Ex Parte Balan et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10881407 (B.P.A.I. Apr. 29, 2010)

1

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHELLAPPA BALAN
and DANIEL PRESTON SMITH
______________

Appeal 2010-000419
Application 10/881,407
Technology Center 1700
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Decided: April 29, 2010
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Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 10 through 15 in the Final Office Action
mailed November 4, 2008. 35 U.S.C. §§ 6 and 134(a)(2002); 37 C.F.R.
§ 41.31(a)(2008).
We reverse the decision of the Primary Examiner.
Appeal 2010-000419
Application 10/881,407
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Claim 10 illustrates Appellants’ invention of a system for producing
electricity, and is representative of the claims on appeal:
10. A system for producing electricity, comprising:
a gasifier operable to produce a fuel gas from a solid fuel for reaction
in a fuel cell;
a fuel cell operable to receive the fuel gas from the gasifier and to
produce electricity from a reaction between the fuel gas and an oxidant,
wherein unreacted fuel gas from the fuel cell is recirculated through the fuel
cell; and
a heat exchanger operable to transfer heat from the unreacted fuel gas
from the fuel cell to a liquid water stream to produce steam.
The Examiner relies on the evidence in this reference:
Keefer US 2004/0131912 A1 Jul. 8, 2004
Appellants request review of the ground of rejection of claims 10
through 15 under 35 U.S.C. § 102(e) as anticipated by Keefer advanced on
appeal by the Examiner (Br. 3; Ans. 3).
OPINION
Claim Interpretation
The dispositive issue in this appeal entails the interpretation of the
clause “a heat exchanger operable to transfer heat from the unreacted fuel
gas from the fuel cell to a liquid water stream to produce steam” of
representative independent claim 10 by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage in context as they would be
understood by one of ordinary skill in the art in light of the written
description in the Specification and without reading into the claims any
disclosed limitation or particular embodiment. See, e.g., In re Suitco
Surface, Inc., 2010 WL 1462294, at *3 Cir. 2010) (“During reexamination,
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as with original examination, the PTO must give claims their broadest
reasonable construction consistent with the specification.”) (citing In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); In
re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We agree with Appellants that when the subject claim language is
considered in light of the disclosure in the Specification, claim 10 specifies
that the claimed system comprises at least, among other things, any manner
of device that functions as a heat exchanger which operates by transferring
heat from unreacted fuel gas from the fuel cell directly to a liquid water
stream so as to produce steam from that water using that heat. Br. 4; see
also Br. 3. See Spec. ¶ 0021 and Fig. 1.
Claim 10: § 102(e) over Keefer
The Examiner must establish a prima facie case of anticipation under
§ 102(b) by showing, as a matter of fact, that a single reference describes to
one skilled in this art each and every limitation of the claimed invention
encompassed by the claim, arranged as required therein, either explicitly or
inherently. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997),
and cases cited therein; In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990),
and cases cited therein.
The dispositive issue in this appeal is whether the Examiner has found
in Keefer a description of an embodiment of a system including a component
that functions as a heat exchanger which operably transfers heat from
unreacted fuel gas from the fuel cell directly to a liquid water stream so as to
produce steam as specified by claim 10.
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Application 10/881,407
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The sole embodiment of Keefer that the Examiner identifies as
generating steam is described in Keefer paragraph 0076 with respect to
Keefer Figures 13-17:
[0076] The enriched hydrogen product of the [rotary vacuum
pressure swing adsorption1] 24 is mixed with fresh fuel
makeup, which is then delivered with supplemental steam
generated with heat recovery from the water gas shift reactor 22
(with a Heat Recovery Steam Generator (HRSG) 24 [sic, 422]
integrated with the water gas shift reactor 22 for cooling
thereof). Supplemental heat may also be generated by heat
recovery from the auxiliary gas turbine exhaust.
Ans. 5; see also Ans. 8 and 10. According to the Examiner, “since the
Water Gas Shift Reactor cools the anode exhaust and the steam generator
cools the Water Gas Shift Reactor to produce steam, then the Water Gas
Shift reactor [sic] acts as a heat exchanger which uses the heat of the anode
exhaust of [Keefer] to produce steam in the steam generator.” Ans. 5.
In these respects, the Examiner further points to this disclosure in
Keefer:
[0075] Anode exhaust gas may [sic] subjected to cooling by
recuperative heat exchange with the incoming fuel and
hydrogen-enriched recycle stream, to water gas shift in order to
increase hydrogen and CO2 concentrations prior to the PSA
separation, and to water removal by condensation before being
admitted as feed to the PSA unit 24. A blower 40 may be
provided to boost the feed pressure to the PSA unit, and to drive
circulation through the anode recycle loop.
Ans. 4 and 9-10.

1 See Keefer, e.g., ¶¶ 0036, 0046, 0071, and 0072.
2 See Keefer Figs. 13-17 and ¶ 0081.
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We find from representative Keefer Figure 13 and accompanying
disclosure that the anode exhaust gas circulates from anode outlet 80 to
water gas shift reactor 22, and “[t]he mixture of fuel, recycled hydrogen and
steam is delivered from the water gas shift reactor 22 to a pre-reformer 32
before entering the anode channel inlet 89.” Keefer, e.g., ¶ 0077; see also
¶ 0072. We further find from representative Keefer Figure 13 and
accompanying disclosure that a line carries material from water gas shift
reactor 22 to condenser 54, and liquid water from the latter is delivered via
water pump 50 to Heat Recovery Steam Generator (HRSG) 42 which forms
steam with heat recovered from water gas shift reactor 22. The steam is
carried by a line to the fuel inlet line and the combined materials delivered to
pre-reformer 32. Keefer, e.g., ¶¶ 0077 and 0081.
We find Keefer further discloses that “[t]he anode exhaust gas
received from the anode outlet may be subjected to water gas shift reaction,
optionally with added steam;” that “[a]fter cooling from the anode outlet, the
anode exhaust gas may be contacted with a catalyst active for the water gas
shift reaction;” and “steam generated by a heat recovery steam generator 42
[which is] heated by the exothermic water gas shift reactor 32” as illustrated
in Figure 25. Keefer ¶¶ 0024, 0031, and 0108.
On this record, we agree with Appellants that the Examiner has not
identified an embodiment disclosed in Keefer which would have described
to one skilled in this art a system which meets all of the limitations of
appealed claim 10, including the last clause thereof requiring the heat
exchanger to directly transfer heat from unreacted fuel gas in the anode
exhaust from the fuel cell to a liquid water stream so as to produce steam
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from that water using that heat. See above p. 3. Br. 4-6. In this respect,
Appellants argue that “a water gas shift reactor is actually used to change the
chemical constituents of anode exhaust and not to cool down the anode
exhaust and does not act as a heat exchanger.” Br. 5-6; see also Br. 4-5.
Indeed, in the embodiment relied on by the Examiner, water gas shift reactor
22 is cooled by Heat Recovery Steam Generator (HRSG) 42, and, as
Appellants point out, it is clear from Keefer that the water gas shift reaction
in water gas shift reactor 22 also generates heat. Br. 5. The Examiner has
not explained how the water gas shift reactor 22 transfers the heat from the
anode exhaust directly to HRSG 42 to produce steam in the liquid water in
the line from condenser 54. See Ans., e.g., 5 and 11.
We agree with the Examiner that Keefer describes the use of heat
exchangers in several system embodiments. Ans., e.g., 4-5, 8-9, and 10.
However, we, like Appellants, find no description of steam produced by the
transfer of heat directly to liquid water in such embodiments. Br. 5-6. To
the extent that the Examiner contends Keefer would have led one of ordinary
skill in the art to combine parts of the different systems described therein
and thus to the claimed system encompassed by claim 10, such an argument
is directed to a ground of rejection under 35 U.S.C. § 103(a). See, e.g.,
Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 780, (Fed. Cir.
1985) (“[A]nticipation under § 102 can be found only when the reference
discloses exactly what is claimed and that where there are differences
between the reference disclosure and the claim, the rejection must be based
on § 103 which takes differences into account. D Chisum, Patents § 3.02.”);
cf. In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[F]or the instant rejection
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under 35 U.S.C. § 102(e) to have been proper, the . . . reference must clearly
and unequivocally disclose the claimed compound or direct those skilled in
the art to the compound without any need for picking, choosing, and
combining various disclosures not directly related to each other by the
teachings of the cited reference.”).
Accordingly, in the absence of a prima face case of anticipation over
Keefer, we reverse the ground of rejection of claims 1 through 12 under 35
U.S.C. § 102(e).
The Primary Examiner’s decision is reversed.

REVERSED

kmm

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