Ex Parte Saito et al

Board of Patent Appeals and Interferences

Aug 31, 2007

10715458 (B.P.A.I. Aug. 31, 2007)

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not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORIHIKO SAITO and
MASAAKI KONDO
____________

Appeal 2007-3378
Application 10/715,458
Technology Center 1700
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Decided: August 31, 2007
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2007-3378
Application 10/715,458

I. BACKGROUND
The invention relates to a diagnostic method and apparatus for
diagnosing the state of a fuel cell. The method serves to diagnose
abnormalities occurring in the operation of the fuel cell (Specification ¶
0005). Claim 16 illustrates the method on appeal:
16. A diagnostic method for a fuel cell, which is a method for
diagnosing a state of the fuel cell, includes the steps of:

(a) operating the fuel cell according to at least one predetermined
operation pattern, the predetermined operation pattern to apply at least one
predetermined operating condition to change an operational state of the fuel
cell;

(b) detecting a change in an operational state of the fuel cell
corresponding to each of the operation patterns when the fuel cell is operated
according to the at least one predetermined operation pattern; and

(c) diagnosing the state of the fuel cell based on the detected change
in the operational state and the at least one predetermined operation pattern.

The apparatus is claimed as an operation device and “portions”
performing functions corresponding to the method.
The Examiner relies upon the following prior art references to show
unpatentability:
Fuglevand US 6,096,449 Aug. 1, 2000
Iwasaki US 6,447,939 B1 Sep. 10, 2002
Yoshizawa US 2003/0003334 A1 Jan. 2, 2003
Bai US 6,620,538 B2 Sep. 16, 2003

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Application 10/715,458

The Examiner rejects the claims as follows:
1. Claims 1-7, 11, and 16-19 under 35 U.S.C. § 102(b) as
anticipated by Fuglevand;1
2. Claims 8-10 under 35 U.S.C. § 103(a) as unpatentable over
Fuglevand in view of Bai;
3. Claims 12-14 under 35 U.S.C. § 103(a) as unpatentable over
Fuglevand in view of Iwasaki; and
4. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Fuglevand in view of Iwasaki and Yoshizawa.

II. DISCUSSION
With regard to the anticipation rejection over Fuglevand, Appellants
contend that Fuglevand does not disclose operating the fuel cell “according
to at least one predetermined operation pattern, the predetermined operation
pattern to apply at least one predetermined operation condition to change an
operation state of the fuel cell” as recited in claims 1 and 16 (Br. 5). On the
other hand, the Examiner contends that the Fuglevand cell operates in the
claimed matter (Answer 3). The issue on appeal arising from the
contentions of Appellants and the Examiner is: Does a preponderance of the
evidence support the Examiner’s finding that Fuglevand describes operating
the fuel cell in the claimed manner?

1 Appellants’ listing of the rejection as under 35 U.S.C. § 103(a) in the
section of the Brief labeled “Grounds of Rejection to be Reviewed on
Appeal” (Br. 5) is harmless error as Appellants argue, in the argument
section of the Brief, that Fuglevand does not teach each and every limitation
of the rejected claims, an argument consistent with the law of anticipation.
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Application 10/715,458

Appellants do not present separate arguments for any claim apart from
the others and, therefore, we select one claim as representative. We select
claim 16.
In order to revolve the issues on appeal, it is first necessary to
understand the scope of the claims, and specifically to understand the scope
of the phrases “predetermined operation pattern” and “operational state.” To
interpret these phrases we seek guidance from the Specification. During
examination, "claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004).
First, we find that the Specification provides no specific definition for
the phrases at issue, nor any clear disavowal of meaning that would be
attributed to the phrases by those of ordinary skill in the process control art.
See Phillips v. AWH Corp., 415 F.3d 1303, 1315-316, 675 USPQ2d 1321,
1329 (Fed. Cir. 2005) (“the specification may reveal a special definition
given to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's lexicography governs.”);
American Academy of Science, 367 F.3d at 1365, 70 USPQ2d at 1831
(holding that an applicant “may demonstrate an intent to deviate from the
ordinary and accustomed meaning of a claim term by including in the
specification expressions of manifest exclusion or restriction, representing
a clear disavowal of claim scope.”); In re Paulsen, 30 F.3d 1475, 1480,
31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (“Although an inventor is indeed
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Appeal 2007-3378
Application 10/715,458

free to define the specific terms used to describe his or her invention, this
must be done with reasonable clarity, deliberateness, and precision.”).
What the Specification describes is a number of different “patterns”
which appear to be “predetermined operation patterns” within the meaning
of the claim. For instance, the “pattern” may be a predetermined pattern of
gas flow (fuel or oxidative gas) supplied to the fuel cell, a pattern of gas
supply pressure, a pattern of humidification, a pattern of fuel cell
temperature, or a pattern of exhaust gas temperature; to name a few
(Specification ¶¶ 0012, 14 and 15). The Specification further describes,
among other things, operations involving changing the generated current I of
the fuel cell and detecting the change in the generated voltage (Specification
¶ 0044).
According its plain meaning, the term “operation” refers to any
manner of operating or functioning.
Taking in consideration the guidance from the Specification, the plain
meaning of “operation” to those of ordinary skill in the art, and breath of the
term “operation,” we determine that the claimed “operation pattern”
encompasses any pattern the fuel cell operator selects to run the operation,
i.e., the pattern of generated current, gas supply flow, gas pressures, and
temperatures input into the cell during its operation, for instance. The claim
requires the pattern be “predetermined,” i.e., determined before the fuel cell
diagnostic method takes place.
The phrase “operational state” is also not defined in the Specification.
However, the Specification indicates that there is an operational state of the
fuel cell corresponding to each of the operation patterns (Specification
¶ 0009), and further indicates that the operational state may be an output
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current and an output voltage of the fuel cell (Specification ¶ 0010 and
¶ 0023), it may be an interterminal voltage and/or cell voltage (Specification
¶ 0011 and ¶ 0023), it may be an internal resistance of the fuel cell
(Specification ¶ 0013 and ¶ 0023), it may be a temperature of the fuel cell,
or it may be a temperature of an exhaust gas (Specification ¶ 0014 and
¶ 0023). We, therefore, determine that the “operational state of the fuel cell”
is any condition of the fuel cell arising from its operation.
Turning to Fuglevand, we find that this reference describes a process
of operating a fuel cell as follows:
As best understood by a study of FIG. 3, the fuel cell 10
has an anode and a cathode 52 and 53 which produces electrical
power having a given current and voltage output. The
controller 122 is electrically coupled with the fuel cell 10 and is
operable to shunt the electrical current between the anode and
the cathode of the fuel cell under predetermined operational
conditions. As earlier discussed, the shunt controller 122
includes voltage and current sensors 123 and 128 which are
disposed in voltage and current sensing relation relative to the
voltage and current output of the fuel cell 10 and are further
electrically coupled with the anode and cathode 52 and 53 of
the fuel cell 10. Still further, the shunt controller 122 further
comprises an electrical switch, and which is shown herein as a
field effect transistor 124. The field effect transistor 124 has
open and closed electrical conditions. As will be described in
further detail below, the controller 122 upon sensing, by way of
the voltage and current sensors 123 and 128, a given voltage
and current output of the fuel cell 10, adjusts the valve 104 into
a predetermined fluid metering relationship relative to the
supply of fuel gas 105. Still further, the controller 122
positions the field effect transistor in an open or closed
electrical condition, based upon predetermined performance
parameters for the respective fuel cells 10.

Fuglevand, col. 7, ll. 35-58 (emphasis added).
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Application 10/715,458

As seen from the above description, there is a pattern of operation in
the process of Fuglevand. That pattern applies in accordance with
“predetermined operational conditions” which involve changing the
operational state of the fuel cell by shunting the electrical current between
the anode and the cathode. It follows that Fuglevand describes operating as
required by step (a) of claim 16.
Given the breath of the claim and the description within Fuglevand,
we find that a preponderance of the evidence supports the Examiner’s
finding that Fuglevand describes operating the fuel cell “according to at least
one predetermined operation pattern, the predetermined operation pattern to
apply at least one predetermined operation condition to change an operation
state of the fuel cell” as recited in claim 16. See Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983) (“The law of
anticipation does not require that the reference ‘teach’ what the subject
patent teaches. Assuming that a reference is properly ‘prior art,’ it is only
necessary that the claims under attack, as construed by the court, ‘read on’
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or ‘fully met’ by it.”).
We sustain the rejection of claims 1-7, 11, and 16-19 under 35 U.S.C.
§ 102(b).
With regard to the other rejections, Appellants merely contend that the
additional references do not cure the deficiencies of Fuglevand. For the
reasons stated above, we sustain the rejections of claims 8-10 and 12-15
under 35 U.S.C. § 103(a).

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III. DECISION
The decision of the Examiner is AFFIRMED.

IV. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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