Ex Parte LehmannDownload PDFPatent Trial and Appeal BoardSep 26, 201310536462 (P.T.A.B. Sep. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/536,462 12/05/2005 Mirko Lehmann 1001/0167PUS1 4952 60601 7590 09/26/2013 Muncy, Geissler, Olds & Lowe, PLLC 4000 Legato Road Suite 310 FAIRFAX, VA 22033 EXAMINER ENIN-OKUT, EDU E ART UNIT PAPER NUMBER 1727 MAIL DATE DELIVERY MODE 09/26/2013 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 MIRKO LEHMANN ____________ Appeal 2012-008798 Application 10/536,462 Technology Center 1700 ____________ Before PETER F. KRATZ, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-23 and 25-27. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claims 1, 12, 23, and 26 are representative of the subject matter on appeal and is set forth below: Appeal 2012-008798 Application 10/536,462 2 1. An integrated fuel cell and integrated circuit device, comprising: a semiconductor substrate, and a fuel cell, located on the semiconductor substrate, comprising a first electrode and a second electrode configured to define a reaction region, where one of the first and second electrodes is a cathode and the other is an anode; a catalytic layer that is permeable at least to protons and is configured to permit catalytic activity, the layer positioned between the first electrode and the second electrode; a reservoir containing fuel disposed with the first electrode; and a reactant delivery device configured to provide a reactant, where the reactant reacts with protons from the fuel to generate current, the reactant delivery device positioned on the side of the second electrode; where the fuel is integrated into the material of the first electrode. 12. The integrated fuel cell and integrated circuit device of claim 1, further comprising a fuel sensor that is positioned in at least one of the reservoir or the reaction region between the protons and the reactant, to determine an available amount of fuel. 23. The integrated fuel cell and integrated circuit device of claim 21, further comprising a circuit for measuring the resistance of one of the reservoir or the reactant delivery device and determining the remaining amount of one of fuel or reactant. Appeal 2012-008798 Application 10/536,462 3 26. The integrated fuel cell and integrated circuit device of claim 1, where no additional fuel supply channels and separate fuel reservoirs are provided. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Chason 2003/0015705 A1 Jan. 23, 2003 Gore 6,855,443 B2 Feb. 15, 2005 Sanders 2004/0101740 A1 May 27, 2004 Mukerjee 2002/0168561 A1 Nov. 14, 2002 Anderten 4,164,172 Aug. 14, 1979 THE REJECTIONS 1. Claim 12 is rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 2. Claim 23 is rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 3. Claim 26 is rejected under 35 U.S.C. §112, second paragraph, as being indefinite. 4. Claims 1-10, 12-22, 26 and 27 are rejected under 35 U.S.C. §103(a) as being unpatentable over Chason in view of Gore and Sanders. Appeal 2012-008798 Application 10/536,462 4 5. Claims 23 and 25 are rejected under 35 U.S.C. §103(a) as being unpatentable over Chason, Gore, and Sanders, as applied to claims 1-10, 12- 22 and 26 above, and further in view of Anderten. 6. Claim 11 is rejected under 35 U.S.C. §103(a) as being unpatentable over Chason, Gore, and Sanders as applied to claims 1-10, 12, 13, and 26 above, and further in view of Mukerjee. ANALYSIS As an initial matter, Appellant has not presented separate arguments for all of the rejected claims. Any claim not separately argued will stand or fall with the argued claims from which it depends. See 37 C.F.R. § 41.37(c)(1) (vii). Claims separately argued are identified in our discussion hereafter. We adopt the Examiner’s findings pertinent to the issues raised by Appellant (except for Rejection 3). We therefore incorporate the Examiner’s position as set forth in the Answer (except for Rejection 3) and affirm Rejections 1, 2, 4, 5, and 6, for the reasons provided by the Examiner in the Answer. We add the following for emphasis only. Rejection 1 Claim 12 recites: “[t]he integrated fuel cell and integrated circuit device of claim 1, further comprising a fuel sensor that is positioned in at least one of the reservoir or the reaction region between the protons and the reactant, to determine an available amount of fuel” [emphasis added]. It is the Examiner’s positions that the text of claim 12 in bold herein fails to Appeal 2012-008798 Application 10/536,462 5 comply with the written description requirement for the reasons set forth on pages 5 and 21 of the Answer, which we do not repeat herein. Beginning on page 18 of the Brief, Appellant states: Applicants submit that Claim 12 requires a fuel sensor that is positioned in at least one of (1) the reservoir or (2) the reaction region between the protons and the reactant. As to (10 the specification at page 27, paragraph 3, recites that there is “fuel sensor 18, for example a hydrogen sensor, to determine the content of fuel in the first electrode 3 or in a layer adjacent to it". Claim 1 recites "a reservoir containing fuel disposed with the first electrode". As to item (2), the specification at page 22, fourth paragraph, and page 271 third paragraph provides that the fuel sensor is '*in contact with the layer containing fuel" or that the sensor 18 of figure 3 determines "the content or residual content of fuel in the first electrode or in a layer adjacent to it or both. The fuel (H2) is the source of "protons" (page 24, first full paragraph). The test for compliance with the written description requirement is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. Appeal 2012-008798 Application 10/536,462 6 Upon our review of the Specification1, page 27 of the English translation of the Specification indicates that the fuel sensor 18 consists, for example, of an ISFET with an applied palladium PD layer or palladium resistor. Fuel sensor 18 is depicted in Appellant’s Figure 2, reproduced below: As indicated in Figure 2, fuel sensor 18 is depicted as being located within first electrode 3. Page 22 of the Specification, fourth paragraph, discloses that: 1 We use the English translation of Appellant’s Specification indicated as the clean copy after entry of the Amendment (Paper No. 80, filed on December 5, 2008) because both the Examiner and the Appellant use this version. Confusingly, this clean copy numbers the pages incorrectly. That is, page 1 begins as being numbered as page 19, and so on. We use the same page numbering used in this clean copy of the Specification because this is what both the Examiner and Appellant have done. Appeal 2012-008798 Application 10/536,462 7 Connection of a fuel sensor, especially a hydrogen sensor, is also advantageous for such a fuel cell, with the fuel sensor being in contact with the layer that contains the fuel. A warning signal can be emitted by the fuel sensor in case of decreasing fuel content, which shows that the fuel cell has to be replaced. Page 27 of the Specification, third paragraph, discloses: The system advantageously also has a fuel sensor 18, for example a hydrogen sensor, to determine the content or residual content of fuel in the first electrode 3 or in a layer adjacent to it, or both. The fuel sensor 18 includes, for example, an ISFET (ion-selective field effect transistor) with an applied palladium Pd layer or a palladium resistor. This fuel cell sensor 18 is connected by appropriate leads to other circuit components that serve to signal fuel depletion, so that the fuel cell can be replaced as needed. In one example, the remaining fuel is determined by a circuit that measures the resistance of the fuel delivery device and compares the measurement with test measurements previously made. On page 3 of the Brief, Appellant states that the reservoir is “shown in the area within 3 in Figure 1 and containing H2”.2 Figure 1 is reproduced below, showing this area within the dashed lines: 2 We note that Appellant refers to Figure 1. We have read the Specification in its entirety and are unable to find specific disclosure that make specific reference to the dashed lines depicted in Figure 1. That is, Figure 1 is the only disclosure of the dashed lines. Appeal 2012-008798 Application 10/536,462 8 At page 24, beginning at the first full paragraph, the Specification discloses: Fuel that includes hydrogen H2 escapes from the face of the first electrode 3. The fuel reacts with the catalytic layer 5 or appropriate elements in the material of the first electrode 3 in such a way that hydrogen ions, i.e. protons, are released. These protons pass through the proton-permeable layer 5 toward the second electrode 4. In the region of the second electrode 4, the protons react with a reactant fed to this region, preferably oxygen O2. When a circuit is closed between the electrical conductors 8, a corresponding current flows through them. FIG. 1 illustrates one example where the reactant O2 arrives directly to the freely accessible second electrode 4 from the surroundings, such that the reactant operation is possible in any area with oxygen- containing air. In the present example, the second electrode 4 includes a diffusion layer that permits the entry and passage of the reactant O2. The fuel delivery device advantageously includes the first electrode 3 and/or another layer adjacent to it. This first electrode 3 or the other layer contains fuel, for example hydrogen H2. When needed, the fuel is released from the material of the first electrode 3, in a comparable Appeal 2012-008798 Application 10/536,462 9 manner to what is known otherwise from prior art fuel cells from corresponding fuel infeed channels. Based upon the above-mentioned parts of Appellant’s Specification, the Specification indicates a location of fuel sensor 18 as shown in Figure 2. A comparison of this location with the location of the reservoir as described by Appellant on page 3 of the Brief, as being “the area within 3 in Figure 1 and containing H2”, indicates an overlap of an area that each location shares with each other. Hence, there is at least support for fuel sensor 18 being positioned in at least one of the reservoir (that is, fuel sensor 18 is positioned in at least a part of the reservoir, the part being the location shared between the two locations). However, for the aspect of claim 12 that recites that fuel sensor 18 is positioned in “the reaction region between protons and the reactant”, we cannot find such support, and Appellant has not directed us to such support in his Specification. While page 22 of the Specification indicates that the fuel sensor is in contact with the layer that contains the fuel, this does not state that the fuel sensor is positioned in “the reaction region between protons and the reactant”. At best, this disclosure indicates that the fuel sensor is in contact with the reaction region between protons and the reactant (while making the assumption that the reaction region between protons and the reactant is a layer adjacent to first electrode 3). In this context, we agree with the Examiner’s conclusion that claim 12 fails to comply with the written description requirement under 35 U.S.C. §112, first paragraph. In view of the above, we affirm Rejection 1. Appeal 2012-008798 Application 10/536,462 10 Rejection 2 It is the Examiner’s position that there is no support for the limitation of claim 23 regarding measuring the resistance of the reservoir. Ans. 6, 21. Appellants submit that page 27, third paragraph, of the Specification describes the fuel sensor 18 as determining the residual content of fuel in the first electrode or in a layer adjacent to it. Appellant then refers to the fourth paragraph on page 27 of the Specification that discloses that in one example “the remaining fuel is determined by a circuit that measures the resistance of the fuel delivery device and compares the measurement with test measurements previously made". Br. 19. In reply, the Examiner states that Appellant is incorrectly equating “the fuel delivery device” with the “reservoir”. Ans. 21. The Examiner submits that the Specification describes the reservoir and the fuel delivery device as being separate components. Page 20, in the second and third full paragraph of the Specification, discloses: A fuel cell comprises a first and a second electrodes, a proton permeable layer, a fuel delivery layer and a reactant delivery layer. The first and the second electrodes are configured to define a reaction region, where the first electrode configured as a cathode and the second electrode configured as an anode. The proton permeable layer is positioned between the first and the second electrodes. The fuel delivery device is configured to provide fuel to the first electrode. The reactant delivery device is configured to provide reactant to the second electrode, where the reactant reacts with protons from the fuel to generate a current. Where the fuel penetrates into the first electrode. Appeal 2012-008798 Application 10/536,462 11 Using, as the fuel delivery device, a layer integrated into the fuel cell into which the fuel is already incorporated provides the benefit that no separate fuel infeed channels or the like have to be provided. This simplifies construction considerably. Page 21, first paragraph, of the Specification discloses: The fuel delivery device may include material contacted by the fuel that releases the fuel or protons generated from it as needed. Palladium is preferably used as the base material for such a fuel delivery device because of its good hydrogen sensitivity, with hydrogen usually being used as the fuel for fuel cells at the present time. In view of the disclosure reproduced above, the fuel delivery device is the material that provides fuel to the first electrode. It can be in the form of a layer integrated into the fuel cell and can include palladium as the material used as a base material. The reservoir, on the other hand, is the location of the fuel as identified in Figure 1 by the dashed lines. Hence, we agree with the Examiner that the two are different from each and that therefore Appellant’s position is unpersuasive for the reasons provided by the Examiner, discussed supra. In view of the above, we affirm Rejection 2. Rejection 3 It is the Examiner’s position that claim 26 recites "[t]he integrated fuel cell and integrated circuit device of claim 1, where no . . . separate fuel reservoirs are provided", but that claim 1 recites "[a]n integrated fuel cell and integrated circuit device, comprising: ... a Appeal 2012-008798 Application 10/536,462 12 reservoir containing fuel disposed with the first electrode; ...". The Examiner submits that it is thus unclear how no separate fuel reservoirs can be provided when parent claim 1 recites that there is a separate "reservoir containing fuel". Ans. 6, 7, 21, 22. In reply, on pages 19-20 of the Brief, Appellant explains that: the term "no separate fuel reserves" means other than the one fuel reserve being claimed. Thus there are no additional fuel reserves. And if the meaning of the claim language has to be interpreted, the Applicant has provided that meaning in the penultimate paragraph on page 20 which indicates “Using, as the fuel delivery device, a layer integrated into the fuel cell into which the fuel is already incorporated provides that benefit that no separate fuel infeed channels or the like have to be provided". Thus, whether by the clear meaning of the terms or by use of applicants definition in the specification, claim 26 meets the requirements of 35 USC 112, second paragraph with respect to particularly pointing out and distinctly claiming the subject matter which applicant regards as the invention. “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Miles Lab., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation omitted). In the instant case, Appellant’s response, as reproduced above, adequately explains how one skilled in the art would have understood the bounds of claim 26 when read in light of the Specification for the reasons provided by Appellant, and we thus reverse Rejection 3. Appeal 2012-008798 Application 10/536,462 13 Rejections 4, 5, and 6 It is Appellant’s position that Gore does not have a reservoir containing fuel disposed with the first electrode, and therefore there is a missing element in the combination of references of Chason in view of Gore and Sanders. Br. 12. Reply Br. 1-2. However, in making this argument, Appellant does not fairly address the Examiner’s rejection as presented in the Answer. That is, the Examiner further relies upon Saunders for teaching to provide for the reservoir containing fuel in a manner such that the fuel is integrated into the material of the first electrode, rather than in the manner used by Gore (wherein the fuel is situated adjacent the anode). Hence, the rejections involve Chason, as modified by Gore, and as further modified by Sanders. Arguments that do not address the merits of the rejections are unpersuasive. We are therefore unpersauded by Appellant’s arguments for this reason, in combination with the reasons provided by the Examiner in the Answer. Appellants also argue that Sanders does not teach that the fuel is integrated into the material of the first electrode. Br. 12. Reply Br. 2. However, as the Examiner explains on page 17 of the Answer, Sanders teaches that hydrogen (fuel) can be stored within catalyst-coated hollow microspheres. The catalyst-coated hollow microspheres can be pressed together with additional additive materials to form an electrolyte permeable, electrically conductive, non-sintered matrix electrode. Sanders, para. [0108]. In this manner, the fuel is integrated into the material of the first electrode. The coating can be palladium (Sanders, para. [0093]); hence the Sanders electrode also comprises palladium as recited in Appellant’s claim 3; hence we agree with the Examiner’s finding on page 9 of the Answer. Appeal 2012-008798 Application 10/536,462 14 With regard to claim 2, we refer to the Examiner’s findings made in the paragraph bridging pages 8-9 of the Answer and incorporated the position therein as our own. We note that Appellant discusses claims 4-10, and 12-22 on pages 13- 14 of the Brief, but, in so doing, Appellant does not fairly address the merits of the Examiner’s position as set forth in the Answer.3 Hence, because Appellant’s arguments do not fairly address the merits of the rejection, and also for the reasons/findings provided by the Examiner in the Answer (Ans. 9-22), we are also unpersuaded by these arguments. With regard to claims 26 and 27, Appellant relies upon the arguments presented for claim 1 (Br. 15), and hence, for the same reasons, discussed, supra, we are not persuaded by such arguments. Beginning on page 15 of the Brief, Appellant argues that the combination of references does not make obvious the claimed subject matter. Appellant again submits that Gore does not have a reservoir containing fuel disposed with the first electrode wherein the fuel is integrated into the material of the first electrode, as required by each of the independent claims 1, 13, 14, and 27. Br. 16. However, this argument has been addressed, supra, and found unpersuasive for the reasons stated therein. Appellant also argues that no one skilled in the art would find it obvious to take a part of Gore which has a different arrangement between the fuel container and anode 102 and combine it with Chason. Br. 16. We are unpersauded by such argument for the reasons stated by the Examiner in his reply made on pages 19-20 of the Answer. As the Examiner points out 3 The Examiner points this out in the paragraph bridging pages 18-19 of the Answer, when addressing claims 15 and 16, for example. Appeal 2012-008798 Application 10/536,462 15 therein, adequate motivation exists to combine Chason, in view of Gore, and further in view of Sanders, as articulated throughout the Answer. Appellant then argues, with regard to Sanders, that he is “at a loss to comprehend how the storage of gases by using catalyst-coated hollow microspheres as disclosed by Sanders teaches the skilled artisan to provide a catalyst as a component of an electrode of a fuel cell and how it would be combined with a structure having a first and second electrode with a catalytic layer between them. Br. 16. We are unpersauded by such argument for the reasons stated by the Examiner on pages 20-21 of the Answer wherein the Examiner explains that utilizing Sanders’ electrode, with the catalyst, in the fuel cell of Chason in view of Gore, would have been obvious to one of ordinary skill in the art appreciating use of an electrode as a component of a fuel cell. The Examiner also provides other motivating reasons in his statement of the rejection made on page 8 of the Answer; those being that the integrated electrode taught in Sanders would facilitate the safe, low-cost, storage of hydrogen which is easily available for later use. Appellant’s arguments in the Brief and Reply Brief do not fairly address this aspect of the Examiner’s rejection. In view of the above, we affirm Rejections 4, 5, and 6 (Appellant relies upon the same arguments for Rejection 5 and 6 that are used for Rejection 4 (Br. 18)). CONCLUSIONS OF LAW AND DECISION Rejections 1, 2, 4, 5, and 6 are affirmed. Rejection 3 is reversed. Appeal 2012-008798 Application 10/536,462 16 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). AFFIRMED tc Copy with citationCopy as parenthetical citation