Ex Parte Osborne et alDownload PDFPatent Trial and Appeal BoardDec 16, 201412355451 (P.T.A.B. Dec. 16, 2014) 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. 12/355,451 01/16/2009 Kurt David Osborne 81161874 6755 28395 7590 12/16/2014 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER WALLS, CYNTHIA KYUNG SOO ART UNIT PAPER NUMBER 1726 MAIL DATE DELIVERY MODE 12/16/2014 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 KURT DAVID OSBORNE and DONALD PAUL ALESSI ________________ Appeal 2013-001995 Application 12/355,451 Technology Center 1700 ________________ Before TERRY J. OWENS, ROMULO H. DELMENDO, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–17. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a modular fuel cell power system. Claim 1 is illustrative: 1. A modular fuel cell power system comprising: a plurality of fuel cell modules each including a fuel cell stack and a fluid distribution plant (i) in fluid communication with the fuel cell stack and (ii) configured to control the flow of reactant and air between reactant and air sources and the fuel cell stack, the fuel cell modules configured to selectively Appeal 2013-001995 Application 12/355,451 2 electrically connect the fuel cell stacks in parallel during certain periods and series during other periods. The References Zafred US 5,573,867 Nov. 12, 1996 Gorman US 6,127,057 Oct. 3, 2000 Colbow US 2002/0192513 A1 Dec. 19, 2002 IIo US 2003/0027024 A1 Feb. 3, 2006 Schafer US 2004/0166384 A1 Aug. 26, 2004 The Rejections The claims stand rejected as follows: claims 1–17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, claims 1 and 5 under 35 U.S.C. § 103 over Gorman in view of Schafer, claim 2 under 35 U.S.C. § 103 over Gorman in view of Schafer and Colbow, claims 3 and 4 under 35 U.S.C. § 103 over Gorman in view of Schafer and IIo, claims 6, 7, 10 and 11 under 35 U.S.C. § 103 over Gorman in view of Schafer and Zafred, claims 8 and 9 under 35 U.S.C. § 103 over Gorman in view of Schafer, Zafred and IIo, claims 12– 14 and 17 under 35 U.S.C. § 103 over Gorman in view of Schafer, Zafred and Colbow and claims 15 and 16 under 35 U.S.C. § 103 over Gorman in view of Schafer, Zafred, Colbow and IIo. OPINION We reverse the rejection under 35 U.S.C. § 112, first paragraph as to claims 1–5 and affirm it as to claims 6–17, and reverse the rejections under 35 U.S.C. § 103. Rejection under 35 U.S.C. § 112, first paragraph For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement, the applicant’s specification must “convey Appeal 2013-001995 Application 12/355,451 3 with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). The Examiner argues that “[t]he limitation in claims 1, 11 and 14 ‘in parallel during certain periods and series during other periods’ is not supported by the disclosure as filed” (Ans. 5). The Appellants’ Specification discloses that “[t]he fuel cell modules are configured to selectively electrically connect the fuel cell stacks in parallel or series” (Spec. 2:12–14), “[i]n the embodiment of Figure 2, the fluid distribution plants are arranged in parallel relative to the sources 136, 150, 154. In other embodiments, however, the fluid distribution plants 114 may be arranged in series relative to the sources 136, 150, 154” (Spec. 7:22– 26), “each of the fuel cell stacks 112 may be electrically connected in series, parallel or by-passed through operation of the switches 194, 196” (Spec. 8:28–31), and “[a]s illustrated in Figure 2, the switches 194, 196 are configured to electrically connect the fuel cell stacks 112 in parallel . . . . As apparent to those of ordinary skill, the switches 194, 196 may also be configured to electrically connect the fuel cell stacks 112 in series via the respective ‘A’ terminals” (Spec. 9, 1–3, 7–11). Each connection in parallel or series necessarily would last for some period. Hence, the Appellants’ Specification indicates that as of the Appellants’ filing date, the Appellants were in possession of fuel cell stacks connected parallel during certain periods and series during other periods. Appeal 2013-001995 Application 12/355,451 4 The Examiner argues that “[t]he limitation ‘a plurality of fuel cell modules each including a housing’ [claims 6 and 13] is not supported by the disclosure as originally filed. Figures [sic] 1 depicts a box around each fuel cell stack and fluid distribution system, but does not necessarily imply a housing” (Ans. 5). The Appellants argue that “[t]he use of the word ‘module,’ which to one of ordinary skill generally means self contained unit, together with the boxes of Figure 1 suggest housings” (Br. 3). The Appellants have not established that even if “module” means “self-contained unit,” Figure 1’s fuel cell module box (10) represents a housing rather than merely representing a self-contained unit. Accordingly, we reverse the rejection under 35 U.S.C. § 112, first paragraph, written description requirement as to independent claim 1 and its dependent claims 2–5 and affirm it as to independent claim 6, its dependent claims 7–12, independent claim 13 and its dependent claims 14–17. Rejections under 35 U.S.C. § 103 We need address only the independent claims (1, 6, and 13). Those claims require “fuel cell modules configured to selectively electrically connect the fuel cell stacks in parallel during certain periods and series during other periods” (claim 1), “the fuel cell stacks configured to be selectively electrically connected” (claim 6) and “the electrical switches arranged to selectively electrically connect at least some of the fuel cell stacks” (claim 13). The Examiner argues that “the limitation ‘in parallel during certain periods and series during other periods’ is a functional limitation in an Appeal 2013-001995 Application 12/355,451 5 apparatus and imparts intended use to the structural features of the product” (Ans. 15). That claim limitation is not mere intended use but, rather, requires structure that renders the modules capable of selectively electrically connecting the fuel cell stacks in parallel during certain periods and series during other periods. The Examiner argues that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to operate the fuel stacks in either series or in parallel depending on the power requirement of the intended application” (Ans. 6) and that “the system of Gorman in view of Schafer would be fully capable of functioning in either in [sic] series or parallel at various times” (Ans. 15). Those arguments are unpersuasive as lacking supporting evidence. We therefore reverse the rejections under 35 U.S.C. § 103. DECISION/ORDER The rejection of claims 1–17 under 35 U.S.C. § 112, first paragraph, written description requirement is reversed as to claims 1–5 and affirmed as to claims 6–17. The rejections under 35 U.S.C. § 103 of claims 1 and 5 over Gorman in view of Schafer, claim 2 over Gorman in view of Schafer and Colbow, claims 3 and 4 over Gorman in view of Schafer and IIo, claims 6, 7, 10 and 11 over Gorman in view of Schafer and Zafred, claims 8 and 9 over Gorman in view of Schafer, Zafred and IIo, claims 12–14 and 17 over Gorman in view of Schafer, Zafred and Colbow and claims 15 and 16 over Gorman in view of Schafer, Zafred, Colbow and IIo are reversed. It is ordered that the Examiner’s decision is affirmed-in-part. Appeal 2013-001995 Application 12/355,451 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART lp Copy with citationCopy as parenthetical citation