Ex Parte Rock

Board of Patent Appeals and Interferences

Sep 26, 2007

10136781 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEFFREY A. ROCK
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Appeal 2007-1687
Application 10/136,781
Technology Center 1700
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Decided: September 26, 2007
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Before BRADLEY R. GARRIS, THOMAS A. WALTZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Examiner’s decision
rejecting claims 1-3, 5-21, 23, 24, 26, and 28-34. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.
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Appellant claims an electro-chemical fuel cell stack and a method for
the manufacture thereof. The fuel cell stack 20 comprises a plurality of fuel
cells 22 arranged in a stacked configuration to form a fuel cell assembly 24,
first and second end plates 45, 58 disposed on the first and second ends of
the fuel cell assembly, and at least one side plate 36 attached to the
peripheral sidewall of the end plates and holding the end plates in a spaced
relation such that the end plates impart a compressive force on the fuel cell
assembly (claim 1, figs. 1-2).
Representative claims 1, 17, and 32 are reproduced below.
1. An electro-chemical fuel cell stack, the stack comprising:
a plurality of fuel cells arranged in a stacked configuration to
form a fuel cell assembly, said fuel cell assembly having opposite first and
second ends with a length therebetween, said first and second ends
corresponding to major planar surfaces of said fuel cell assembly;
first and second end plates, said first and second end plates
being disposed respectively on said first and second ends of said fuel cell
assembly with a major surface of each of said first and second end plates
substantially parallel with said major planar surfaces of said fuel cell
assembly, and each of said first and second end plates having a peripheral
side wall that is substantially parallel to said length of said fuel cell
assembly; and
at least one side plate having opposite first and second ends that
are attached respectively to said peripheral side wall of said first and second
end plates, said attachment of said at least one side plate to said end plates
providing continuous adjustability as to an overlap between said at least one
side plate and at least one of said end plates, said at least one side plate
holding said first and second end plates in a spaced relation so that at least a
planar portion of said major surface of each of said first and second end
plates imparts a compressive force on said fuel cell assembly.
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17. A method of making an electro-chemical fuel cell stack, the
method comprising the steps of:
positioning a fuel cell assembly between first and second end
plates with a first end of said fuel cell assembly substantially parallel to and
adjacent a major surface of said first end plate and a second end of said fuel
cell assembly substantially parallel to and adjacent a major surface of said
second end plate;
applying an external compressive force to at least one of said
end plates so that said fuel cell assembly is compressed by at least a planar
portion of said major surface of each of said end plates;
establishing an overlap between said at least one side plate1 and
at least one of said end plates, said overlap being continuously adjustable;
attaching at least one side plate to a peripheral side wall of said
first and second end plates with first and second ends of said at least one side
plate being attached to said first and second end plates respectively so that
said first and second end plates remain in a fixed spaced relation with said
established overlap and said fuel cell assembly remains compressed when
said external compressive force is removed; and
removing said external compressive force from said end plates.
32. An electro-chemical fuel cell stack comprising:
a fuel cell assembly having opposite first and second ends with
a length therebetween, said first and second ends corresponding to major
planar surfaces of said fuel cell assembly;
a first end assembly disposed on said first end of said fuel cell
assembly, said first end assembly having a first end plate with a major
surface substantially parallel with said planar surface of said first end of said
fuel cell assembly;

1 This claim 17 phrase “said at least one side plate” lacks antecedent basis.
This informality should be corrected in any further prosecution that may
occur.
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a second end assembly disposed on said second end of said fuel
cell assembly, said second end assembly having a second end plate with a
major surface substantially parallel with said major planar surface of said
second end of said fuel cell assembly; and

at least one side plate having opposite first and second ends that
are respectively attached to a side wall of said first and second end plates,
said attachment allowing a continuous range of overlap between said at least
one side plate and at least one of said end plates, said at least one side plate
holding said first and second end plates in a spaced relation so that at least a
planar portion of each of said major surfaces of said first and second end
plates imparts a compressive force on said fuel cell assembly through said
first and second end assemblies.
The following references are relied upon by the Examiner as evidence
of anticipation and obviousness:
Gelting US 3,476,609 Nov. 4, 1969
Edwards US 3,541,595 Nov. 17, 1970
Okamoto US 5,419,980 May 30, 1995
Hanrahan EP 0 860 834 A2 Aug. 26, 1998
Vitale US 5,981,098 Nov. 9, 1999
Bisaka US 2002/0034673 A1 Mar. 21, 2002
All of the appealed claims are rejected under the first paragraph of
35 U.S.C. § 112 as lacking enablement.
Claim 32 is rejected under 35 U.S.C. § 102(e) as being anticipated by
Bisaka.
Claims 17-21, 23, 24, 26, and 28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bisaka in view of Edwards.
Finally, claims 1-3, 5, 6, 8-11, 13, 14, 16, 29-31, 33, and 34 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Vitale in view
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of Bisaka and Edwards; and claims 7, 12, and 15 are correspondingly
rejected over these references and further in view of Gelting, Okamoto, and
Hanrahan respectively.
THE § 112, FIRST PARAGRAPH, REJECTION
According to the Examiner, “the [S]pecification, while being enabling
for providing the continuous height adjustability for the top end plate as
shown in Fig. 1, does not reasonably provide enablement for this
arrangement for the bottom end plate” (Answer 3). The Examiner further
explains that “[t]he bottom end plate is shown and disclosed as only
providing a fixed positioning of the end plate and does not teach or suggest
of [sic] the adjustability as defined in the claims” (id.).
Contrary to the Examiner’s belief, none of the independent claims on
appeal require continuous adjustability at the bottom (or second) end plate,
and independent claim 32 does not require adjustability at either the top
(first) or bottom (second) end plates. In any event, as correctly argued by
Appellant (Appeal Br. 15; Reply Br. 2-3),2 the Specification enables
continuous adjustability at both end plates by expressly teaching that the slot
openings 78, which provide continuous adjustability, are disposed in “either
the first and/or second ends 72, 74 of each side plate 36” (Specification
14:4-5).
Under these circumstances, the § 112, first paragraph, rejection of all
claims cannot be sustained.

2 The Examiner inappropriately has failed to even acknowledge much less
rebut this argument.
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THE § 102 REJECTION
The Examiner finds that the claim 32 fuel cell stack is anticipated by
Bisaka’s fuel cell stack shown in figures 1 and 7 (Answer 4-5). This finding
is erroneous.
Claim 32 requires “said at least one side plate holding said first and
second end plates in a spaced relation so that at least a planar portion of each
of said major surfaces of said first and second end plates imparts a
compressive force on said fuel cell assembly through said first and second
end assemblies.” This requirement is not satisfied by the fuel cell stack of
Bisaka. As shown in figure 7 of Bisaka, compressive force on the fuel cell
assembly is imparted by concave portion 27 of end plate 22A rather than the
planar portion of end plate 22A. Indeed, a gap exists between the inboard
planar portion of end plate 22A and the fuel cell assembly of Bisaka (Bisaka
4, ¶ [0061]; fig. 7). It is, therefore, impossible for this inboard planar
portion to impart compressive force on the fuel cell assembly as required by
claim 32.
For this reason, we cannot sustain the § 102 rejection of claim 32 as
being anticipated by Bisaka.
THE § 103 REJECTION BASED ON BISAKA AND EDWARDS
The Examiner has correctly found that claim 17 distinguishes from
Bisaka by requiring that the overlap between the at least one side plate and
the at least one end plate is “continuously adjustable” (Answer 7). In
Bisaka, the corresponding overlap is achieved via serration 29 which
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includes teeth coupling structure on the end plate 22 and the tension plate 24
(Bisaka 4, ¶ [0067]) whereby positional adjustment of an amount smaller
than the pitch of the teeth is impossible (Bisaka 4, ¶ [0069]). That is to say,
the adjustment is not continuous but, instead, is limited to discrete amounts
no smaller than the teeth of serration 29.
The Examiner relies on Edwards to supply the above-noted deficiency
of Bisaka. In this regard, the Examiner finds that “Edwards discloses
providing side plates having elongated slots 15 through which fastening
bolts are disposed (Figs. 1 and 4)” and that “[t]he elongated slots provide for
variances in height of the stack” (Answer 7). According to the Examiner, “it
would have been obvious to one of ordinary skill in the art at the time the
claimed invention was made to modify the teachings of Bisaka by replacing
the indexing feature [i.e., the teeth coupling structure of serration 29] of the
end plates and side plates with a continuous adjustment means [i.e., the
elongated slots and fastening bolts of Edwards] since it would have provided
a greater control of the compressive force on the stack” (id. at 7 and 20).
The Examiner’s obviousness conclusion is not supported by the
applied reference evidence. While it is true that Edwards discloses
elongated slots or holes 15 and fastening bolts or screws 14 (Edwards, col. 3,
ll. 40-46), these elements are for attaching the inlet/outlet plate 13 to the
plate and membrane stack of Patentee’s blood oxygenator (Edwards,
Abstract, col. 3, ll. 26-28 and 44-46). Significantly, these elongated holes 15
and screws 14 do not provide the stack compression function performed by
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serration 29 of Bisaka’s fuel cell stack or by the continuously adjustable
overlap of the fuel cell stack made in accordance with the method of claim
17. Instead, the function of applying compression or clamping pressure to
Edwards’ blood oxygenator stack is performed by bolts 12 (col. 3, ll. 28-30).
Under these circumstances, we agree with Appellant that the applied
references contain no teaching or suggestion of replacing Bisaka’s serration
29 with a continuously adjustable feature as required by claim 17. On this
record, it is unknown whether the elongated holes 15 and screws 14 of
Edwards would be even capable of performing the stack compression
function of Bisaka’s serration 29. For all we know, the elongated holes and
screws of Edwards would be incapable of effecting the result of Bisaka’s
teeth coupling structure whereby the end plate 22 and the tension plate 24
are attached so as to avoid any slippage relative to each other (Bisaka 4,
¶ [0067], last sentence).
In light of the foregoing, we cannot sustain the § 103 rejection of
claims 17-21, 23, 24, 26,3 and 28 as being unpatentable over Bisaka in view
of Edwards.

3 This rejection is further inappropriate as applied against dependent claims
23, 24, and 26. As correctly pointed out by Appellant (Appeal Br. 30), these
claims depend from non-rejected independent claims 1 or 10. Even more
inappropriately, the Examiner in the Answer does not even respond to the
Appellant’s point much less provide any explanation of why this rejection of
dependent claims but not their parent claims is proper.
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THE REMAINING § 103 REJECTIONS
In these remaining rejections, all of the Examiner’s proposed
combinations of the applied references are fundamentally based upon the
above-discussed combination of Bisaka and Edwards as an attempt to
achieve the continuous adjustability feature of independent claim 1 and the
non-discrete adjustability feature of independent claim 10. For reasons
analogous to those previously explained, Bisaka and Edwards are
evidentially inadequate to support an obviousness conclusion with respect to
these claim features.
Therefore, we also cannot sustain the § 103 rejection of claims 1-3, 5,
6, 8-11, 13, 14, 16, 29-31, 33, and 34 as being unpatentable over Vitale in
view of Bisaka and Edwards or the corresponding rejections of claims 7, 12,
and 15 as being unpatentable over these references and further in view of
Gelting, Okamoto, and Hanrahan respectively.
CONCLUSION
The decision of the Examiner is reversed.
REVERSED

clj

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