Ex Parte Ainscough et al

Patent Trial and Appeal Board

Feb 12, 2019

12232309 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/232,309 09/15/2008 Christopher Ainscough
22852 7590 02/14/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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.
10585.0071-00000 8116
EXAMINER
CREPEAU, JONATHAN
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER AINSCOUGH and
DAVID HENDERSON
Appeal2017-005499
Application 12/232,309
Technology Center 1700
Before DONNA M. PRAISS, MICHAEL G. McMANUS,
MERRELL C. CASHION, JR., Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 4, and 6-14. We have jurisdiction under 35
U.S.C. § 6(b ). Oral arguments were heard in this appeal on February 5,
2019. We AFFIRM.
1 In this decision, we refer to the Specification filed Sept. 15, 2008
("Spec."), the Final Office Action appealed from mailed July 30, 2015
("Final Act."), the Appeal Brief filed July 28, 2016 ("App. Br."), the
Examiner's Answer mailed Dec. 15, 2016 ("Ans."), and the Reply Brief
filed Feb. 15, 2017 ("Reply Br.").
2 The real party in interest is identified by Appellants as Nuvera Fuel Cells,
Inc. App. Br. 2.
Appeal2017-005499
Application 12/232,309
The subject matter on appeal relates to a fuel cell system that
circulates the anode exhaust back to the anode compartment of a fuel cell.
Spec. ,r 1. According to the Specification, electrically conductive spacers,
referred to as "flowfields," are used to create fluid passages for gases to flow
through in the anode compartment and the cathode compartment,
respectively. Id. ,r 4. Porous flowfields are referred to as "open flowfields"
because of the less well-defined flow passages within the flowfield
compared to flowfields made of plates having discrete flow channels. Id.
,r 5. Claim 1, the sole independent claim, is illustrative:
1. A fuel cell system, comprising:
a fuel cell comprising an anode compartment having an inlet, an
outlet, and an open flowfield made of a material chosen from
metal foam, metal mesh, metal screen, corrugated metal sheet,
graphite foam, and graphite mesh;
an anode gas in the anode compartment and creating an anode
pressure;
a source of a hydrogen-containing fuel gas fluidly connected to
the inlet of the anode compartment through a first conduit;
a control valve installed in the first conduit;
a gas-delivery means installed in the first conduit between the
control valve and the anode compartment;
a second conduit fluidly connecting the outlet of the anode
compartment and the gas-delivery means;
an anode exhaust gas flowing from the outlet of the anode
compartment into the gas-delivery means,
wherein the anode pressure ranges from 1 psig to 30 psig,
wherein the anode pressure differential between the anode inlet
and the anode outlet is less than about 40 millibar, and
wherein the control valve is configured such that when the
anode pressure inside the anode compartment is lower than a
preset value, the control valve opens and the hydrogen-
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containing fuel gas flows into the gas-delivery means, mixing
with the anode exhaust gas in the gas-delivery means to form
the anode gas.
App. Br. 16-17 (Claims App'x) (disputed limitations italicized).
Appellants appeal the following rejections:
1. Claims 1, 4, and 6-14 as indefinite under 35 U.S.C. § 112 ,r 2; and
2. Claims 1, 4, and 6-14 as unpatentable under 35 U.S.C. § I03(a)
over Merritt3 in view of Wilson4 and Jones5 as evidenced by
ASHRAE Handbook. 6
Appellants do not separately argue the patentability of the claims for
each rejection. App. Br. 7-14; Reply Br. 3-10. In accordance with 37
C.F.R. § 4I.37(c)(l)(iv), claims 4 and 6-14 will stand or fall together with
independent claim 1.
OPINION
Rejection 1: Definiteness
The Examiner finds that claim 1 is indefinite because the claim
recitations italicized in the above quotation constitute method steps in an
apparatus claim which make the metes and bounds of the claimed subject
matter unclear to a person skilled in the art. Final Act. 3 ( citing In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir.
2011); IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384 (Fed. Cir.
2005)).
3 US 5,441, 821, issued Aug. 15, 1995.
4 US 5,798,187, issued Aug. 25, 1998.
5 US 2007/0141408 Al, published June 21, 2007.
6 2012 ASHRAE Handbook, Heating, Ventilating, and Air-Conditioning
Systems and Equipment, SI ed., p. 44.5 (2012) ("ASHRAE Handbook").
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Application 12/232,309
Appellants agree with the Examiner that claim 1 is directed to an
apparatus. App. Br. 7. According to Appellants, "the control valve," "the
anode pressure," and "the anode compartment" included in the portion of
claim 1 identified by the Examiner as indefinite are structural components.
Id. Appellants argue that the claim "sets forth how the structure elements
would cause the claimed gases to flow and be mixed in the claimed fuel cell
system." Id. Appellants contend that "wherein the anode pressure
differential between the anode inlet and the anode outlet is less than about 40
millibar" as recited in claim 1 "clearly defines a structural feature of the
claimed fuel cell system" because the structure causes the anode pressure
differential. Id. at 8.
The Examiner responds that the anode pressure differential does not
define a structural feature of the system because "the pressure differential
across a fixed geometry is directly proportional to the square of the flow
velocity of the fluid flowing through the system." Ans. 2 ( citing ASHRAE
Handbook). The Examiner points out that the claim recitation "the anode
pressure ranges from 1 psig to 30 psig" indicates that the pressure in the
system is dynamic and variable and can be controlled by the user with a
compressor, for example. Id. at 3. Because the pressure drop is a dynamic
variable, there would be confusion as to whether an otherwise identical
apparatus running a pressure differential outside of that claimed range
infringes the claim. Id. at 4.
In the Reply Brief, Appellants contend that "the Examiner's reasoning
is flawed because there is no direct causation ... between an element being
controlled by fluid velocity and the element being non-structural." Reply
Br. 3. Appellants' position is that "[ t ]here are many structures capable of
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Application 12/232,309
being controlled by adjusting certain parameters, including fluid velocities"
and further point out that the flow velocity is not recited in the claim. Id. at
3--4. Appellants quote from paragraph 17 of the Specification as support for
the recited anode pressure differential being a structural attribute of the fuel
cell system on the basis that the anode pressure differential at least relates to
the structure of the "open flowfield." Id. at 4. Appellants note that the
equation in ASHRAE Handbook for determining pressure differential
includes the pipe length and inside diameter of the pipe indicating that the
pressure differential depends on structure attributes of the fuel cell system.
Id. at 5. Appellants argue that there is no uncertainty about a user infringing
the claims because the claims do not recite a user performing certain actions.
Id. at 6.
We are not persuaded by Appellants' arguments for the reasons
provided in the Final Rejection and the Answer. Based on the evidence
cited in this record, the flow differential will be determined by the flow
velocity for a fuel cell system having any given pipe length and diameter
based on the relationship between the pipe length, pipe diameter, and the
pressure differential, which relationship Appellants do not dispute. As a
consequence of that relationship, the claim limitation directed to the pressure
differential is a direction on how to use the apparatus, rather than a structural
limitation on what the apparatus is. This is consistent with the portion of the
Specification quoted by Appellants (Reply Br. 4):
In a fuel cell with low pressure drop, e.g., a fuel cell having an
open flowfield, the pressure differential between the inlet and
the outlet of the anode compartment can be less than 40-
millibar.
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Spec. ,r 17 ( emphasis added). The quoted portion reflects the variability of
the pressure differential and Appellants have not established that the
physical structure of the apparatus controls the pressure differential in a fuel
cell system. The recitation in claim 1 that "the anode pressure ranges from 1
psig to 30 psig" likewise indicates the variability of the pressure conditions
in the system. App. Br. 16 (Claims App'x). Absent the pressure differential
being determinative of some structural attribute, claim 1 does not adequately
apprise a person having ordinary skill in the art how to construct an
apparatus that would not infringe claim 1.
In sum, Appellants have not persuaded us of reversible error in the
Examiner's determination that the recitations in claim 1 requiring a pressure
differential between the anode inlet and the anode outlet and a preset value
for the anode pressure inside the anode compartment render the claim
indefinite.
Accordingly, we affirm the Examiner's rejection of claims 1, 4, and
6-14 as indefinite under 35 U.S.C. § 112 ,r 2.
Rejection 2: Obviousness
The Examiner finds that claims 1, 4, and 6-14 are unpatentable under
35 U.S.C. § 103(a) over Merritt in view of Wilson and Jones as evidenced
by ASHRAE Handbook. Final Act. 4--8.
Appellants contend that the prior art rejection of claim 1 is in error
because the references do not teach or suggest the anode pressure differential
between anode inlet and the anode outlet is less than about 40 millibar as
required by the claim. App. Br. 10-11. According to Appellants, the flow
field of Merritt, whether or not modified by Wilson, is not capable of
generating the claimed pressure drop because "[t]he claim limitation
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regarding 'the anode pressure differential' is a structural limitation that
further defines the claimed fuel cell system." Id. at 11. Appellants also
assert that Merritt fails to teach or suggest "the control valve is configured
such that when the anode pressure inside the anode compartment is lower
than a preset value, the control valve opens" as required by claim 1. Id. at
12. Appellants contend that a pneumatic control signal is not described in
the Specification as operating the control valve of Appellants' Figure 2. Id.
( citing Spec. ,r,r 33-34 [ sic ,r,r 20-21 ]). Appellants argue that it is the anode
compartment, the anode gas in the anode compartment, and the source of a
hydrogen-containing fuel gas that are the structural attributes enabling the
control valve to be configured such that when the anode pressure inside the
anode compartment is lower than a preset value, the control valve opens as
required by the claim. Id. at 13.
The Examiner responds that Merritt, whether or not modified by
Wilson, would be capable of generating the claimed pressure drop because
pressure drop can be manipulated merely by manipulating the flow velocity.
Ans. 4 ( citing ASHRAE Handbook). The Examiner also responds that
Merritt discloses the control valve performs the claimed function when it
states that the control signal from transducer 132 can be hydraulic, electrical,
or pneumatic. Id. at 4--5 ( citing Merritt top of column 8). The Examiner
finds that Appellants' Specification similarly describes pneumatic control to
operate the valve and Appellants' Figure 2 shows that the control valve
structure operates in response to the pneumatic signal. Id. at 5. The
Examiner acknowledges that the Specification does not use the term
"pneumatic," but the description of Appellants' Figure 2 refers to an anode
gas that, in combination with a spring, balances forces with a motive gas to
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control operation of the valve to allow the motive gas to pass and thus
functions as a pneumatic control means. Id.
In the Reply Brief, Appellants contend that Wilson, which the
Examiner relies upon for disclosing the claimed material of the open
flowfield, discloses a pressure drop ranging from 13 8 millibar to 408
millibar, that does not overlap the claimed pressure drop range of less than
about 40 millibar. Reply Br. 9--10. Appellants argue that Wilson as
evidenced by ASHRAE "at best teaches the fluid velocity in the open flow
field of Wilson can only be adjusted within a range corresponding to the
pressure-drop range of from 138 millibar to 408 millibar." Id. at 10.
We are not persuaded by Appellants' arguments because, based on
this record, the Examiner's findings are all supported by the record, and
Appellants have not adequately demonstrated (1) that the fuel cell system of
the prior art is not capable of the claimed pressure drop in view of the known
relationship to flow velocity in a fuel cell system having a set pipe length
and pipe diameter or (2) that a pneumatic valve is not disclosed by both
Merritt and Appellants' Specification and also capable of the claimed valve
function.
Claim 1 is directed to an apparatus. As such, the limitations in claim
1 directed to the operating conditions within the apparatus are only
meaningful to the extent they serve to differentiate the claimed apparatus
structure from the prior art apparatus structure. See Burr v. Duryee, 68 U.S.
531, 570 (1863) ("A machine is a concrete thing, consisting of parts, or of
certain devices and combination of devices."); In re Gardiner, 171 F.2d 313,
315-16 ( CCP A 1948) ("It is trite to state that the patentability of apparatus
claims must be shown in the structure claimed and not merely upon a use,
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function, or result thereof."); In re Casey, 370 F.2d 576, 580 (CCPA 1967)
("The claims in issue call for an apparatus or machine, viz. a tape dispensing
machine. The manner or method in which such machine is to be utilized is
not germane to the issue of patentability of the machine itself."); In re Hack,
245 F.2d 246,248 (CCPA 1957) ("These cases are merely expressive of the
principle that the grant of a patent on a composition or machine cannot be
predicated on a new use of that machine or composition.").
Appellants have not provided convincing evidence of a patentable
difference in structure between the apparatus of claim 1 and that suggested
by the prior art.
We are not persuaded by Appellants' arguments because Appellants
do not adequately explain why the fuel cell system of Merritt, whether or not
modified by Wilson, would not be capable of operating at the claimed
pressure differential. Appellants' assertion that any pressure differential in
the fuel cell system suggested by the prior art would be limited to the
pressure differential value disclosed in Wilson is not persuasive of error for
a number of reasons. First, Appellants' assertion does not explain why the
Darcy-W eisbach equation in the ASHRAE Handbook, relating the pressure
differential to the flow velocity for a given pipe length and pipe diameter of
a system, would not apply to either Merritt or Merritt modified by Wilson.
Second, nonobviousness cannot be shown by attacking the Wilson reference
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413,426 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Third, the bodily incorporation of
Wilson's pressure differential disclosure along with Wilson's disclosure of
an open metal mesh or metal screen flowfield is not necessary for the
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combination of the cited references. "The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. . . . Rather, the test is what the
combined teachings of those references would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). See
also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review."); In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). Rather, "if 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 Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007).
Appellants' arguments are insufficient to show error in, and thus
justify a reversal of, the Examiner's rejection of claim 1. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, the Board would not have erred in framing
the issue as one of reversible error because "it has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections").
Accordingly, we affirm the Examiner's rejection of claims 1, 4, and
6-14 as unpatentable under 35 U.S.C. § 103(a).
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CONCLUSION
We sustain the Examiner's rejections of claims 1, 4, and 6-14 under
35 U.S.C. §§ 103(a) and 112 if 2.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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