Ex Parte Ramani et al

Board of Patent Appeals and Interferences

Nov 21, 2008

10741223 (B.P.A.I. Nov. 21, 2008)

NITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANIKANDAN RAMANI,
DAVID J. BODNER,
MATTHEW W. MILLER,
MARIE A. SCHNITZER, and
RICHARD N. MIKLAS
____________

Appeal 2008-4860
Application 10/741,223
Technology Center 1700
____________

Decided: November 21, 2008
____________

Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
ROMULO H. DELMENDO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 4, 5, 8, 10, 14-16,
20, 21, 24, 26, and 30-35. Claim 16 is illustrative:

Appeal 2008-4860
Application 10/741,223

16. A method of treating a fuel cell, comprising:

contacting a first gas comprising hydrogen gas and water to an anode
of the fuel cell;

simultaneously with contacting the first gas, contacting a second gas
comprising hydrogen gas and water to a cathode of the fuel cell, wherein the
second gas is contacted to the cathode at a higher pressure than the first gas
is contacted to the anode; and

applying a potential difference between the anode and the cathode, the
cathode being negative relative to the anode so that hydrogen is formed at
the cathode.

The Examiner relies upon the following references as evidence of
obviousness:
Maru US 4,362,788 Dec. 7, 1982
Pettit US 6,232,005 B1 May 15, 2001
Donahue US 6,399,231 B1 Jun. 4, 2002
Jia US 2003/0224226 A1 Dec. 4, 2003
Voss US 2003/0224227 A1 Dec. 4, 2003

Appellants' claimed invention is directed to a method of treating a fuel
cell comprising contacting the anode and cathode of the cell with first and
second gases, respectively. The first gas comprises hydrogen and water and
the second gas comprises either hydrogen or nitrogen and water. The second
gas which contacts the cathode is at a higher pressure than the gas which
contacts the anode.
Appealed claims 4, 5, 8, 10, 14, 16, 20, 21, 24, 26, 30, 32, and 33
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Donahue
in view of Jia and Maru. Claims 15 and 31 stand rejected under § 103 as
2
Appeal 2008-4860
Application 10/741,223

being unpatentable over the stated combination of references further in view
of Voss, while claims 34 and 35 stand rejected under § 103 as being
unpatentable over the stated combination of references further in view of
Pettit.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejection.1
There is no dispute that Donahue, like Appellants, discloses a method
of treating a fuel cell comprising the claimed features with the exception of
not specifying that the gas contacting the cathode is at a higher pressure than
the gas contacting the anode. Appellants do not contest the obviousness of
including water in the treatment gases of Donahue. The Examiner cites
Maru as evidence for the obviousness of employing a higher pressure for the
gas contacting the cathode whereas Appellants maintain that Maru is not
combinable with Donahue since it is directed to operating a fuel cell by
contacting the cathode with an oxygen gas, such as air.
It is by now well settled that where patentability is predicated upon a
change in a condition of a prior art process, such as change in concentration,
temperature, pressure or the like, the burden is on the applicant to establish
with objective evidence that the change is critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990);

1 Appellants submit that "claims 4, 5, 8, 10, 14-16, 20, 21, 24, 26, and 30-35
stand or fall together" (Principal Br. 3, last para.). Also, Appellants do not
present separate substantive arguments against the § 103 rejections citing
Voss and Pettit.
3
Appeal 2008-4860
Application 10/741,223

In re Ranier, 377 F.2d 1006, 1010 (CCPA 1967); In re Aller, 220 F.2d 454,
456 (CCPA 1955). In the present case, Appellants have presented no
evidence that methods within the scope of the appealed claims, i.e., methods
wherein the gas contacting the cathode is at only a slightly higher pressure
than the pressure of the gas contacting the anode, produce unexpected
results. The appealed claims do not specify any specific value for the
pressure differential between the gases contacting the cathode and anode,
and Appellants' Specification only states that "the second gas can be
introduced at a higher pressure (e.g., from about 1 to about 10 psig)" (Spec.
8, ll. 15 et seq.). Hence, in the absence of any evidence that contacting the
cathode at a gas pressure of only 0.1 psig, or even 1 psig, higher than the gas
pressure contacting the anode, Appellants have not carried their burden of
rebutting the prima facie obviousness of methods within the scope of the
appealed claims. We find that Maru simply provides additional evidence
that it was known in the art to treat a fuel cell by contacting the anode and
cathode with gases at different pressures.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims 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)(1)(iv)(effective
Sept. 13, 2004).
AFFIRMED

cam
4
Appeal 2008-4860
Application 10/741,223

FISH & RICHARDSON, PC
P. O. BOX 1022
MINNEAPOLIS MN 55440-1022
5