Ex Parte Rea et al

Patent Trial and Appeal Board

Aug 30, 2016

12840030 (P.T.A.B. Aug. 30, 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.
12/840,030 07/20/2010 David D. Rea P006884-FCA-CHE 9365
65798 7590 08/31/2016
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
ROBBINS, JERRY D
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
08/31/2016 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 DAVID D. REA and KENNETH L. KAYE
____________

Appeal 2015-002511
Application 12/840,030
Technology Center 2800
____________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
LINZY T. McCARTNEY, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
This invention is directed to a system for monitoring fuel cells in a
fuel cell group. See Abstract. Claim 1 is representative of the invention and
reproduced below.
1. A system for monitoring fuel cells in a fuel cell
group, said system comprising:
at least one sensor circuit for monitoring a
condition of the fuel cells in the fuel cell group;
Appeal 2015-002511
Application 12/840,030

2
a tone generator for applying a frequency
signal to the cell group if the sensor detects the
condition, wherein the at least one sensor circuit and
the tone generator are embedded in a fuel cell stack;
and
a tone decoder for detecting the frequency
signal from the cell group
generated by the tone generator.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 4, 6 through 13, 15, and
16 under 35 U.S.C. § 103(a) as unpatentable over Vandensande et al. (US
2008/0143543A1; June 19, 2008) and Fleckner (US 6,589,682 B1; July 8,
2003). Ans. 2–11.1
The Examiner has rejected claims 5, 14, and 17 through 20 under
35 U.S.C. § 103(a) as unpatentable over Vandensande et al., Fleckner and
Otomaru (US 2010/0151344 A1; June 17, 2010). Ans. 11–17.

ISSUES
Independent claims 1 and 11
Appellants’ arguments directed to claims 1 and 11 on pages 7
through 11 of the Appeal Brief and pages 2 through 3 of the Reply Brief,
directed to the Examiner’s rejection claim 1 present us with the following
issues:

1 Throughout this Decision, we refer to the Appeal Brief dated October 3,
2014; the Reply Brief dated Jan. 5, 2015; and the Examiner’s Answer mailed
Nov. 6, 2014.

Appeal 2015-002511
Application 12/840,030

3
a) Did the Examiner err in finding the combination
Vandensande et al. and Fleckner of teaches a sensor circuit
and tone generator embedded in the fuel cell stack as
recited in representative claim 1?
b) Did the Examiner err in combining Vandensande and
Fleckner?
Dependent Claim 8
Appellants present separate arguments directed to claim 8, on page
12 of the Appeal Brief. These arguments present us with the following
issue:
c) Did the Examiner err in finding the combination
Vandensande et al. and Fleckner teaches a filter for filtering
out the cell group voltage from the sensor signal and
providing the frequency signal to the tone decoder as
recited in claim 8?
Dependent claim 17
Appellants present several arguments directed to dependent claim 17,
on pages 13 and 16 of the Appeal Brief. The dispositive issue presented by
these arguments is the same argument as discussed above with respect to
claim 8.

ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief and the
Reply Brief, the Examiner’s rejections, and the Examiner’s response to
Appellants’ arguments. Appellants’ arguments have persuaded us of error in
the Examiner’s rejection of claims 8, and 17 through 20. However, we are
Appeal 2015-002511
Application 12/840,030

4
not persuaded of error in the rejection of claims 1 through 7, and 9 through
16.

Claim 1
Appellants’ arguments concerning the first issue are directed to the
teachings of Fleckner and assert that Fleckner does not teach the claimed
tone generator embedded into the fuel cell stack. App. Br. 8. Further,
Appellants assert that Fleckner’s teaching of embedding a monitoring circuit
requires nanotubes to work and that Appellants’ claim does not require
nanotubes. App Br. 8–10, Reply Br. 2–3. The Examiner has provided a
comprehensive response to this argument, finding that Fleckner is relied
upon to teach embedding monitoring circuity in the fuel cell stack, which is
not limited to just nanotubes. Answer 2–4. Further, the Examiner relies
upon Vandensande to teach the claimed tone generator. Answer 3–4. We
concur with the Examiner and are not persuaded of error by Appellants’
arguments. We note that Fleckner teaches that the sensing circuitry is
embedded in the fuel flow plate (FFP), which is part of the fuel cell stack
(See col 10, ll. 29–33, and col. 5, ll. 57–63). We also note Appellants’
claims do not preclude a fuel cell with nanotubes. Thus, we are not
persuaded of error by Appellants’ arguments directed to the first issue.
Appellants’ arguments directed to the second issue are similarly
directed to Fleckner and assert that since the teachings are directed to
specific circuity and a cell with nanotubes it is not obvious to use a tone
generator embedded in the stack as claimed. We are not persuaded of error
by this argument. As discussed above, the Examiner has found, and we
agree, that Fleckner teaches embedding the sensing circuity in the fuel cell
Appeal 2015-002511
Application 12/840,030

5
stack. Appellants’ claims do not preclude the fuel cell from containing
nanotubes. Further, the Examiner finds that Vandensande teaches another
method of monitoring the fuel cell, i.e. substituting Vandensande’s
monitoring circuit into Fleckner’s cell, that is nothing more than using a
known monitoring circuit to perform its known function. As these two
arguments are the only arguments directed to claim 1, we sustain the
Examiner’s rejection of claim 1 and claims 2 through 4, 6, 7, 9 through 13,
15, and 16.
We note that Appellants identifies limitations of claim 11 and asserts
they are not taught by the prior art. App. Brief pages 11 and 12. Such
statements are not separate arguments. See 37 C.F.R. § 41.37(c)(iv) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Thus, we are not presented with additional issues with respect to claim 11.

Appellants’ arguments directed to claim 5 and 14 on page 13 of the
Answer, assert that the rejection is in error for the same reasons as claims 1
and 11. As Appellants have not persuaded us of error in the rejection of
claims 1 and 11, we similarly sustain the Examiner’s rejection of these
claims.
Appeal 2015-002511
Application 12/840,030

6
Dependent Claim 8,
Appellants’ arguments directed to claim 8, assert that Vandensande,
does not teach the claimed filter. App. Br. 12. The Examiner finds that the
comparator in Vandensande’s system, discussed in paragraph 69, performs
the claimed function. Ans. 6. We have reviewed the teachings of
Vandensande and disagree with the Examiner, as it does not teach the
claimed filter. Accordingly, we are persuaded of error in the Examiner’s
rejection of claim 8.

Dependent claim 17
Claim 17 recites a limitation directed to a filter for filtering out the
cell group voltage, similar to that discussed above with respect to claim 8.
Accordingly, we do not sustain the Examiner’s rejection of claims 17
through 20 for the same reasons as discussed with respect to claim 8.

DECISION
We sustain the Examiner’s rejections of claims 1 through 7, and 9
through 16 under 35 U.S.C. § 103(a).
We do not sustain the Examiner’s rejections of claims 8, and 17
through 20 under 35 U.S.C. § 103(a).
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).

AFFIRMED-IN-PART