Ex Parte Naoki

Patent Trial and Appeal Board

Nov 29, 2016

13126994 (P.T.A.B. Nov. 29, 2016)

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.
13/126,994 04/29/2011 Takehiro Naoki 2013/49 7797
23838 7590 12/01/2016
ANDREWS KURTH KENYON LLP
13501 STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005
EXAMINER
LYLES-IRVING, CARMEN V
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
u spto @ keny on .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKEHIRO NAOKI
Appeal 2015-002804
Application 13/126,994
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s final rejection of claims 1—3 and
5—9, which constitute all the claims pending in this application. 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In this decision, we refer to the Final Office Action appealed from, mailed
April 7, 2014 (“Final Act.”), the Appeal Brief dated September 8, 2014
(“App. Br.”), and the Examiner’s Answer to the Appeal Brief dated October
24, 2014 (“Ans.”), and the Reply Brief dated December 9, 2014 (“Reply
Br.”).
2 Appellant identifies Toyota Jidosha Kabushiki Kaisha as the real party in
interest. App. Br. 2.
Appeal 2015-002804
Application 13/126,994
The Claimed Invention
Appellant’s disclosure relates to a fuel separator. Spec. 11; Abstract.
Claim 1 is representative of the claims on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 14, 15) (key
disputed limitations italicized):
1. A fuel cell separator, comprising:
a first plate;
a second plate;
a first manifold for first reactive gas supply formed on
outer circumferences of the first plate and the second plate; and
a second manifold for first reactive gas exhaust formed on
the outer circumferences;
a third manifold for second reactive gas supply formed on
the outer circumferences;
a fourth manifold for second reactive gas exhaust formed
on the outer circumferences,
wherein the first plate has a plurality of strip-shaped first
projections protruded toward the second plate to define a
plurality of first reactive gas flow paths,
the second plate has a plurality of strip-shaped second
projections protruded toward the first plate to define a plurality
of second reactive gas flow paths,
a top of each of the plurality of the first projections is in
contact with a bottom of a recess arranged between adjacent
two of the plurality of the second projections formed on the
second plate,
a top of each of the plurality of the second projections is in
contact with a bottom of a recess arranged between adjacent
two of the plurality of the first projections formed on the first
plate,
the first reactive gas flow paths are alternately connected
with the first manifold and the second manifold,
the first reactive gas flow paths have closed ends that are
opposite to respective connection ends alternately connecting
with the first manifold and the second manifold,
the second reactive gas flow paths are alternately
connected with the third manifold and the fourth manifold,
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Application 13/126,994
the second reactive gas flow paths have closed ends that
are opposite to respective connection ends alternately
connecting with the third manifold and the fourth manifold, and
a cooling water flow path is formed between the first plate
and second plate, and
the first reactive gas flow paths, the cooling water flow
paths and the second reactive gas flow paths are arranged
alternately one by one to form a single line along a
perpendicular direction against the stacking direction of the first
plate and the second plate,
wherein the first reactive gas flow paths are made of two
types of reactive gas flow paths, one type is a first reactive gas
flow supply path and the other is a first reactive gas flow
exhaust path,
wherein the second reactive gas flow paths are made of
two types of second reactive gas flow paths, one type is a
second reactive gas flow supply path and the other is a reactive
gas flow exhaust path, and
wherein the first reactive gas from the first reactive gas
flow supply path to the first reactive gas flow exhaust path
flows in a direction opposite to a direction in which the second
reactive gas flows from the second reactive gas flow supply
path to the second reactive gas flow exhaust path.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Goebel US 2005/0058864 A1 Mar. 17, 2005
Hirotaka JP 2005-32578 A Feb. 3,2005
(hereinafter “JP ’578”)
The Rejection
On appeal, the Examiner maintains the following rejection:
Claims 1—3 and 5—9 stand rejected under pre-AlA 35 U.S.C. § 103(a)
as being unpatentable over Goebel in view of JP ’578. Ans. 4; Final Act. 2.
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Application 13/126,994
OPINION
The Examiner determines that the combination of Goebel and JP ’578
suggests a fuel separator satisfying all of the limitations of claim 1 and that
the prior art combination would have rendered claim 1 obvious. Ans. 4—9
(citing Goebel, Fig. 3, ^fl[ 24, 32; JP ’578, Fig. 12,127). The Examiner finds
that Goebel teaches the majority of claim 1 ’s limitations, but that it does not
teach “a first manifold, a second manifold, a third manifold and a fourth
manifold,” as recited in the claim. Id. at 4 (citing Goebel, Fig. 3). The
Examiner, however, relies on JP ’578 for disclosing these missing
limitations. Id. at 4, 5. In particular, the Examiner finds that JP ’578 teaches
“a first manifold (7), a second manifold (13), a third manifold (19) and a
fourth manifold (21).” Id. at 4, 5 (citing JP ’578, Fig. 12).
Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to “modify the teachings of Goebel with the teachings of [JP ’578]
in order to design a fuel cell with a slimmed down separator that maintains
its cooling capacity” and to “optimize the performance of both the fuel cell
and the fuel cell separator.” Ans. 5, 6.
The Examiner further concludes that it would have been obvious to
one of ordinary skill in the art at the time of the invention to modify the
teachings of Goebel in the manner claimed “in an effort to create a fuel cell
separator with the desired cooling flow channels, fuel and oxidant flow paths
while minimizing the required distance between adjacent [membrane
electrode assemblies].” Ans. 8.
Appellant argues that the Examiner’s rejection of claim 1 should be
reversed because the cited references do not teach the: (a) “two types of
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Application 13/126,994
reactive gas flow paths,'1'’ (b) “two types of second reactive gas flow paths,'1'’
and (c) “a direction opposite to a direction” limitations as required by the
claim. App. Br. 6. Appellant further argues that the Examiner has failed to
adequately explain or identify sufficient evidence explaining why one of
ordinary skill would have been motivated to modify the prior art fuel
separator in the manner claimed. Id. at 10, 12. In particular, Appellant
argues that the “Office Action cites to no portion of Goebel and provides no
explanation as to why ... a person of ordinary skill in the art would have
modified Goebel’s fuel separator to arrive at claimed invention.” Id. at 12.
We concur with Appellant’s argument. Based on the record before us,
we are not persuaded that the Examiner has provided an adequate technical
explanation or identified sufficient evidence explaining why one of ordinary
skill would have had reason to modify Goebel’s fuel separator to arrive at
the claimed invention. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (requiring “reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(holding that the examiner bears the initial burden of establishing a prima
facie case of obviousness).
The Examiner does not adequately explain why one of ordinary skill
would have been motivated to modify Goebel’s fuel separator to arrive at the
claimed invention. As Appellant correctly points out (App. Br. 9), Goebel
describes a fuel cell assembly and configuration that differs from the
claimed invention. In particular, Goebel discloses a fuel cell assembly
having a single, continuous serpentine flow path from the reactive gas
supply manifold to the reactive gas exhaust manifold. Geobel, 16, Fig. 2.
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Application 13/126,994
In contrast, the claimed invention discloses a structure where the first and
second reactive gas flow paths are made of two types of reactive gas flow
paths and “the first reactive gas . . . flows in a direction opposite to a
direction in which the second reactive gas flows ... to the second reactive
gas flow exhaust path.” Claim 1 (emphasis added); Spec. Fig. 1.
The Examiner, however, does not meaningfully address the
differences between the claimed invention and Goebel’s continuous
serpentine structure or adequately explain why one of ordinary skill would
have been motivated to modify Goebel’s structure to arrive at the claimed
invention.
The Examiner’s determination that it would have been obvious one of
ordinary skill to modify Goebel’s structure because “doing so would create a
fuel cell separator with the desired cooling flow paths, fuel and oxidant flow
paths, while minimizing the required distance between the adjacent
membrane electrode assemblies” (Ans. 18) is conclusory and, without more,
insufficient to sustain the Examiner’s obviousness conclusion and findings
in this regard. Kahn, 441 F.3d at 988 (Fed. Cir. 2006) (holding “rejections
on obviousness grounds cannot be sustained by mere conclusory
statements”).
The Examiner’s assertion that one of ordinary skill “could interpret”
Goebel’s serpentine channels to read on claim l’s in a direction opposite to a
direction limitation (Ans. 18) is also conclusory and equally insufficient to
satisfy the Examiner’s evidentiary burden in this regard. Oetiker, 977 F.2d
at 1445. As noted by Appellant (Reply Br. 3—5; App. Br. 12), the Examiner
does not identify or cite to any specific portions of Goebel—or elsewhere in
the record—that adequately support this assertion.
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Application 13/126,994
Accordingly, we reverse the Examiner’s rejection of claims 1—3 and
5—9 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Goebel and JP ’578.
DECISION
The Examiner’s rejections of claims 1—3 and 5—9 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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