Ex Parte Walsh

Board of Patent Appeals and Interferences

Oct 17, 2008

10132929 (B.P.A.I. Oct. 17, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL M. WALSH
____________

Appeal 2008-3543
Application 10/132,929
Technology Center 1700
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Decided: October 17, 2008
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
THOMAS A. WALTZ, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals from a rejection of claims 12-26, which are all
of the pending claims. We have jurisdiction over this appeal under
35 U.S.C. § 6 (2002).

Appeal 2008-3543
Application 10/132,929

The Invention
The Appellant claims methods for enthalpy transfer from one gas to
another gas in a fuel cell system. Claim 12 is illustrative:
12. A method of enthalpy transfer within a fuel cell system,
comprising:

flowing a first gas through an inside of a thermally conductive
conduit;

flowing liquid water through the inside of the conduit;

routing a flow of a second gas across an external surface of the
conduit, wherein the second gas contains water vapor and has a temperature
greater than a temperature of the first gas;

transferring heat from the second gas through the conduit to the liquid
water, such that the temperature of the second gas falls below the dew point
temperature of the second gas, and such that a portion of the liquid water in
the conduit evaporates to humidify the first gas to produce a humidified first
gas; and

routing the humidified first gas to a component of the fuel cell system.

The References
Nishizaki (as translated)1 JP 5-82147 Apr. 2, 1993
Gupte 6,167,950 B1 Jan. 2, 2001

The Rejections
The claims stand rejected as follows: claims 12-21 and 24 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement

1 Our consideration of Nishizaki is based upon a human translation thereof
which was obtained by the Board and has been entered into the electronic
file.
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requirement; claims 22, 23, 25, and 26 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter the Appellant regards as the invention;
claims 12 and 18-26 under 35 U.S.C. § 102(b) over Nishizaki; and
claims 13-17 under 35 U.S.C. § 103 over Nishizaki in view of Gupte.
ISSUE
The issue is whether the Appellant has shown reversible error in the
Examiner’s rejection of the Appellant’s claims.
PRINCIPLES OF LAW (PL)
35 U.S.C. § 112, first paragraph, enablement requirement
1. A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to
make and use the claimed invention without undue experimentation.
See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder
Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed.
Cir. 1984). As stated by the court in Wright, 999 F.2d at 1561-62:
Nothing more than objective enablement is required, and
therefore it is irrelevant whether this teaching is provided
through broad terminology or illustrative examples. [Citation
omitted.]
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that
the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the
specification of the application; this includes, of course,
providing sufficient reasons for doubting any assertions in the
specification as to the scope of enablement. If the PTO meets
this burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling. [Citation omitted.]
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2. Regarding enablement, a predecessor of our appellate reviewing
court stated in In re Marzocchi, 439 F.2d 220, 223-24 (CCPA
1971):
[A] specification disclosure which contains a teaching of
the manner and process of making and using the
invention in terms which correspond in scope to those
used in describing and defining the subject matter sought
to be patented must be taken as in compliance with the
enabling requirement of the first paragraph of § 112
unless there is reason to doubt the objective truth of the
statements contained therein which must be relied on for
enabling support. . . .

. . . .

. . . it is incumbent upon the Patent Office, whenever a rejection
on this basis is made, to explain why it doubts the truth or
accuracy of any statement in a supporting disclosure and to
back up assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested statement.
Otherwise, there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively accurate
disclosure.

35 U.S.C. § 112, second paragraph

3. The relevant inquiry under 35 U.S.C. § 112, second paragraph, is
whether the claim language, as it would have been interpreted by one
of ordinary skill in the art in light of the Appellants’ Specification and
the prior art, sets out and circumscribes a particular area with a
reasonable degree of precision and particularity. See In re Moore, 439
F.2d 1232, 1235 (CCPA 1971).

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Anticipation
4. “Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single
prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989).

Obviousness

5. For a prima facie case of obviousness to be established there must be
“an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41
(2007).
6. In making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 127 S. Ct. at 1741.
7. “A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR 127 S. Ct. at 1742.
8. “[T]he problem motivating the patentee may be only one of many
addressed by the patent’s subject matter. The question is not whether
the combination was obvious to the patentee but whether the
combination was obvious to a person with ordinary skill in the art.”
KSR, 127 S. Ct. at 1742.
9. “[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 127 S. Ct. at 1740.
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10. “[T]he [obviousness determination] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR, 127 S.
Ct. at 1741.
11. “When 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. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill
and common sense.” KSR, 127 S. Ct. at 1742 (2007).
12. “Often, it will be necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at
issue.” KSR, 127 S. Ct. at 1740-41.
13. The Examiner has the initial burden of establishing a prima facie case
of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976).
14. When a prima facie case of obviousness has been established, the
Appellants have the burden of rebutting it by presenting objective
evidence of non-obviousness. See Piasecki, 745 F.2d at 1472; In re
Keller, 642 F.2d 413, 425 (CCPA 1981). A final determination
regarding obviousness is then reached by starting anew and evaluating
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the rebuttal evidence along with the evidence upon which the
conclusion of prima facie obviousness was based. See Rinehart, 531
F.2d at 1052.
Claim construction
15. All limitations must be given effect when interpreting claims. See In
re Angstadt, 537 F.2d 498, 501 (CCPA 1976); In re Geerdes, 491
F.2d 1260, 1262-63 (CCPA 1974); In re Wilder, 429 F.2d 447, 450
(CCPA 1970).

FINDINGS OF FACT
Nishizaki discloses a replenishing water recovery device (13) for a
fuel cell electricity generating device (p. 10). The replenishing water
recovery device includes a moisture recovery tower (14) having tubes
therein through which cooling water (19) flows to condense water out of
air off-gas (1A) and combustion exhaust gas (2G) which contact the
outside of the tubes (pp. 10-11; Fig. 1).
ANALYSIS
We reverse the Examiner’s rejections.
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner argues that the Appellant’s claims broadly recite
“humidified first gas”, whereas “the specification only provides support for
humidified air in fluid communication with a cathode of a fuel cell or for
humidified air/methane in fluid communication with a fuel processing
reactor inlet” (Ans. 3).
The Examiner has not provided evidence or reasoning which shows
that one of ordinary skill in the art could not have practiced, without undue
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experimentation, the claimed invention using gases other than the disclosed
air and methane (PL 1, 2). The Examiner’s mere statement as to what the
Appellant’s Specification discloses is not sufficient for establishing that
undue experimentation would have been required.
Thus, the Examiner has not established a prima facie case of lack of
enablement of the inventions claimed in the Appellant’s claims 12-21
and 24.
Rejection under 35 U.S.C. § 112, second paragraph
The Appellant’s claim 22 recites flowing methane, an oxidant and
water through an inside of a thermally conductive conduit, and that “a
portion of the liquid water in the conduit evaporates to humidify the oxidant
to produce a humidified oxidant”.
The Examiner argues that claim 22 is incomplete for omitting an
essential element because the claim only recites “to humidify the oxidant to
produce a humidified oxidant” and does not recite “to humidify the methane
and oxidant to produce humidified methane and oxidant” (Ans. 4-5).
The Examiner has not provided evidence or reasoning which shows
that the failure of claim 22 to recite that the methane is humidified would
have caused lack of clarity to one of ordinary skill in the art as to what the
evaporated water in the conduit humidifies (PL 3). The Examiner’s
argument that the claim would be more precise and particular if it recited
that the methane is humidified does not establish that the claim in its present
form would have failed to set forth the claimed invention with a reasonable
degree of precision and particularity to one of ordinary skill in the art.
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Hence, the Examiner has not established a prima facie case of
indefiniteness of the inventions claimed in claim 22 and its dependent
claims 23, 25, and 26.
Rejection under 35 U.S.C. § 102(b)
The Appellant’s independent claims require “routing the humidified
first gas to a component of the fuel cell system” (claim 12) and “routing the
humidified oxidant to a component of the fuel cell system” (claim 22).
The Examiner argues that Nishizaki’s cooling water (19; Fig. 1) “will
also contain air and oxygen” (Ans. 5). The Examiner apparently realizes
that the cooling water in Nishizaki’s cooling water tube is not routed to a
component of a fuel cell system. The Examiner argues (Ans. 8):
Applicant argues Nishizaki fails to teach or suggest the humidified gas
is routed from the heat exchanger 15A to a component of a fuel cell
system. However, this limitation is not given patentable weight
because it does not further limit the claimed method of enthalpy
transfer (intended use of the gas after humidification or enthalpy
transfer). Once the gas is humidified, the enthalpy transfer has
already occurred.

Regardless of when the enthalpy transfer recited in the preambles of
the Appellant’s independent claims takes place, the claims require “routing
the humidified first gas to a component of the fuel cell system” (claim 12)
and “routing the humidified oxidant to a component of the fuel cell system”
(claim 22). Those steps are not mere intended use but, rather, are required
steps in the inventions as claimed, and must be given effect when
interpreting the claims (PL 15).
Because the Examiner has not established that Nishizaki discloses the
routing steps required by the Appellant’s claims, the Examiner has not
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established a prima facie case of anticipation of the inventions claimed in the
Appellant’s claims 12 and 18-26.
Rejection under 35 U.S.C. § 103
The Examiner does not rely upon Gupte for any disclosure that would
have rendered the routing steps required by the Appellant’s independent
claims prima facie obvious to one of ordinary skill in the art (Ans. 6-7).
Hence, the Examiner has not established a prima facie case of
obviousness of the inventions claimed in the Appellant’s dependent
claims 13-17.
CONCLUSIONS OF LAW
The rejections of claims 12-21 and 24 under 35 U.S.C. § 112, first
paragraph, enablement requirement, claims 22, 23, 25, and 26 under
35 U.S.C. § 112, second paragraph, claims 12 and 18-26 under
35 U.S.C. § 102(b) over Nishizaki, and claims 13-17 under 35 U.S.C. § 103
over Nishizaki in view of Gupte are reversed.
DECISION/ORDER
It is ordered that the Examiner’s decision is reversed.
REVERSED

PL initial:
sld
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