Ex Parte Pechtold et al

Patent Trial and Appeal Board

Apr 11, 2013

10843013 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAINER PECHTOLD and THORSTEN ROHWER
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Appeal 2011-000848
Application 10/843,013
Technology Center 3700
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Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 3, and 6-181. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The rejected claims are directed to a coolant reservoir, which may be
connected to a fuel cell stack, and which may react hydrogen within the
vessel with oxygen from outside air (Spec., [0001], [0004]). Claims 1 and 7
are the sole independent claims on appeal.
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A coolant reservoir, comprising:
a vessel having an inlet port and an outlet
port adapted to be connected to inlet coolant and
outlet coolant passages, respectively, of a coolant
system of a fuel cell;
a catalyst element disposed in said vessel,
said catalyst element being capable of reacting
hydrogen within said vessel with oxygen from
outside air;
a guard element around said catalyst element
to prevent coolant from contacting said catalyst
element, said guard element including a porous
protective layer surrounding said catalyst element;
and
wherein said catalyst element includes a
heating system for heating the catalyst element.

1 Our decision references Appellants’ Specification (“Spec.,” filed May 11,
2004), Appeal Brief (“App. Br.,” filed March 31, 2010), and Reply Brief
(“Reply Br.,” filed September 9, 2010), as well as the Examiner’s Answer
(“Ans.,” mailed July 14, 2010).

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THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 1, 3, and 6-18 are rejected under 35 U.S.C. § 102(b) as
anticipated by Adlhart (US 3,481,787, iss. Dec. 2, 1969);
Claims 1, 7, and 9-18 are rejected under 35 U.S.C. § 102(b) as
anticipated by Violante (US 5,366,712, iss. Nov. 22, 1994)2; and
Claims 1, 7, and 9-18 are rejected under 35 USC § 103(a) as
unpatentable over Rapp (US 3,699,032) in view of Violante3.
ANALYSIS
The Rejection of Claims 1, 3, and 6-18 as Anticipated by Adlhart
Appellants argue the rejection of independent claim 1, as anticipated
by Adlhart, is in error. Claim 1 includes the limitations of “a guard element
around said catalyst element to prevent coolant from contacting said catalyst
element.” The Examiner asserts non-catalytic substrate supports 9 and 10
correspond to the recited guard element (Ans. 4). Appellants argue that this
is incorrect because even if we assume, arguendo, “air (i.e., the cathode gas)
to be the coolant in Adlhart,” for the fuel cell of Adlhart to operate, air must

2 Although the Examiner’s Answer indicates only claims 9-18, which
depend from independent claims 1 and 7, are rejected as anticipated by
Violante, we note the Examiner identifies portions of Violante that disclose
limitations of the independent claims (Ans. 5). Appellants also treat the
rejection as including independent claims 1 and 7 (App. Br. 17). Thus, we
will treat claims 1 and 7 as also being rejected as anticipated by Violante.
3 Although the Examiner’s Answer indicates only claims 9-18, which
depend from independent claims 1 and 7, are rejected as unpatentable over
Rapp in view of Violante, we note the Examiner identifies portions of Rapp
that disclose limitations of the independent claims (Ans. 6-7). Appellants
also treat the rejection as including independent claims 1 and 7 (App. Br.
18). Thus, we will treat claims 1 and 7 as also being rejected as
unpatentable over Rapp in view of Violante.
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flow through non-catalytic substrate supports 9 and 10 (col. 2, ll. 36-39; col.
3, ll. 58-62). Thus, supports 9, 10 cannot correspond to the recited “guard
element around said catalyst element [that] prevent[s] coolant from
contacting said catalyst element” as required by claim 1 (App. Br. 13-14,
Reply. Br. 8). Thus, we reverse the rejection of independent claim 1 under
35 U.S.C. § 102(b) as anticipated by Adlhart.
Appellants argue the rejection of independent claim 7, as anticipated
by Adlhart, is in error. Claim 7 includes the limitation of “an electric
heating system coupled to said catalyst element that heats said catalyst
element to enable said catalyst element to react said hydrogen within said
vessel with oxygen from said outside air.” The Examiner finds the heating
system is disclosed by Adlhart, stating “[electrode] 6, [electrode] 7,
[conductive element] 23, [and conductive element] 24” corresponds to the
recited heating system, stating “electrical resistance of these elements leads
to heat” (Ans. 4). See also Ans. 15-16. Thus, it seems the Examiner finds
the recited electrical heating system is inherent in Adlhart. But, “[t]o
establish inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745, (Fed.
Cir. 1999) (citations omitted) (internal quotation marks omitted). The
Examiner’s Answer does not meet the burden of showing that the electrical
resistance of electrodes 6 and 7 and conductive elements 23 and 24 in
Adlhart necessarily heats the catalyst element, as required to correspond to
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the electrical heating system of claim 1. Thus, we reverse the rejection of
independent claim 7 under 35 U.S.C. § 102(b) as anticipated by Adlhart.
Claims 3, 6, and 8-18 depend from independent claims 1 and 7. Thus,
we reverse the rejection of claims 3, 6, and 8-18 under 35 U.S.C. § 102(b) as
anticipated by Adlhart, for the same reasons as claims 1 and 7.
The Rejection of Claims 1, 7, and 9-18 as Anticipated by Violante
With respect to independent claims 1 and 7, the Examiner identifies
portions of Violante that at least facially appear to correspond to each of the
limitation of claims 1 and 7 (Ans. 5). Appellants argue “Violante is also not
directed to a coolant reservoir and, therefore, does not anticipate each feature
of the claims” (App. Br. 17). However, Appellants have not submitted
detailed arguments as to why Violante may not be used as a coolant
reservoir. The portions of the ceramic catalytic membrane reactor of
Violante identified by the Examiner appear to at least be capable of being
used as a coolant reservoir, and “[i]t is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(citations omitted). Thus, we sustain the rejection of independent claim 1
under 35 U.S.C. § 102(b) as anticipated by Violante.
Appellants have not submitted separate arguments regarding claims 9-
18, which depend from independent claims 1 and 7. Therefore, we sustain
the rejection of claims 9-18 under 35 U.S.C. § 102(b) as anticipated by
Violante, for the same reasons as claims 1 and 7.
The Rejection of Claims 1, 7, and 9-18 as Obvious
With respect to each independent claims 1 and 7, the Examiner finds
Rapp discloses each of the claimed limitations except the claimed “heating
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system,” finds the “heating system” is disclosed by Violante, and presents
reasons for combining Rapp and Violante (Ans. 7). In response, Appellants
argue
Neither Rapp nor Violante is directed to a
coolant reservoir. . . . Instead of providing the
required reasoning in the present rejection, the
Office Action simply states that Rapp includes “a
vessel (10) capable of holding coolant (fluid 1)”.
There is no support for this assertion. Rapp is
directed to a “device for the control of agents in
fluids” generally. There is no discussion of any
relation to the claimed coolant reservoir
application. Applicants again note that claims 1
and 7 are directed to a coolant reservoir.

(App. Br. 18-19). However, the portions of Rapp identified by the Examiner
appear to at least be capable of being used as a coolant reservoir, and
Appellants have not submitted detailed arguments as to why this would be
inaccurate.
With respect to independent claim 7, Appellants additionally argue
The Office Action further notes that the
heating system of claim 7 is not disclosed by Rapp,
but would be obvious in view of Violante.
Applicants respectfully disagree since there is no
apparent purpose for the inclusion of the heating
system other than impermissible hindsight

We note, however, that contrary to Appellants’ statement, the Examiner
identifies the statement beginning in column 6, line 25, of Rapp as providing
motivation to combine the heater of Rapp with Violante, the motivation
being to heat a catalyst to a desired temperature (Ans. 7).
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Thus, we sustain the rejection of independent claims 1 and 7 under 35
U.S.C. § 103(a) as unpatentable over Rapp in view of Violante.
Appellants have not submitted separate arguments regarding claims 9-
19, which depend from independent claims 1 and 7. Therefore, we sustain
the rejection of claims 9-18 under 35 U.S.C. § 103(a) as unpatentable over
Rapp in view of Violante, for the same reasons as claims 1 and 7.
DECISION
The Examiner’s rejection of claims 1, 3, and 6-18 under 35 U.S.C.
§ 102(b) as anticipated by Adlhart is REVERSED;
The Examiner’s rejection of claims 1, 7, and 9-18 under 35 U.S.C.
§ 102(b) as anticipated by Violante is AFFIRMED; and
The Examiner’s rejection of claims 1, 7, and 9-18 under 35 U.S.C.
§ 103(a) as unpatentable over Rapp in view of Violante is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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