Ex Parte Ramaswamy et al

Patent Trial and Appeal Board

Feb 25, 2016

12448666 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/448,666 0612912009 Sitaram Ramaswamy
136767 7590 02/29/2016
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
P99188US.0/130609.433USPC 9984
EXAMINER
MARKS, JACOB B
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
Patentinfo@SeedIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SITARAM RAMASWAMY, MARGARET M. STEINBUGLER
and LESLIE L. VAN DINE
Appeal2014-006074
Application 12/448,666
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 15-30. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants' invention is directed to a fuel cell power plant. App. Br.
1-3. Claim 15 is illustrative of the subject matter on appeal and is
reproduced below:
Appeal2014-006074
Application 12/448,666
15. A fuel cell power plant (10) comprising:
a primary fuel cell stack (11) having a predetermined
type of electrolyte; characterized by:
an auxiliary fuel cell stack (12), having the same type of
electrolyte as said predetermined type of electrolyte of said
primary fuel cell stack, not connected in serial voltage
relationship with said primary fuel cell stack;
means (28, 108-110) configured to couple fuel exhaust
of said primary fuel cell stack to a fuel inlet of said auxiliary
fuel cell stack; and
means ( 65) configured to operate said primary fuel cell
stack and said auxiliary fuel cell stack in a manner that avoids
fuel starvation in said primary fuel cell stack and that results in
substantially all of the fuel provided to said primary fuel cell
stack being consumed by said fuel cell stacks without regard to
exposing said auxiliary fuel cell stack to fuel starvation.
Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner's Final Action:
I. Claims 15 and 28-30 rejected under 35 U.S.C. § 103(a) as
unpatentable over MacBain et al. (US 2006/0172176 Al, published August
3, 2006) (hereinafter "MacBain") and Mitchell et al. (US 2005/0106445 Al,
published May 19, 2005) (hereinafter "Mitchell").
II. Claims 16-19 rejected under 35 U.S.C. § 103(a) as
unpatentable over MacBain, Mitchell and Ozeki et al. (US 2005/0048330
Al, published March 3, 2005) (hereinafter "Ozeki").
III. Claims 20-22 rejected under 35 U.S.C. § 103(a) as
unpatentable over MacBain, Mitchell and Luken et al. (US 2002/0094463
Al, published July 18, 2002) (hereinafter "Luken").
IV. Claims 23-27 rejected under 35 U.S.C. § 103(a) as
unpatentable over MacBain, Mitchell and Summers et al. (US 2004/0241504
Al, published December 2, 2004) (hereinafter "Summers").
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Application 12/448,666
In addition, the Examiner introduced the following new ground of
rejection in the Answer (Ans. 6):
V. Claims 15-30 rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
OPINION
We AFFIRM.
New Ground of Rejection under 35 U.S.C. § 112, secondparagraph1, 2
We REVERSE the Examiner's new ground of rejection of claim 15
under 35 U.S.C. § 112, second paragraph, (Rejection V; Ans. 6) for the
reasons presented by Appellants.
The Examiner found the term "means configured to operate" in
independent claim 15 indefinite because the Specification only recites a
controller and does not provide further structure, such as a CPU
programmable perform an operation. Ans. 6. Thus, the Examiner found one
of ordinary skill in the art would not be able to identify the structure of a
controller for operating (means configured to operate) the primary and
auxiliary fuel cell stack in a manner that avoids fuel starvation because such
a controller could be electronic, mechanical, or possibly performed by hand.
Id.
1 Appellants filed a Reply Brief on April 16, 2014 addressing the new
ground of rejection under 35 U.S.C. § 112, second paragraph, within the
time prescribed by 37 C.F.R § 41.41(a).
2 We limit our discussion to independent claim 15.
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Application 12/448,666
We disagree. As noted by Appellants, the Specification discloses a
controller using signals from sensors to monitor and adjust the fuel flow
through the fuel cells. Reply Br. 4--5; Spec. 6. Moreover, Figure 2 of the
Specification describes how the controller interconnects with the sensors and
other components to provide signals to the valves controlling the fuel flow
through the fuel cells. Spec. 5. Therefore, based on Appellants' disclosure,
the "means configured to operate" the fuel cells is a programmable
electronic device that sends electrical signals to determine how to control the
fuel flow through the primary and auxiliary fuel cells to maximize fuel
utilization. Such devices, as acknowledged by Appellants and illustrated by
Luken and Summers, are known to those skilled in the art. Reply Br. 3;
Spec. 5---6; Luken i-f 12; Summers Figure 1, i-fi-135, 36, 44.
Accordingly, we reverse the Examiner's 35 U.S.C. § 112, second
paragraph rejection of claims 15-30.
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Appeal2014-006074
Application 12/448,666
Prior Art Rejections3
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejection of claims 15
and 28-30 rejected under 35 U.S.C. § 103(a) as unpatentable over MacBain
and Mitchell (Rejection I) for the reasons presented by the Examiner. We
add the following for emphasis.
Independent claim 15 is directed to a fuel cell power plant comprising
primary and auxiliary fuel cells stacks that uses a means configured to
operate the primary and auxiliary fuel cell stacks to maximize fuel utilization
in a manner that avoids fuel starvation in the primary fuel cell stack while
ensuring that substantially all of the fuel provided to the primary fuel cell
stack is consumed by the primary and auxiliary fuel cell stacks.
The Examiner found MacBain discloses optimizing fuel utilization in
fuel cells by using an arrangement of at least two fuel cells 111 a, 111 b
\vherein the exhaust 124a of one fhel cell feeds the inlet of the other. Final
Act. 2; MacBain Figure 2, i-fi-f l, 32-34.4 The Examiner also found MacBain
3 In Rejection I, Appellants present arguments for independent claim 15 and
rely on the same arguments in addressing dependent claims 28 and 29. App.
Br. 3. Appellants also presents separate arguments for dependent claim 30.
Id. In addition, Appellants rely on the arguments presented when discussing
claim 15 to address the separate rejections of claims 16-27 (Rejections H-
IV). Id. at 6. Accordingly, we select independent claim 15 as representative
of the subject matter on appeal and focus our discussion on Rejection I.
Claims 16-29 will stand or fall with independent claim 15. The separate
arguments for claim 30 will be addressed separately.
4 A discussion of the secondary reference to Mitchell is unnecessary for
disposition of this rejection. Mitchell was not relied upon by the Examiner
to address the claimed means configured to operate a primary fuel cell stack
and an auxiliary fuel cell stack. The Examiner relied on this reference only
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Appeal2014-006074
Application 12/448,666
uses a controller 597 to control the fuel utilization in the fuel cells. Final
Act. 3; MacBain Figures 3, 8, i-fi-132-34. The Examiner further found the
first fuel cell in Mac Bain' s system would experience less anode starvation
than the second fuel cell in view of the fuel feed arrangement. Final Act. 3.
The Examiner found MacBain does not specifically disclose that
substantially all of the fuel is consumed. Id. The Examiner found MacBain
discloses the point of having a second pass of the exhausted fuel is to
increase the fuel efficiency. Final Act. 3; MacBain i-fi-f 15-16. The Examiner
concluded it would have been obvious to one of ordinary skill in the art to
make the fuel efficiency as high as possible such that substantially all the
fuel is consumed. Final Act. 3.
Appellants argue there is no disclosure of any fuel controller in
MacBain and that the prior art does not suggest a means configured to
operate a primary fuel cell stack and an auxiliary fuel cell stack as claimed.
App. Br. 3--4.
We are unpersuaded by this argument for the reasons presented by the
Examiner. Ans. 7-8. Moreover, control of fuel flow through fuel cell stacks
is implied in MacBain's disclosure of optimizing fuel utilization. MacBain
i-fi-f l, 8, 15. As acknowledged by Appellants, one skilled in the art would
understand the principal functions of a fuel cell power plant controller.
Reply Br. 3--4; Luken i-f 12. Thus, Appellants have not adequately explained
why one skilled in the art would not understand that MacBain' s fuel cell
to teach that connection of fuel cells in series or parallel arrangements are
well known in the art. Final Act. 3; Mitchel i188. See Appeal Brief,
generally.
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Application 12/448,666
arrangement includes a fuel flow controller operable to maximize fuel
utilization in Mac Bain' s fuel cell arrangement. Furthermore, Appellants
have not adequately explained why one skilled in the art would not have
been capable of incorporating a controller in the fuel cell arrangement of
Mac Bain to maximize the fuel utilization in Mac Bain' s fuel cell
arrangement. MacBain i-fi-f l, 8; see In re Sovish, 769 F.2d 738, 743 (Fed.
Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art);
In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Appellants additionally argue the cited art does not teach operating the
fuel stacks without regard to exposing the auxiliary fuel cell stack to fuel
starvation as required by the subject matter of claims 15 and 30. App. Br. 5-
6.
We find this argument also unavailing for the reasons presented by the
Examiner. Final Act. 2-3. Moreover, the language of the claims does not
require that the auxiliary fuel cell stack be operated to the point of fuel
starvation. Instead, the claims only require the auxiliary fuel cell stack be
capable of operation to the effects of fuel starvation. Given that the claims
do not require operating the auxiliary fuel cell stack to the point of fuel
starvation, Appellants have not adequately explained why MacBain's second
fuel cell is distinct from the claimed auxiliary fuel cell stack.
Accordingly, we affirm the Examiner's prior art rejections of claims
15-30 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.
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Appeal2014-006074
Application 12/448,666
ORDER
The Examiner's rejection of claims 15-30 under 35 U.S.C. § 112,
second paragraph (Rejection V) is reversed.
The Examiner's prior art rejections of claims 15-30 under 35 U.S.C.
§ 103(a) (Rejections I-IV) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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