different current and/or different voltages.” In re Morris, 127
F.3d at 1054. Appellants’ Specification provides only cursory discussions
without specific examples that the reconfigurability of the invention
provides for simultaneously providing multiple voltages or currents. (FF 17-
19). Also, Appellants’ Specification does not use, and thus provides no
special meaning to, the term “outputs.” (FF 20). Thus, we find no
distinguishable scope to claim 5 based on the use of the term “outputs.”
Further, Appellants’ Specification suggests that it would be within the
skill of one of ordinary skill in the art to provide multiple configurations by
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re-configuring the fuel cell blocks in order to simultaneously provide
multiple voltages without further disclosure using no more than routine
experimentation. (FF 18).
Above, we determined that it would have been obvious to one of
ordinary skill in the art having the teachings of Dickman to electrically
connect fuel cell blocks together using connectors 100 in such an
arrangement that merely connecting or disconnecting the fuel cells via the
connectors 100 would cause the cell blocks to be reconfigured to any of
series, parallel or combination of series and parallel arrangements to meet
the load demands and operate at peak performance. Further, we note that
Dickman teaches using the fuel cell system for providing electrical energy to
a variety of devices simultaneously (such as the several devices connected to
the energy supply of a residential building). (FF 21-23).
Thus, we determine that, to the extent that one of ordinary skill in the
art having the teachings of Applicants’ Specification would have been able
to provide multiple voltages or outputs with routine experimentation, one of
ordinary skill in the art having the teachings of Dickman likewise would
have been able to provide multiple voltage or outputs with mere routine
experimentation to provide multiple voltages simultaneously to different
devices, as suggested by Dickman. See KSR Int'l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1742 (2007)(“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also In re Peterson, 315 F.3d
1325, 1330 (Fed. Cir. 2003) (“The normal desire of scientists or artisans to
improve upon what is already generally known provides the motivation to
[optimize].”).
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Therefore, we determine that the Examiner did not err in determining
that one of ordinary skill in the art having the teachings of Dickman would
have programmed the control module of Dickman’s fuel cell apparatus to
simultaneously provide multiple “voltages” or multiple “electrical outputs
comprising different current and/or different voltages” as recited in claims 5
and 35 for powering multiple devices of different voltages or currents.
Accordingly, we sustain the Examiner's rejection of claims 5 and 35 under
35 U.S.C. § 103(a).
Rejection based on Dickman in view of Marsh and Foster
H. Claims 25, 45, and 46
Appellants present separate arguments for the rejection of claims 25,
45, and 46 based on Dickman in view of Marsh and Foster as a group. (App.
Br. 15-16). Therefore, we select claim 25 to represent the issues on appeal
for this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that “Dickman and Marsh fail to teach or suggest the
subject matter of claims 25, 45 and 46.” (App. Br. 16). Appellants also
argue that Foster teaches arranging fuel cells “for heat dissipation” but “does
not provide a teaching or suggestion of the subject matter of claim 25 in
which the most active fuel cells are centrally placed so as to retain heat to
heat up less active fuel cells.” (App. Br. 16; Reply Br. 10-11).
The Examiner responds that
The heat that is dissipated from the central cells of
Foster is transferred to the outer cells when it is
dissipated, since the mechanism by which the heat
moves would inherently be the same in both Foster
and the instant invention. In other words, the cells
of Foster are arranged in a certain array, and heat
that is produced by cells in that array is dissipated.
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If the cells of the array of Foster were in the same
pattern as those of the instant invention, and the
same fuel cells of Foster were operational as the
cells of the instant invention, then the heat would
be transferred in the same manner.
(Ans. 11).
Appellants reply that “[t]his is the same as saying that, if Foster taught
the subject matter claimed, the Examiner would have some grounds for
rejecting claim 25.” (Reply Br. 10).
The issue on appeal arising from the contentions of Appellants and the
Examiner is: have Appellants demonstrated that the Examiner reversibly
erred in determining that one of ordinary skill in the art having the teachings
of Dickman, Marsh, and Foster would have positioned fuel cells “in active
operation most often” central to the plurality of fuel cells? We answer this
question in the affirmative.
The evidence of record supports the following additional Findings of
Facts (FF):
24. Foster teaches that “[t]he individual fuel cells 10 may be
arranged in planar, staggered, or overlapping rows or arrays, depending upon
the space and heat dissipation requirements of a particular application.”
(Foster, col. 5, ll. 33-36).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there 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) (quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)).
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of non-patentability. In re
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Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner has not
established a prima facie case of obviousness with respect to claim 25. In
particular, we determine that the Examiner has not adequately demonstrated
that the teachings of Dickman, Marsh and/or Foster would have suggested to
one of ordinary skill in the art to arrange fuel cells so that the most used fuel
cells are central.
As discussed above, the Examiner acknowledges that Dickman and
Marsh “fail to teach the placement of the cells programmed to be used most
often in a location central to the other cells in order to dissipate heat to the
outer cells.” (Ans. 5). Foster does not satisfy the deficiency left by
Dickman and Marsh. Rather, Foster only discusses heat dissipation in the
context of arranging the fuel cells in a “planar, staggered, or overlapping
rows or arrays.” (FF 24).
The rejection fails because the evidence does not support the
obviousness of placing the most used fuel cells of Dickman central to the
other fuel cells. Kahn, 441 F.3d at 988. Thus, the Examiner has not
provided sufficient evidence to establish a prima facie case of obviousness
over claims 25, 45, and 46. Oetiker, 977 F.2d at 1445. Accordingly, we
cannot sustain the Examiner's rejection of claims 25, 45, and 46 under 35
U.S.C. § 103(a).
I. Claims 47-49
Appellants have provided no separate arguments directed to claims
47-49. Claims 47-49 depend from independent claim 5. Thus, claims 47-49
fail for the same reasons discussed above for claims 5 and 35. Wood, 582
F.2d at 642. Accordingly, we sustain the Examiner's rejection of claims 47-
49 under 35 U.S.C. § 103(a).
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Rejection based on Dickman in view of Marsh and Schmidt
J. Claims 27 and 28
The Examiner rejects claims 27 and 28 under 35 U.S.C. § 103 as
obvious over Dickman in view of Marsh and Schmidt. (Ans. 6). However,
Appellants’ arguments with respect to claims 27 and 28 are limited to “[t]he
rejection of claims 27 and 28 should not be sustained for at least the same
reasons given above with respect to independent claim 23.” (App. Br. 16).
Thus, the rejection of claims 27 and 28 is sustained for the same reasons
discussed above for claims 1, 23, 29, 34, and 38. Wood, 582 F.2d at 642.
III. CONCLUSION
The totality of the evidence weighs in favor of the following
conclusions:
(1) We sustain the Examiner's rejection of claims 1-4, 6-9, 23-24,
26, 29-32, and 34-40 rejected under 35 U.S.C. § 103(a) as obvious over
Dickman in view of Marsh;
(2) We do not sustain the Examiner's rejection of claims 25 and 50-
52 under 35 U.S.C. § 103(a), as obvious over Dickman in view of Marsh;
(3) We sustain the Examiner's rejection of claims 5 and 47-49
rejected under 35 U.S.C. § 103(a) as obvious over Dickman in view of
Marsh and further in view of Foster;
(4) We do not sustain the Examiner's rejection of claims 25, 45,
and 46 under 35 U.S.C. § 103(a) as obvious over Dickman in view of Marsh
and further in view of Foster; and
(5) We sustain the Examiner's rejection of claims 27 and 28
rejected under 35 U.S.C. § 103(a) as obvious over Dickman in view of
Marsh and further in view of Schmidt.
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.
IV. DECISION
The decision of the Examiner is affirmed-in-part.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

PL initial:
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INTELLECTUAL PROPERTY ADMINISTRATION
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