Ex Parte Swalla

Patent Trial and Appeal Board

Apr 4, 2014

12136439 (P.T.A.B. Apr. 4, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/136,439 06/10/2008 Dana Ray Swalla 231431-1/YOD
(GELC:0004)
5579
62204 7590 04/04/2014
GE Licensing
ATTN: Brandon, K1-2A62A
1 Research Circle
Niskayuna, NY 12309
EXAMINER
THOMAS, CIEL P
ART UNIT PAPER NUMBER
1754
MAIL DATE DELIVERY MODE
04/04/2014 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 DANA RAY SWALLA
____________

Appeal 2012-011477
Application 12/136,439
Technology Center 1700
____________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2012-011477
Application 12/136,439

2
This is an appeal under 35 U.S.C. § 134 involving claims to an
electrolyzer. The Examiner has rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b).
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s finding that the subject matter of Appellant’s
claims 1, 3, 6-9, and 11 is anticipated by U.S. Patent No. 5,783,0511
(“Hirai”). In this regard, we adopt the findings and reasoning of the
Examiner with respect to the teachings of Hirai.
In addition, upon consideration of the evidence on this record and
each of Appellant’s contentions, we find that the preponderance of evidence
on this record supports the Examiner’s finding that the subject matter of
Appellant’s claims 1, 2, 4, 5, and 10 is anticipated by U.S. Patent No.
4,923,5822 (“Abrahamson”). In this regard, we adopt the findings and
reasoning of the Examiner with respect to the teachings of Abrahamson.
With respect to Appellant’s argument that Abrahamson discloses
structures that might assist the tie rods disclosed in Abrahamson in sealing
the internal fluid channel, Br. 7, Rep. Br. 6, we note that Appellant’s claims
do not exclude the possibility of additional sealing elements. Claim 1, for
example, recites a limitation that requires “a mounting configured to
maintain a compressive force on the stack sufficient to seal the internal fluid
channel,” but it does so using the open-ended transition “comprising.”
Claims App., Br. 9. The term “comprising” does not exclude additional

1 Hirai et al., U.S. 5,783,051 B1, issued Jul. 21, 1998.
2 Abrahamson et al., U.S. 4,923,582, issued May 8, 1990.
Appeal 2012-011477
Application 12/136,439

3
elements not recited in the claim. In re Baxter, 656 F.2d 679, 686-87
(CCPA 1981).
Finally, Appellant argues that the Examiner’s Answer and Final
Office Action refer to different disclosures in finding Abrahamson teaches
the internal fluid channels of claim 1 and that “such a change in the rejection
. . . should only be made via a new Non-Final Office Action.” Rep. Br. 6
(citing Ans. 5; Final Rejection 5). To the extent that Appellant believes the
change in the description of Abrahamson’s disclosure of an internal fluid
channel constitutes an undesignated new ground of rejection, we note that
“[a]ny request to seek review of the primary examiner’s failure to designate
a rejection as a new ground of rejection in an examiner’s answer must be by
way of a petition to the Director under [37 C.F.R. § 1.181] filed within two
months from the entry of the examiner’s answer and before the filing of any
reply brief.” 37 C.F.R. § 41.40(a). This is therefore a petitionable matter
that we will not resolve. In any case, we note that the accuracy of the
finding in question has not been challenged in either of Appellant’s briefs.
We affirm the rejection of claims 1, 3, 6-9, and 11 as anticipated by
Hirai. We also affirm the rejection of claims 1, 2, 4, 5, and 10 as anticipated
by Abrahamson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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