Ex Parte Walsh

Board of Patent Appeals and Interferences

Feb 26, 2010

10232296 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL M. WALSH
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Appeal 2009-003116
Application 10/232,296
Technology Center 1700
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Decided: February 26, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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A. Introduction1
Michael M. Walsh (“Walsh”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection2 of claims 1, 2, and 4-7. (Br. 3.) We have
jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to an apparatus for cooling a fuel
cell. The claimed apparatus is said to enable the use of otherwise wasted
heat generated by the fuel cell to improve the efficiency of various
operations. The fuel cell system is provided with a cooling circuit with a
radiator, and, coupled to that cooling circuit, a heat-transfer circuit that can
be used to provide heat for various other applications. An important aspect
of the claimed invention is the provision on the housing of the apparatus of
removable couplings to the heat transfer circuit. In the words of
the 296 Specification, “[t]his provides an advantage in that the outside
system can be hooked up to the fuel cell system without having to
disassemble the fuel cell system enclosure.” (Spec. 5, ¶ [0025].)

1 Application 10/232,296, Method and Apparatus for Thermal Management
in a Fuel Cell System, filed 30 August 2002, claiming the benefit of a
provisional application filed 31 August 2001. The specification is referred
to as the “296 Specification,” and is cited as “Spec.” The real party in
interest is listed as Plug Power, Inc. (Second Amended Appeal Brief,
filed 27 May 2008 (“Br.”), 3.)
2 Office action mailed 24 August 2006 (“Final Rejection”; cited as “FR”).
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Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A system, comprising
a fuel cell, a coolant and a coolant circuit;
a pump adapted to flow the coolant through the coolant circuit,
wherein the coolant circuit is coupled to the fuel cell and
adapted to circulate the coolant through the fuel cell
a heat transfer circuit to communicate a heat transfer fluid, the
heat transfer circuit comprising an inlet and an outlet;
a radiator coupled to the coolant circuit, wherein the coolant
circuit is adapted to circulate the coolant through the radiator;
a heat exchanger having a first side connected to the coolant
circuit and a second side connected to the heat transfer circuit
physically separate from the coolant circuit and thermally
coupled to the coolant circuit by the heat exchanger; and
a housing containing at least the fuel cell and the heat
exchanger and comprising coupling connectors located outside
the housing to removably couple the heat transfer circuit to a
heat sink external to the housing.
(Claims App., Br. 12; indentation and emphasis added.)
The Examiner has maintained the following grounds of rejection:3
A. Claims 1, 2, and 4-7 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Ap,4 Rennfeld,5 and Bier.6

3 Examiner’s Answer mailed 16 July 2008. (“Ans.”).
4 Ngy Srun Ap, Cooling Device for Electric Vehicle with Fuel Cell, U.S.
Patent 6,448,535 B1 (10 September 2002), based on an application
filed 11 April 2000.
5 Alfons Rennfeld et al., U.S. Patent 5,537,956 (1996).
6 Milan Bier, Isoelectric Focusing Apparatus, U.S. Patent 4,362,612 (1982).
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B. Claims 3, 8, and 9 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Ap, Rennfeld, Bier, Bruck,7
and Busenbender.8
C. Claim 10 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Ap, Rennfeld, Bier, and
Marianowski.9
D. Claim 11 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Ap, Rennfeld, Bier, and Iritani.10
The posture of this appeal is somewhat unusual, in that claims 1-11
stand finally rejected, but only claims 1, 2, and 4-7 are being appealed. In
Walsh’s words, “claims 3 and 8-11 are not the subject of this appeal.”
(Br. 5.) Walsh states, at the close of the principal Brief on Appeal, that
“[c]laims 2 and 4-7 are patentable for at least the same reasons as claim 1.”
(Id. at 11.) Walsh makes no other argument for the patentability of claims 2
and 4-7; and Walsh makes no argument at all for the patentability of
claims 3 and 8-11. The relief Walsh requests we grant is “that each of the
final rejections be reversed and that the claims subject to this Appeal be
allowed to issue.” (Id.) We remind Appellants that it is not within our
jurisdiction to allow claims. In any event, all arguments not timely raised

7 Rolf Bruck et al., U.S. Patent Application Publication
US 2003/0215683 A1 (20 November 2003), filed as continuation of an
international application filed 31 October 2001.
8 Ilona Busenbender et al., U.S. Patent 6,001,498 (1999).
9 Leonard G. Marianowski et al., U.S. Patent 5,045,413 (1991).
10 Kunio Iritani et al., U.S. Patent 6,347,528 B1 (1`9 February 2002), based
on an application filed 24 January 2000).
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have been waived, and all rejected claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
As to the merits of the rejection of claim 1, Walsh argues that the
Examiner erred because “Bier fails to teach or suggest the coupling
connectors of claim 1” (Br. 9); and because there is “no motivation to
modify Ap in view of Bier to derive the missing claim limitations, namely,
the coupling connectors” (id.). According to Walsh, the only connectors
disclosed by Bier are quick-connect ports 331, which permit access to
reservoirs 332 held inside a heat exchanger that contain fluid produced by
isoelectric focusing. (Id. at 10.) Walsh points out that Bier provides coolant
circulation through ports 334, which are not described or suggested as
having connector couplings. (Id.) Walsh concludes that Bier does not
provide sufficient teachings, in combination with the other references, to
render the claimed subject matter obvious. (Id.)
Walsh does not dispute any of the Examiner’s other findings
regarding the teachings of Ap or Rennfeld, or the propriety of combining
those teachings. In particular, Walsh does not dispute the Examiner’s
findings that Ap teaches a fuel cell cooled via a coolant circulating loop and
also a heat transfer circuit connected to the coolant loop via a heat
exchanger, with a housing containing the heat exchanger and the fuel cell.
The critical conclusion of the Examiner is thus that it would have been
obvious to a person having ordinary skill in the art to provide quick connect
ports on the housing, as taught by Bier, for the heat exchanger fluid in the
heat transfer circuit described by Ap. (FR 5.) The motivation for the
modification, according to the Examiner, would have been to provide “easy
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access” to the heat exchanger (id. at 6), in analogy to the “easy access” to the
fluid reservoirs provided by Bier (id. at 5).
As the Appellant, Walsh bears the procedural burden of showing
harmful error in the Examiner’s rejections. As the predecessor to our
reviewing court explained nearly three decades ago,
[t]he 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 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.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
In the present case, it is of no moment that Bier does not describe a
heat transfer circuit removably coupled to a heat exchange unit. We have no
trouble concluding that a person having ordinary skill in the art would have
been motivated to provide a removable coupling for the heat transfer circuit
described by Ap based on the quick-connect couplings described by Bier for
the fluid collected in the reservoirs in Bier’s heat exchanger. Both Ap and
Bier are concerned with moving fluids—in particular, temperature controlled
liquids—from one part of an apparatus to another, through a housing wall.
Bier shows that removable couplings provide useful flexibility in
maintenance and operation in such a setting. Walsh has failed to come
forward with any credible evidence that persons having ordinary skill in the
relevant fluid-handling arts have such a low level of ingenuity that they
would have required an example of an exact substitution before being
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motivated to provide increased modularity and ease of service for a cooled
fuel cell system.
Because we conclude Walsh has not shown harmful error in the
Examiner’s rejection of claim 1, we AFFIRM all of the rejections of record.
D. Order
We AFFIRM the rejection of claims 1, 2, and 4-7 under
35 U.S.C. § 103(a) in view of the combined teachings of Ap, Rennfeld, and
Bier.
We AFFIRM the rejection of claims 3, 8, and 9 under
35 U.S.C. § 103(a) in view of the combined teachings of Ap, Rennfeld, Bier,
Bruck, and Busenbender.
We AFFIRM the rejection of claim 10 under 35 U.S.C. § 103(a) in
view of the combined teachings of Ap, Rennfeld, Bier, and Marianowski.
We AFFIRM the rejection of claim 11 under 35 U.S.C. § 103(a) in
view of the combined teachings of Ap, Rennfeld, Bier, and Iritani.
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

PL Initial:
sld

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