Ex Parte Yu et al

Patent Trial and Appeal Board

Jun 28, 2016

11463622 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111463,622 08/10/2006
65798 7590 06/29/2016
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD A VENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
FIRST NAMED INVENTOR
Paul Taichiang Yu
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.
GP-306112-GAPR-CHE 7245
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
MAILDATE DELIVERY MODE
06/29/2016 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 PAUL TAI CHIANG YU, and FREDERICK T. WAGNER
Appeal2014-003636
Application 11/463,622
Technology Center 1700
Before BEYERL YA. FRANKLIN, MARK NAGUMO, and N. WHITNEY
WILSON, Administrative Patent Judges.
Opinion for the Board by FRANKLIN, Administrative Patent Judge.
Opinion dissenting by NAGUMO, Administrative Patent Judge.
FRANKLIN, Administrative Patent Judge
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-9 and 11. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
Appeal2014-003636
Application 11/463,622
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A fuel cell system comprising:
a fuel cell stack including an anode side and a cathode
side;
a compressor for providing an air flow to the cathode
side of the fuel cell stack;
a hydrogen source for providing hydrogen gas to the
anode side of the fuel cell stack;
a first switch for connecting power from the stack to a
primary load;
a second switch for connecting power from the stack to
an auxiliary load;
a third switch for connecting power from the stack to a
shortirn.! resistor that dissinates stack outnut nower: '-' _._ _._ _._ /
a cross-over valve for providing the air flow from the
compressor to the anode side of the stack;
a re-circulation line for re-circulating cathode exhaust
gas to the cathode side of the stack;
a bleed valve for selectively bleeding hydrogen gas
into the re-circulating line; and
a controller programmed to control the system at start-
up and shut-down, wherein the controller opens the first
switch and closes the second switch to disconnect the first
primary load and couple an output of the stack to the auxiliary
load when the stack output voltage is reduced to a first
predetermined range, re-circulates the cathode exhaust gas
through the re-circulation line, bleeds a predetermined
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Application 11/463,622
concentration of hydrogen gas into the re-circulation line,
and uses the cross-over valve to purge the anode side of the
stack with air at shut-down, and wherein the controller re-
circulates the cathode exhaust gas through the re-circulation
line, bleeds hydrogen gas into the re-circulation line until the
stack voltage decreases to a second predetermined range and
closes the third switch to short-circuit the stack at start-up.
The Examiner relies on the following prior art references as evidence
of unpatentabili ty:
Margiott et al. US 2005/0031917 A 1 Feb. 10,2005
(hereafter "Margiott")
Limbeck et al. US 2007 /0231623 A 1 Oct. 4, 2007
(hereafter "Limbeck")
Zhang et al. US 2007/0154743 Al July 5, 2007
(hereafter "Zhang")
THE REJECTIONS 1
1. Claims 1-9, 11 are rejected under 35 U.S.C. § l 12(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite.
2. Claims 1-9, 11 are rejected under 35 U.S.C §103(a) as being obvious
over Margiott and further in view of Limbeck and Zhang.
ANALYSIS
We reverse the rejections substantially for the reasons in the record
provided by Appellants, and add the following.
1 The Examiner has withdrawn the rejection of claims 1-9, and 11 under 35
U.S.C. § 112, first paragraph (written description). Ans. 5.
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Appeal2014-003636
Application 11/463,622
Rejection 1
Rejection 1 is a new rejection that is set forth on pages 2--4 of the
Answer. In essence, it is the Examiner's positon that the claim is directed to
a machine, and therefore the limitations recited after the "controller
programmed to" language, are indefinite because the recited limitations
involve non-structural elements.
It is Appellants position that there is nothing inadequate about
claiming a controller and its associated manner of performing. Reply Br. 2-
3. Appellants also argue that the Examiner is ignoring the claim language as
a whole in making the rejection. Id. We agree, and note that the relevant
limitation is "controller programed to control ... ", and, it has been the law
that a programmed general purpose computer is a 'new machine'. In re
Alappat, 33 F.3d 1526, 1541 (Fed. Cir.1994) (en bane) ("We have held that
such programming creates a new machine, because a general purpose
~ • (""("" ~ 1 • 1 ~ • ~ • compmer m eneci oecomes a specrn1 purpose compmer once n is
programmed to perform particular functions pursuant to instructions from
programmed software.") (citations omitted). Also, the idea that non-
structural elements (e.g., the manner in which a controller performs) in a
claim directed to a system (machine) are per se indefinite is incorrect.
Without more, we cannot agree with the Examiner's determination.
In view of the above, we reverse Rejection 1.
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Appeal2014-003636
Application 11/463,622
Rejection 2
At issue in this rejection is whether the fuel system of Margiott
teaches the claimed element of "a bleed valve for selectively bleeding
hydrogen gas into the re- circulating line". It is Appellants position that
Margiott does not teach this claim element (contrary to the Examiner's
position) for the reasons expressed on page 13 of the Appeal Brief and on
pages 3--4 of the Reply Brief.
The Examiner's rejection is set forth on pages 3-6 of the Final
Office Action. On page 3 of the Final Office Action, the Examiner finds
that Margiott teaches a bleed valve for bleeding hydrogen gas into the
recirculation line, but the Examiner does not point to a specific teaching
(e.g., an item number for this bleed valve) in support thereof. In response
to Appellants' aforementioned stated positon, the Examiner, for the first
time, provides an annotated version ofMargiotts' Figure in an effort to
support the finding that l'vfargiott teaches a bleed valve for bleeding
hydrogen gas into the recirculation line (74). Ans.7. In so doing, the
Examiner states:
[the, sic] Examiner maintains that the cross over valve [ 64] is in
connection with the cathode recycle line. The rationalization utilized
is that an element A can be "connected" to an element C even if there
is an element B therebetween where an element A is not "directly
connected" to an C in the same situation. In the prior art, the two
structural elements are in fluid communication with each other and
therefore interpreted to be "connected" to each other.
Appellants' Figure 1 shows that bleed valve 84 serves to bleed
hydrogen gas (from source 24) into re-circulating line 82, and shows how
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Appeal2014-003636
Application 11/463,622
bleed valve 84 is positioned with respect to re-circulating line 82. Spec.
Fig.I.
Margiott teaches that hydrogen transfer valve 64 (when open) permits
hydrogen fuel to pass from the anode flow path 24 into the cathode flow
path 38. Margiott, para. [0036]. We agree with Appellants that this is not a
teaching of a bleed valve for bleeding hydrogen gas into the recirculation
line (74) ofMargiott. The Examiner's explanation (quoted, supra) that
element A is deemed connected to element C inadequately supports the
Examiner's position that Margiott teaches that hydrogen transfer valve 64
bleeds hydrogen gas into recirculation line 74 because (1) Margiott teaches
that hydrogen transfer valve 64 permits hydrogen fuel to pass from the
anode flow path 24 into the cathode flow path 3 8 [which is not into
recirculation line 74], and (2) the arrangement depicted in Appellants'
Figure 1 regarding how bleed valve 84 serves to bleed hydrogen gas into
• 1 ~. 1. {")!""\ • ~ ~ 11 1 • .... ~ .. ~1 ~ 1 • ~ 1 recircurnnon nne l'SL is suucmrauy mnerem rrom me arrangemem aep1c1ea
in Margiott's Figure.2 As such, we agree with Appellants' position that the
Examiner has not demonstrated that Margiott teaches this claim element
(Appeal Br. 12-13), and therefore also agree with Appellants that the
Examiner has failed to adequately show that Margiott's system is capable of
performing the stated function (Id.). The Examiner does not rely upon the
applied secondary references to cure this stated deficiency of Margiott (Final
Act. 3-5).
In view of the above, we therefore reverse Rejection 2.
2 Appellants' Figure 1 shows that bleed valve 84 is physically attached to
recirculation line 74 whereas Margiott's Figure shows that hydrogen transfer
valve 64 is physically attached to cathode flow path 38.
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Appeal2014-003636
Application 11/463,622
DECISION
Each rejection is reversed.
ORDER
REVERSED
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Appeal2014-003636
Application 11/463,622
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte PAUL TAI CHIANG YU, and FREDERICK T. WAGNER
Appeal2014-003636
Application 11/463,622
Technology Center 1700
NAGUMO, Administrative Patent Judge, dissenting.
While I concur with the reversal of the rejection for indefiniteness,
I respectfully dissent from the reversal of the rejection for obviousness.
Appellants have not directed our attention to a clear definition of the
term "re-circulation line for re-circulating cathode exhaust gas to the cathode
side of the stack" that limits the "re-circulation line" to first recycle line 70
and second recycle line 74 in Margiott, Fig. 1, shown on the following page.
In my view, on the present record, the broadest reasonable interpretation of
the plain language of the term is purely functional: a re-circulating line is a
line that carries exhaust gas back to the chamber whence the gas was
exhausted. Cathode oxidant line 62, when valve 72 in first re-cycle line 70
is open, performs that function. Put another way, there is no definition,
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Appeal2014-003636
Application 11/463,622
structural or otherwise, of the term "re-circulating line" that excludes line 62
between the junction of line 70 with line 62 and cathode flow field 28 of fuel
cell 12.
Margiott describes valve 64 in a line that connects anode fuel line 55,
which fluidly connects hydrogen reservoir 54 to anode flow field 28 of fuel
cell 12, to line 62, which fluidly connects oxygen reservoir 58 to cathode
flow field 42 of fuel cell 12. Cathode recycle lines 70 and 74 connect to
line 62. The language Margiott uses to describe the "hydrogen transfer
means" is open and permissive: "[t]he hydrogen transfer means may be a
hydrogen transfer valve 64 secured in fluid communication between the
anode flow path 24 and the cathode flow path 38, such as between the anode
inlet 26 and the cathode inlet 40" (emphasis added (Margiott 3 [0024]).
Margiott Fig. 1 is shown below.
70
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Application 11/463,622
There appears to be no reason (other than draughting convenience) for the
position of the junction of the second cathode re-cycle line 74 with line 62.
Moreover, Margiott describes an alternative hydrogen transfer means in the
form of an electrochemical hydrogen pump that operates "by passing a direct
current through the fuel cell in a manner known in the art." Thus Margiott is
not very particular about where or how the hydrogen transfer is done.
Appellants do not describe the connection of bleed valve 84, which
connects hydrogen reservoir 24 to cathode re-circulation line 82, in very
particular terms either.
Specification Fig. 1 is shown below.
72
CONTROLLER
50
16
32
FIGURE 1
24
{Specification Fig. 1 shows an embodiment of inventive fuel cell system 10,
with hydrogen bleed valve 84 connecting hydrogen reservoir 24 (right) to
re-circulation line 82( dashed line); emphasis added}
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Application 11/463,622
The '622 Specification reveals that "[t]here are several techniques for
bleeding hydrogen into the cathode side of a fuel cell stack at system shut-
down that are known in the art." (Spec. 1 [0016], last sentence.)
The "structural difference" found by the Majority (Op. 6) is not, in my
view, reflected in any limitation recited in the claims, and thus is not a basis
on which the claimed fuel cell can be distinguished from what would have
been obvious in view of the applied prior art.
I conclude that Appellants have not shown harmful error in the
Examiner's findings regarding Margiott. On the present record, I would
affirm the rejection for obviousness, and I dissent, with respect.
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