Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals Board

Mar 5, 2020

14721160 - (D) (P.T.A.B. Mar. 5, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/721,160 05/26/2015 Andreas BUCHNER 080437.67582US 5912
23911 7590 03/05/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
GRESO, AARON J
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
03/05/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS BUCHNER, BAYERISCHE MOTOREN WERKE
AKTIENGESELLSCHAFT, MICHEAL BAUER, and STEFAN HAASE
____________

Appeal 2019-000900
Application 14/721,160
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–13 under 35 U.S.C. § 103(a) as
being unpatentable over at least the combined prior art of Lee (US
2004/0191606 A1, published Sept. 30, 2004) and Lisgaras (US

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Bayerische Motoren Werke
Aktiengesellschaft as the real party in interest (Appeal Br. 1).

Appeal 2019-000900
Application 14/721,160

2
2005/0142421 A1, published June 30, 2005).2 An oral hearing was held on
Feb. 26, 2020. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key disputed limitations):

1. A fuel cell having an anode-cathode stack, comprising:
at least one active surface layer formed by a first channel
structure with a first and at least one second channel for
conducting a first fluid over the active surface layer of the
anode-cathode stack;
a first distributor structure configured to distribute the
first fluid into the first and the at least one second channel of
the first channel structure, wherein
the first distributor structure is configured with a first
surface region upstream of an entrance of the first channel and
a second surface region upstream of each entrance of each of
the at least one second channel, and
the first and second surface regions are configured to
have a different flow resistance for the first fluid distributed in
the first distributor structure.

Independent claim 13 is directed to method which also requires a
similar distributor structure for conducting fluid over an active surface layer

2 Additional references, Gibb (US 2002/0064702 A1 published, May 30,
2002), Trabold (US 2009/0011310 A1, published Jan. 8, 2009), and
Calstrom (US 2003/0224239 A1, published Dec. 4, 2003) were applied to
claims 9–13 as listed in the Summary Table located at the end of this
Decision. A discussion of these references is not needed for disposition of
this appeal.

Appeal 2019-000900
Application 14/721,160

3
of a first channel structure with at least two channels of a fuel cell plate
(Appeal Br. Claims Appendix 20, 21).

ANALYSIS
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
After review of the respective positions provided by Appellant and the
Examiner, we conclude that the preponderance of the evidence supports
Appellant’s position that the Examiner has not met the burden in this case
for substantially the reasons set forth by Appellant in the Briefs.
Accordingly, we reverse the Examiner’s § 103 rejections of all the claims on
appeal.
We add the following primarily for emphasis.
This appeal hinges on whether the claims encompass a distributor
structure as described in Lisgaras in combination with a fuel cell plate as
configured in Lee. Appellant contends that Lisgaras’s cooling plenums
(distributor structure) guide fluid flow laterally through the gaps between
fuel cell layers (Reply Br. 3) and do not guide a fluid flow into channels of
an active surface layer. Appellant points out that Lisgaras explicitly
describes that opening labeled 18 is the oxidant feed inlet which would feed
fluid to the active surface layer, similar to the conduit inlet 34 feeding the
Appeal 2019-000900
Application 14/721,160

4
plate of Lee (Reply Br. 2, 3; Appeal Br. 7, 8; Lisgaras ¶¶ 100, 144; Lee Fig.
4).
While we appreciate the Examiner’s position that Lisgaras describes
that the fluid may be a cathode gas (e.g., Ans. 19, Ligaras ¶ 22), this does
not adequately address the Appellant’s position, especially in light of
Lisgaras’ explicit description of the depicted oxidant inlet 18. Appellant
contends that “one of ordinary skill would not misinterpret the Lisgaras
drawings [pertaining to distributors 33] as teaching reactant fluid distribution
to active surfaces of the fuel cell stacks 11, 12” (Reply Br. 4).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
As stated in In re Smith,
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.”
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (quoting In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). Cf. Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always
highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” (internal
citation omitted)).
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On this record, we agree with Appellant that the broadest reasonable
interpretation of the claim language consistent with the Specification does
not encompass Lisgaras’s distributors 33 (in combination with a fuel plate
channel structure as taught in Lee) as proposed by the Examiner. As pointed
out by Appellant, the claim language requires that the distributor is
configured with different flow resistance regions corresponding to first and
second channels of an active surface layer which are part of the same first
channel structure (Appeal Br. 17; Reply Br. 6-8). The Examiner has not
adequately explained how the applied prior art of Lisgaras and Lee teaches
or suggests the claimed distribution system in combination with active
surface channels for reasons presented by Appellant.
A preponderance of the evidence also supports Appellant’s position
that the proposed combination of Lisgaras/Lee to result in the claimed
structure (or corresponding method of claim 13) would be based on
improper hindsight reconstruction for the reasons discussed by Appellant in
the Briefs. The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the
teachings of the invention in issue”)).

Accordingly, we reverse the rejections of claims 1–13.

Appeal 2019-000900
Application 14/721,160

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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9 103 Lee, Lisgaras 1–9
9, 13 103 Lee, Lisgaras, Gibb 9, 13
10, 11 103 Lee, Lisgaras, Gibb, Trabold
10, 11
12 103 Lee, Lisgaras, Gibb, Trabold, Calstrom
12
Overall
Outcome
1–13

REVERSED