Ex Parte Sasaki et al

Patent Trial and Appeal Board

Feb 29, 2016

12117399 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/117,399 05/08/2008 Takashi Sasaki
959 7590 03/02/2016
NELSON MULLINS RILEY & SCARBOROUGH LLP
FLOOR 30, SUITE 3000
ONE POST OFFICE SQUARE
BOSTON, MA 02109
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SIW-116RCE 8976
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
ipbos ton.docketing@nelsonmullins.com
chris.schlauch@nelsonmullins.com
ipqualityassuranceboston@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKASHI SASAKI, AKIHIRO SUZUKI,
YOHTAROH UKAI, KIYOTAKA OSHIO, Y ASUO ISHII,
and HIDEO NUMATA
Appeal2014-006286
Application 12/117,399
Technology Center 1700
Before JACQUELINE WRIGHT BONILLA, GEORGE C. BEST, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3---6, and 8. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-006286
Application 12/117,399
STATEivIENT OF CASE
Appellants 1 describe the present invention as a fuel cell system having
a fuel cell stack that employs multiple power generation units, a diluter, a
discharge gas pipe, a hydrogen gas concentration sensor, and a silencer.
Appeal Br. 3. Claims 2 and 7 have been canceled. Claim 1, reproduced
below, is the only independent claim at issue and is illustrative of the
claimed subject matter:
1. A fuel cell system comprising:
a fuel cell which is supplied with a cathode gas and an anode gas
and generates electrical power;
a diluter which mixes and dilutes a cathode off-gas and an anode
off-gas discharged from the fuel cell;
a discharge gas pipe through which an exhaust gas discharged
from the diluter flows;
a hydrogen gas concentration sensor disposed in the discharge
gas pipe, which measures a concentration of a hydrogen gas in
said exhaust gas; and
a silencer provided between said diluter and said hydrogen gas
concentration sensor, having a flow path cross-section area that
is larger than that of said discharge gas pipe, and causing
moisture contained in said exhaust gas to condense,
wherein said hydrogen gas concentration sensor is affected by
humidity in a surrounding environment thereof and is disposed
on a downstream side of said silencer so as to reduce the
humidity in the surrounding environment, and said silencer
reduces a sound associated with discharging said exhaust gas.
Id. at 9 (App. A).
1 According to the Appellants, the real party in interest is Honda Motor Co.
Ltd. Appeal Br. 2.
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Application 12/117,399
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yoshizumi et al.
Akamatsu et al.
Yamamoto et al.
Kondo et al.
US 2002/0094469 Al July 18, 2002
(hereinafter "Yoshizumi")
CN 12-77315 A Dec. 20, 2000
(hereinafter "Akamatsu")
JP 2004-127750 Apr. 22, 2004
(hereinafter "Yamamoto")
WO 2006/305182 Sept. 8, 20062
(hereinafter "Kondo")
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 1, 3-5, and 8 under
35 U.S.C. § 103(a) as being unpatentable over Kondo, Yamamoto, and
Akamatsu.
Rejection 2. The Examiner rejected claim 6 under 35 U.S.C. § 103(a)
as being unpatentable over Kondo, Yamamoto, Akamatsu, and Yoshizumi.
ANALYSIS
Appellants' arguments with respect to the Examiner's rejections are
discussed below. The Appellants do not argue claims 3---6 or 8
independently. We therefore limit our discussion to one claim, i.e., claim 1.
2 The United States publication of the Kondo reference is available at
US 2008/0185218 Al published Aug. 7, 2008.
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Application 12/117,399
Claims 3---6 and 8 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
The Examiner explains that Kondo teaches most of the elements of
claim 1 including a noise eliminator (i.e., claim 1 's recited "silencer"). Final
Act. 2. Kondo does not teach use of a hydrogen sensor. Id. Yamamoto
teaches a hydrogen sensor downstream of a diluter and prior to discharge.
Id. at 2-3. We agree with and adopt the Examiner's findings of fact as to
these issues. Appellants explain that Akamatsu teaches a motorcycle oxygen
gas sensor located downstream of a bend section in an exhaust pipe, and we
find that this is an accurate explanation of Akamatsu. Appeal Br. 6.
Appellants argue that none of these references teach or suggest
claim 1 's recitation that the "hydrogen gas concentration sensor is affected
by humidity in a surrounding environment thereof and is disposed on a
downstream side of the silencer so as to reduce the humidity in the
surrounding environment." Appeal Br. 6-7 (emphasis omitted). We address
three aspects of this recitation separately: ( 1) "affected by humidity in a
surrounding environment thereof," (2) "so as to reduce humidity in the
surrounding environment," and (3) "the hydrogen gas concentration sensor
... is disposed on a downstream side of the silencer."
First, the Specification explains that a hydrogen gas concentration
sensor that "is affected by humidity" is inherent in prior art systems. Spec.
2: 18-20; see also Ans. 3. Appellants emphasize that the claimed sensor is
downstream of a silencer with "cross-section area that is larger than that of
said discharge gas pipe" (Reply Br. 3 (emphasis omitted)), but Kondo has
the same cross-section characteristic. See, e.g., Kondo Fig. 2; Ans. 3.
Moreover, even if the effect by humidity were newly discovered, "the
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Application 12/117,399
discovery of a previously unappreciated property of a prior art composition,
or of a scientific explanation for the prior art's functioning, does not render
the old composition patentably new to the discoverer." Atlas Powder Co. v.
Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Thus, the sensor of
Yamamoto would meet this element.
Second, the "so as to reduce the humidity in the surrounding
environment" aspect also does not distinguish the claimed subject matter
over the art. Rather, this aspect is merely a statement of purpose or
explanation for functioning that does not add structural limitation. Cf id.;
Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005) (holding
that a "whereby clause in a method claim is not given weight when it simply
expresses the intended result of a process step positively recited") (internal
quote and citation omitted). Moreover, Kondo teaches that its silencer
reduces humidity. Kondo Abstract, i-fi-14, 9, 37. We agree with the
Examiner's finding that volume expansion along the length of the silencer
causes a humidity reduction. Ans. 3. Thus, even if this aspect of the
recitation were limiting, it is taught by the cited references.
Third, the Examiner does not explain where any reference teaches the
recited location for the hydrogen gas concentration sensor: "on a
downstream side of the silencer." For the reasons explained below,
however, we agree with the Examiner's conclusion that this location aspect
is obvious. Id. at 4--5.
As a threshold matter, we agree with the Examiner's conclusion that it
would be obvious to modify the fuel cell system of Kondo to include the
Yamamoto hydrogen sensor in order to detect faults of the fuel cell system.
Final Act. 3. Appellants do not dispute this point. Thus, it is only the
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Application 12/117,399
obviousness or non-obvious of locating the sensor "on a downstream side of
the silencer" that is left at issue.
Under KSR, a design that is obvious to try would have been obvious
"[ w ]hen there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp." KSR Int'!, Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Here, because of Yamamoto' s teachings, we find that a person of ordinary
skill in the art would have recognized the problem of needing a working
hydrogen sensor in a fuel cell system. See id. Moreover, a person of skill
the art would have only two choices as to where to locate Yamamoto' s
sensor relative to Kondo' s silencer: it could be upstream of the silencer or it
could be downstream. Ans. 4--5. If one location of the sensor did not work,
a person of ordinary skill would try the other location. Thus, we are
persuaded that either location would have been obvious. Cf ACCO Brands
Corp. v. Fellowes, Inc.,_F.3d_, No. 2015-1045, 2016 WL 692471, at
*5 (Fed. Cir. Feb. 22, 2016) (holding that claimed configuration is obvious
even if one of two design choices based on obvious combination of prior-art
elements is not within scope of claimed invention); Covidien LP v. Ethicon
Endo-Surgery, Inc., IPR2013-00209 (PTAB June 9, 2014) (holding that
reason to combine non-parallel staples existed given that person of ordinary
skill "had but two choices for staple designs").
In reply, Appellants argue that a person of ordinary skill would not
have been inclined to position the sensor downstream of the silencer because
hydrogen sensors "are provided for safety measures and are not intended to
be easily replaced by users." Reply Br. 4--5. Appellants cite no evidence,
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however, to support this argument. Cf In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."). Thus, we affirm the Examiner's rejection of claim 1.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
3---6, and 8. In particular, we affirm the Examiner's rejection of claims 1, 3-
5, and 8 under 35 U.S.C. § 103(a) as being unpatentable over Kondo,
Yamamoto, and Akamatsu. We also affirm the Examiner's rejection of
claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Kondo,
Yamamoto, Akamatsu, and Yoshizumi.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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