Ex Parte Mitlitsky

Board of Patent Appeals and Interferences

Jul 31, 2007

10248472 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is not
binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRED MITLITSKY
____________

Appeal 2007-2584
Application 10/248,472
Technology Center 3700
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Decided: July 31, 2007
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals the final rejection of claims 1-4 and 13-28 under
35 U.S.C. § 134. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.

INTRODUCTION
Appellant claims a method for filling a hydrogen gas vessel that
comprises passing hydrogen gas from a hydrogen gas source to a hydrogen
Appeal 2007-2584
Application 10/248,472

gas vessel, and maintaining the hydrogen gas at a temperature sufficient to
enable the filling of the hydrogen gas vessel at a rate that would fill a 5 kg
vessel with hydrogen gas in less than or equal to 10 minutes (claim 1).
Appellant states that filling a tank with hydrogen gas is an exothermic
process such that cooling the hydrogen gas while filling the tank will prevent
the tank from overheating (Specification 4, ¶ [0017]).
Claims 1 and 13 are illustrative:
1. A method for filling a hydrogen gas vessel, comprising:

passing hydrogen gas from a hydrogen gas source to a hydrogen gas
vessel; and

maintaining the hydrogen gas at a temperature sufficient to enable the
filling of the hydrogen gas vessel at a rate that would fill a 5 kg vessel with
the hydrogen gas in a period of time of less than or equal to about 10
minutes.

13. A method for filling a hydrogen gas vessel, comprising:

passing hydrogen gas from a hydrogen gas source to the hydrogen gas
vessel; and

controlling a temperature of the hydrogen gas to fill the vessel to its
specification pressure and maximum volume capacity while maintaining a
vessel pressure at less than or equal to the specification pressure.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Yamashita US 6,182,717 B1 Feb. 6, 2001
Starner US 6,386,272 B1 May 14, 2002

The rejections as presented by the Examiner are as follows:
1. Claims 13 and 24 are rejected under 35 U.S.C. § 102(e) as being
unpatentable over Yamashita.
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2. Claims 1-4, 14-16, 18, 20-23, 25, and 28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yamashita.
3. Claims 17, 19, 26, and 27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yamashita in view of Starner.

OPINION
35 U.S.C. § 102(e) YAMASHITA

CLAIM 13 and 24

Appellant argues that Yamashita does not disclose the claim 13
feature “controlling a temperature of the hydrogen gas to fill the vessel to its
specification pressure and maximum volume capacity while maintaining a
vessel pressure at less than or equal to the specification pressure” (Br. 6).
Appellant argues that Yamashita only discloses heating metal hydride in the
hydrogen storage tank 2 to absorb or desorb the hydrogen gas from the metal
hydride (Br. 6). Regarding claim 24, Appellant argues that Yamashita does
not disclose “cooling the hydrogen gas prior to entering the hydrogen gas
vessel” (Br. 7).
We cannot sustain the Examiner’s § 102(e) rejection for the reasons
below.
Appellant’s claim 13 method and disclosure require the hydrogen to
remain in gaseous form throughout the storage process (i.e., there is no
transformation to solid metal hydride) (Specification 4-9).
In contrast, Yamashita discloses a solid metal hydride storage system
for hydrogen gas (Yamashita, col. 2, ll. 18-29). Yamashita initially heats the
metal hydride in hydrogen supply tank 2 using heater H to release hydrogen
from the metal hydride (Yamashita, col. 3, ll. 39-58, col. 4, ll. 43-46). The
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hydrogen gas is then transported via gas supply line 6 to hydrogen storage
tank 4 (Yamashita, col. 3, ll. 56-67, col. 4, ll. 1-5). In the hydrogen storage
tank 4, the hydrogen is exothermically absorbed by the metal hydride and
the heat generated by the absorption of the hydrogen gas into the metal
hydride is used to heat the metal hydride in hydrogen supply tank 2 to
release the hydrogen from the metal hydride (Yamashita, col. 4, ll. 6-54).
Yamashita is silent regarding filling the tank to the specification pressure1
and maximum volume (claim 13), or cooling the hydrogen gas prior to
entering the storage vessel (claim 24).
From the above disclosures, it is clear that Yamashita does not store
hydrogen gas in the gaseous form as Appellant discloses and claims. Rather,
Yamashita only discloses storing hydrogen gas in solid metal hydride form.
Yamashita’s disclosure is only concerned with absorbing or releasing
hydrogen gas from the metal hydride. Yamashita does not disclose
“controlling a temperature of the hydrogen gas to fill the vessel to its
specification pressure and maximum volume capacity while maintaining a
vessel pressure at less than or equal to the specification pressure” as recited
in claim 13. Moreover, Yamashita does not disclose “cooling the hydrogen
gas prior to entering the hydrogen gas vessel” as recited in claim 24.
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).

1 We construe “specification pressure,” as recited in the claims, to mean the
maximum rated pressure of the vessel.

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Accordingly, we reverse the Examiner’s § 102(e) rejection of claims
13 and 24 because Yamashita fails to disclose the claim features “controlling
a temperature of the hydrogen gas to fill the vessel to its specification
pressure and maximum volume capacity while maintaining a vessel pressure
at less than or equal to the specification pressure” (claim 13) and “cooling
the hydrogen gas prior to entering the hydrogen gas vessel” (claim 24).

35 U.S.C. § 103(a) REJECTION OVER YAMASHITA IN VIEW OF
STARNER: CLAIMS 17 AND 26 DEPENDENT UPON CLAIM 13

Claims 17 and 26 depend from claim 13. As indicated the § 102(e)
rejection of claim 13 over Yamashita is reversed because all claim features
were not disclosed by Yamashita. Starner’s disclosure does not cure the
deficiencies of Yamashita. Accordingly, we reverse the § 103(a) rejection of
claims 17 and 26 over Yamashita in view of Starner.

35 U.S.C. §§ 103(a) REJECTIONS OVER YAMASHITA, AND
YAMASHITA IN VIEW OF STARNER

INDEPENDENT CLAIMS 1 AND 20
Claims 1 and 20 recite “filling of the hydrogen gas vessel at a rate that
would fill a 5 kg vessel with the hydrogen gas in a period of time of less than
or equal to about 10 minutes” (claim 1) and “filling the hydrogen gas vessel
at a rate that would fill a 5 kg vessel with hydrogen gas in a period of time of
less than or equal to about 5 minutes” (claim 20). We are unsure how to
interpret these claim features. As such, any attempt by the Examiner or the
Board to determine whether these claim features are disclosed by Yamashita
would be improperly based upon speculation as to the meaning of the claim
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features. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). If no reasonably definite meaning can be ascribed to certain terms in
the claim, the subject matter does not become obvious-the claim becomes
indefinite. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970).
Accordingly, because the claim features noted above render
independent claims 1 and 20, and the claims depending therefrom, indefinite
such that we cannot determine the meaning of these claims, we procedurally
reverse the Examiner’s § 103(a) rejection of independent claims 1 and 20
and dependent claims 2-4, 14-16, 18, 21-23, 25, and 28.

DEPENDENT CLAIMS 19 AND 27: § 103(a) REJECTION OVER
YAMASHITA IN VIEW OF STARNER

Claims 19 and 27 depend from independent claim 1. As indicated
above, the rejection of claim 1 over Yamashita is procedurally reversed.
Accordingly, the § 103(a) rejection over Yamashita in view of Starner of
claims 19 and 27 is procedurally reversed for the same reasons.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we make the
following new grounds of rejection.
Claims 1-4, 18-23, 27, and 28 are rejected under 35 U.S.C. § 112, 2nd
paragraph, as being indefinite. Independent claims 1 and 20 recite the
following indefinite claim features: (1) “filling the hydrogen gas at a rate
that would fill a 5 kg vessel with the hydrogen gas in a period of time of less
than or equal to about 10 minutes” (claim 1), and (2) “filling the hydrogen
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gas vessel at a rate that would fill a 5 kg vessel with the hydrogen gas in a
period of time of less than or equal to about 5 minutes” (claim 20).
These claim features are indefinite because we cannot determine from
the claims or Appellant’s Specification whether the “5 kg vessel” claim
feature is to be construed as the amount of hydrogen gas (i.e., 5 kilograms of
hydrogen) at maximum capacity, or simply the weight of the vessel itself.
Moreover, the recitation of supplying hydrogen gas “at a rate that
would fill a 5 kg vessel with the hydrogen gas in a period of time of less than
or equal to about 10 minutes” (claim 1) and the recitation of supplying
hydrogen gas “at a rate that would fill a 5 kg vessel with the hydrogen gas in
a period of time of less than or equal to about 5 minutes” (claim 20) render
the claims indefinite. We cannot determine from the claims or the
Specification if the filling rate recited in the claims is the time necessary to
reach the maximum capacity of the tank, or merely a partial filling of the
tank. The claims simply are not clear and the Specification provides no
assistance in determining the meaning of these claims.
Accordingly, we reject claims 1-4, 18-23, 27, and 28 under 35 U.S.C.
§ 112, 2nd paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2004). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner, or
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.

DECISION
The Examiner’s rejection of claims 13 and 24 under 35 U.S.C.
§ 102(e) as being unpatentable over Yamashita is REVERSED.
The Examiner’s rejection of claims 1-4, 14-16, 18, 20-23, 25, and 28
under 35 U.S.C. § 103(a) as being unpatentable over Yamashita is
procedurally REVERSED.
The Examiner’s rejection of claims 17 and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Yamashita in view of Starner is
REVERSED.
The Examiner’s rejection of claims 19 and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Yamashita in view of Starner is
procedurally REVERSED.
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The Examiner’s decision is REVERSED.
The application is REMANDED to the Examiner.

REVERSED; REMANDED (37 C.F.R. § 41.50(b))

cam

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