Ex Parte Valensa et al

Board of Patent Appeals and Interferences

Nov 21, 2011

11503611 (B.P.A.I. Nov. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JEROEN VALENSA,
MICHAEL G. REINKE, and MARK G. VOSS
______________

Appeal 2010-001060
Application 11/503,611
Technology Center 1700
_______________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-7, 10-12, and 14-21 in the Office Action
mailed January 9, 2009 (Office Action). 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2008).
We affirm-in-part the decision of the Primary Examiner.
Claims 1, 7, and 12 illustrate Appellants’ invention of a fuel cell
system, and is representative of the claims on appeal:
1. A fuel cell system comprising:
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a radiant heat source having a heat radiating face; and
a reformer, the reformer comprising a row of reformer tubes to direct
an anode inlet gas flow through the fuel cell system, each of the tubes having
a flattened cross section defined by a pair of spaced broad sides joined by a
pair of spaced narrow sides, the tubes arranged relative to the radiant heat
source to ensure that radiant heat energy radiating normal to the radiating
face from the radiant heat source cannot pass between the row of tubes
without impinging on one of the broad sides of the tubes.
7. A fuel cell system comprising:
a fuel cell; and
a reformer connected to the fuel cell to direct an anode inlet gas flow
thereto and arranged adjacent to the fuel cell to receive radiant heat energy
therefrom, the reformer comprising a plurality of flattened tubes to direct the
anode inlet gas through the fuel cell, wherein the tubes extend parallel to
each other and are arranged in an annular array, the annular array being
surrounded by the fuel cell.
12. A fuel cell system comprising:
a fuel cell;
an anode exhaust gas combustor connected to the fuel cell to receive
anode exhaust gas therefrom;
a combusted anode exhaust gas glow path connected to the anode
exhaust gas combustor to receive combusted anode exhaust gas therefrom
and including an extended surface heated by the combusted anode exhaust
gas flow; and
a reformer connected to the fuel cell to direct an anode inlet gas flow
thereto and arranged adjacent the extended surface to receive radiant energy
therefrom;
wherein the reformer comprises a plurality of flattened tubes to direct
the anode inlet gas through the fuel cell.
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-6 over Khandkar
(US 5,763,114) in view of Kiser (US 5,730,213); claims 7, 10, and 11 over
Khandkar in view of Kiser, further in view of King (US 6,582,842 B1);
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claim 12 over Suzuki (US 2005/0026011 A1) in view of Kiser; and claims
14-18 and 21 over Suzuki in view of Kiser, further in view of Khandkar.
App. Br. 9; Ans. 3, 5, 6 and 7.
Appellants argue the first ground of rejection on the claims as a group;
the second ground of rejection on claims 7 and 11 as a group and on claim
10; and the fourth ground of rejection on each of claims 14-18 and 21. Thus,
we decide this appeal based on claims 1, 7, 10, 12, 14-18, and 21. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
The Examiner also advanced the ground of rejection of claims 19 and
20 under 35 U.S.C. §103(a) over Suzuki in view of Kiser and Khandkar,
further in view of King. Ans. 2; see Office Action 8; see App. Br. 17, first
full paragraph. Appellant did not request review of or submit argument with
respect to this ground of rejection. See generally App. Br. and Reply Br.
Opinion
I. Claim 1: Khandkar and Kiser
The dispositive issue raised by the parties is whether the Examiner
erred in determining that the combination of Khandkar and Kiser would
have led one of ordinary skill in the art to replace Khandkar’s reformer tubes
196 with Kiser’s flattened heat exchanger tubes. Ans. 3-5 and 9-11; App.
Br. 10-11; Reply Br. 2-3.
In considering this issue, we initially determine that when giving the
claim terms the broadest reasonable interpretation consistent with the written
description in the Specification, the plain language of claim 1 specifies that
the reformer comprises at least one row of reformer tubes, wherein each of
the tubes has a flattened cross section with broad sides joined by narrow
sides. The tubes in the row are spaced apart to any extent such that radiant
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heat energy radiating “normal” to the radiating face of a radiant heat source,
that is, heat energy radiating in any direction from the radiant heat source,
can pass “between the row [sic] of tubes,” that is, pass through the row of
tubes by passing between the tubes in the row. Claim 1 requires that at least
a portion of the radiant heat energy radiating normal to the radiating face of
the heat source cannot pass between the tubes without impinging, that is, at
least a portion of the radiant heat energy must impinge, on at least one of the
two broad sides of each tube. Spec., e.g., 3:23 to 4:2, 4:23 to 5:2, 5:19-22,
20:19 to 21:2, 22:7 to 23:4, and Figs. 3A-B and 5. See, e.g., In re Suitco
Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010), and cases cited therein;
In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We considered the positions of the parties in this matter in arriving at
our determination. Ans. 4:4-7 and 11:16-19; App. Br. 11; Reply Br. 2:19 to
3:13. We determine that contrary to Appellants’ position, there are no
limitations in claim 1 which specify the orientation of the broad and narrow
sides of the tubes in the row relative to the “normal” radiant heat energy and
the distance between the tubes. Thus, claim 1 specifies that a portion of the
“normal” radiant heat energy can impinge on and be absorbed by a broad
side of a tube which is orientated perpendicular to the direction of flow of
the radiant energy, and another portion of the “normal” radiant heat energy
can pass between the tubes without impinging on any surface of the tube, as
the Examiner points out. Ans. 11:7-19. In the latter respect, we find that in
the disclosed embodiment illustrated in Specification Figures 3A-B, the
tubes 284 in each of tube sets 282 are arranged such “that the majority of the
radiant heat energy from the fuel cell stack 14 cannot pass through the tube
set 282 without impinging on one of the broad sides of the tubes 284.” Spec.
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22:7-15 (emphasis supplied). Thus, the written description in the
Specification discloses to one skilled in the art that a portion of the radiant
heat energy can pass through tube set 282 without impinging on a broad side
of tubes 284.
The Examiner submits that one of ordinary skill in the art would have
modified Khandkar’s reformer tube 196, “that are [sic, is] filed with granules
coated with catalyst,” with Kiser’s flattened heat exchanger tube because
this person would
utilize fundamental principles of heat exchange to arrange the
reformer tubes relative to the radiant heat source such that
radiant heat energy radiating normal to the radiating face from
the radiant heat source cannot pass between the rows of tubes
without impinging on one of the broad sides of the tubes
because orienting the broad sides of the tubes to face the radiant
heat source would be an obvious design choice to maximize the
heat exchange surface area of the reformer tubes, and thereby
improve the overall thermal efficiency of the system.
Ans. 4 and 11, citing Khandkar cols. 13-15 and Figs. 8 and 9, and Kiser
Figs, 6 and 7.
We find that Khandkar would have disclosed to one of ordinary skill
in the art, as illustrated in the embodiments in Khandkar Figures 8 and 9,
solid oxide fuel cell (SOFC) stack furnaces having spaced apart round tubes
196 of reformer 110 which are numerically and geometrically designed for
radiation heating and impinged upon by radiant heat energy from SOFC
stacks 132. Khandkar, e.g., col. 14, ll. 14-17, and col. 15, ll. 1-7 and 43-48.
The reformer tubes 196 can contain an excess of catalysts in different
arrangements, including granules which form a tortuous path, for
reformation of feedstock. Khandkar, e.g., col. 14, ll. 60-67, col. 15, ll. 8-29,
and Figs. 15-19. Khandkar further discloses that radiant heat energy from
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fuel cell stakes 132 also impinges upon inner jacket 148 of heat exchanger
108. Khandkar, e.g., col. 14, ll. 14-17. We find that Kiser would have
disclosed to one of ordinary skill in the art flattened tubes for cooling fluid
for a heat exchanger, illustrated by, among other things, the embodiments of
Kiser Figures 6 and 7, wherein the flattened tubes have increased heat
exchange surface area. Kiser, e.g., abstract, col. 1, ll. 4-9 and 34-36, col. 2,
ll. 21-28, and col. 5, ll. 12-25.
On this record, we are not convinced by Appellants that the Examiner
erred in combining Khandkar and Kiser and determining that the
combination would have led one of ordinary skill in the art to replace
Khandkar’s reformer tubes 196 with Kiser’s flattened heat exchanger tubes
in the expectation of maximizing the heat exchange surface area of the
reformer tubes, thus arriving at a fuel cell system encompassed by claim 1.
Contrary to Appellants’ position, Khandkar discloses that at least some
radiant heat energy from fuel cell stacks 132 impinges on the sides of the
reformer tubes 196 while the rest of the radiant heat energy passes between
tubes 196 and impinges on heat exchanger wall 148, which is permitted in
claimed fuel cell systems encompassed by claim 1 as we interpreted this
claim above. App. Br. 11; Reply Br. 3-4. Thus Khandkar does not teach
away from the claimed fuel cell system as Appellants contend. App. Br. 11;
Reply Br. 4.
Furthermore, Kiser is relied on by the Examiner solely for the
disclosure of flattened tube geometry for efficient heat exchange. See, e.g.,
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
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claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”); see also, e.g., In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness
under § 103, all that is required is a reasonable expectation of success.”
(citations omitted)). Appellants’ arguments that Khandkar’s reformer tubes
“do not have a flattened cross section, which would result in constricted flow
through the reformer 110,” is unsupported by scientific reasoning or
objective evidence, and further does not establish that one of ordinary skill
in the art would not have employed Kiser’s flattened tube for Khandkar’s
reformer tubes 196. App. Br. 11; Reply Br. 2. See, e.g., In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA
1979); In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Khandkar and Kiser with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1-6 would have been obvious as
a matter of law under 35 U.S.C. § 103(a).
II. Claim 7: Khandkar, Kiser, and King
The dispositive issue raised by the parties is whether the Examiner
erred in determining that the combination of Khandkar, Kiser, and King
would have led one of ordinary skill in the art to modify Khandkar’s
reformer tubes 196 annularly arrayed around SOFC fuel cell stacks 132 by
forming an annular array of reformer tubes 196 surrounded by fuel cell
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stacks 132 by King’s teaching that reformer subassembly 100 can be
surrounded by fuel cell subassemblies 200, thus meeting limitations of claim
7. Ans. 6 and 12-13, citing King Fig. 4; App. Br. 13-14, citing King col. 14,
ll. 53-55; Reply Br. 3-4.
The Examiner finds that King “teaches the concept of surrounding a
reformer assembly ‘100’ with fuel cell stacks ‘210.’” Ans. 6, citing King
Fig. 4. The Examiner contends that while King “does not expressly teach
radiating heat energy from the fuel cell to the reformer, one skilled in the
fuel cell art would know that solid oxide fuel cells [(SOFC)] operating at
high temperatures would inherently radiate heat energy to the reformer tubes
as taught by” Khandkar. Ans. 13. The Examiner contends that King would
motivate one of ordinary skill in the art to modify Khandkar’s SOFC system
“to include a reformer that is surrounded by the fuel cell to facilitate heat
management.” Ans. 13.
We find that King would have disclosed to one of ordinary skill in the
art proton exchange membrane (PEM) fuel cell systems having, among other
things, any suitable reformer subassembly 100 surrounded by PEM fuel cell
subassemblies 200. King, e.g., col. 7, l. 23 to col. 10, l. 27, and Figs. 3 and
4. We find that King would not have disclosed the structures of the suitable
reformer subassemblies 100, or that radiant heat from PEM fuel cell
subassemblies 200 impinges on any component of a disclosed reformer
subassembly 100. King, e.g., col. 7, ll. 33-64. We find that, as Appellants
point out, King does disclose that in the embodiment illustrated in Figure 16,
“[a]ir and water outlet 22 and air and water outlet channels 25 also facilitate
dissipation of the heat generated by the electrochemical reactions.” King
col. 14, ll. 53-55. App. Br. 13, citing King col. 14, ll. 53-55; Reply Br. 3.
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On this record, we agree with Appellants that the Examiner erred in
combining Khandkar and King, and concluding that one of ordinary skill in
the art would have been led by the combination to rearrange Khandkar’s
SOFC fuel cell system by surround Khandkar’s reformer 110 having tubes
196, with Khandkar’s SOFC stacks 132 as suggested by King’s arrangement
of PEM subassemblies 200 surrounding reformer subassembly 100, the
structure of the reformer subassembly 100 not disclosed. The Examiner
does not dispute Appellants’ contention that King would have taught that
PEM fuel cell subassemblies 200 do not radiate heat, and instead dissipate
heat via fluid flow. App. Br. 13; Reply Br. 3; Ans. 12-13. The Examiner
further does not dispute Appellants’ contention that King’s PEM fuel cell
system is not analogous in structure to Khandkar’s SOFC system. App. Br.
14; Reply Br. 3-4; Ans. 13. Thus, the Examiner has not established that the
combined teachings of Khandkar and King would have necessarily led one
of ordinary skill in the art to the claimed fuel cell system encompassed by
claim 7 as generally proposed by the Examiner. See, e.g., KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”);
In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred
when the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained); In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) (“The mere fact that the prior art may
be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the
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modification.” (citation omitted)); cf. Ex parte Levengood, 28 USPQ2d
1300, 1301-02 (BPAI 1993) (“At best, the examiner’s comments regarding
obviousness amount to an assertion that one of ordinary skill in the relevant
art would have been able to arrive at appellant’s invention because he had
the necessary skills to carry out the requisite process steps. This is an
inappropriate standard for obviousness. . . . That which is within the
capabilities of one skilled in the art is not synonymous with obviousness.”
(citation omitted)). A discussion of Kiser is not necessary to our decision.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 7, 10 and 11 under 35 U.S.C.
§ 103(a).
III. Claim 12: Suzuki and Kiser
Claims 14-18 and 21: Suzuki, Kiser, and Khandkar
The dispositive issue in these grounds of rejection raised by the
parties is whether the Examiner erred in determining that the combination of
Suzuki and Kiser would have led one of ordinary skill in the art to modify
Suzuki’s fuel cell system, that has cylindrical reformer 10, to “include a
reformer comprising a plurality of flattened tubes [taught by Kiser] to direct
the anode inlet gas through the fuel cell,” thus meeting limitations of claim
12 on which the other claims depend. Ans. 7 and 14; App. Br. 16-17; Reply
Br. 4, first full para. See Suzuki ¶¶ 0044, 0047, and 0061, and Figs. 1, 4, and
5. In response to Appellants’ contention that one skilled in the art would not
replace reformer 10, which has a disk-shaped upper section and a
cylindrical-shaped bottom section surrounding that are filled with catalyst
granules, with narrow flattened tubes which would decrease the gas flow
path in the reformer, the Examiner contends that the gas flow would depend
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on the “size and number of the flattened tubes” that would result in fuel cell
system efficiency. Ans. 14; App. Br. 16-17.
On this record, we agree with Appellants that the Examiner erred in
combining Suzuki and Kiser, and concluding that one of ordinary skill in the
art would have been led by the combination to interchange Suzuki’s
cylindrical reformer 10 with a series of Kiser’s flattened tubes. The
Examiner simply has not established the motivation for one of ordinary skill
in the art to replace Suzuki’s reformer 10, which has continuous, cylindrical
sides surrounding radiation tube 21 of burner 20, with a series of flattened
tubes in the same space. Thus, as Appellants point out, the Examiner’s
position is untenable. See, e.g. KSR, 550 U.S. at 418; Rouffet, 149 F.3d at
1358; Fritch, 972 F.2d at 1266; cf. Levengood, 28 USPQ2d at 1301-02. A
discussion of Khandkar is not necessary to our decision.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 12, 14-18, and 21 under 35 U.S.C.
§ 103(a).
IV. Claims 19 and 20: Suzuki, Kiser, Khandkar, and King
We summarily affirm this ground of rejection which has not been
selected for review and briefed by Appellants. See 37 C.F.R. §
41.37(c)(1)(vi) and (vii); see also Manual of Patent Examining Procedure §
1205.02 (8th ed., Rev. 3, August 2005) (“If a ground of rejection stated by
the examiner is not addressed in the appellant’s brief, that ground of
rejection will be summarily sustained by the Board.”).
We affirmed the grounds of rejection of claims 1-6, 19, and 20, and
reversed all other grounds.
The decision of the Examiner is affirmed-in-part.
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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

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