Ex Parte Edlund et al

Patent Trial and Appeal Board

Mar 18, 2016

13168034 (P.T.A.B. Mar. 18, 2016)

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.
13/168,034 06/24/2011 David J. Edlund NPW 343A 9264
78569 7590 03/18/2016
DASCENZO Intellectual Property Law, P.C.
1000 SW Broadway, Suite 1555
Portland, OR 97205
EXAMINER
YANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
03/18/2016 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 DAVID J. EDLUND, ARNE LAVEN, and MESA SCHARF
____________

Appeal 2014-006903
Application 13/168,034
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3 through 8, 10 through 15, and 21. We have jurisdiction under 35
U.S.C. § 6(b).
Appellants’ invention is generally directed to an energy-producing
and consuming assembly. App. Br. 2. Independent claims 1 and 21
illustrate the subject matter on appeal and are reproduced below:
1. An energy-producing and consuming assembly,
comprising:
Appeal 2014-006903
Application 13/168,034

2
a fuel source configured to provide a supply fuel stream
at a supply pressure;
a detector configured to detect the supply pressure;
a supply fuel pressure regulator configured to receive the
supply fuel stream and to produce therefrom a pressure-
regulated fuel stream at a regulated pressure;
a fuel cell stack configured to receive the pressure-
regulated fuel stream and an oxidant stream and to produce
therefrom an electric current at a production amperage to satisfy
an electrical load;
a load-regulating device configured to selectively control
a magnitude of the electrical load; and
a controller programmed to selectively control the
production amperage based on the detected supply pressure by
actively controlling the load-regulating device, wherein the
controller is programmed to at least one of increase the
electrical load responsive to detecting that the supply pressure
is greater than an upper threshold pressure and decrease the
electrical load responsive to detecting that the supply pressure
is less than a lower threshold pressure.

21. An energy-producing and consuming assembly,
comprising:
a fuel source configured to provide a supply fuel stream
at a supply pressure;
a detector configured to detect the supply pressure;
a supply fuel pressure regulator configured to receive the
supply fuel stream and to produce therefrom a pressure-
regulated fuel stream at a regulated pressure;
a fuel cell stack configured to receive the pressure-
regulated fuel stream and an oxidant stream and to produce
therefrom an electric current at a production amperage to satisfy
an electrical load;
a load-regulating device configured to selectively control
a magnitude of the electrical load; and
means for selectively controlling the production
amperage based on the detected supply pressure by actively
Appeal 2014-006903
Application 13/168,034

3
controlling the load-regulating device, wherein the means for
selectively controlling at least one of:
(i) increases the electrical load responsive to detecting
that the supply pressure is greater than an upper threshold
pressure; and
(ii) decreases the electrical load responsive to detecting
that the supply pressure is less than a lower threshold pressure.

App. Br. Claims Appendix 1, 6.
Appellants (see App. Br., generally) request review of the following
rejections from the Examiner’s Final Office Action mailed April 23, 2013
(“Final Act.”):
I. Claim 21 under 35 U.S.C. § 112, sixth paragraph.
II. Claims 1, 3–8, 10–15, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Yang (US 2004/0023083 A1, published February 5, 2004)
and Fields, III (US 2005/0048335 A1, published March 3, 2005).
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner’s rejection of claim 21 under 35
U.S.C. § 112, sixth paragraph, and the Examiner’s rejection of claims 1, 3–8,
10–15, and 21 under 35 U.S.C. § 103(a) as unpatentable over Yang and
Fields, for the reasons presented by Appellants. We add the following.
Rejection I
Claim 21 recites “means for selectively controlling the production
amperage [of a fuel cell stack] based on the detected supply pressure by
actively controlling the load-regulating device, wherein the means for
selectively controlling at least one of: (i) increases the electrical load
Appeal 2014-006903
Application 13/168,034

4
responsive to detecting that the supply pressure is greater than an upper
threshold pressure; and (ii) decreases the electrical load responsive to
detecting that the supply pressure is less than a lower threshold pressure.”
The Examiner determines that Appellants’ have improperly invoked the
sixth paragraph of 35 U.S.C. § 112 because Appellants “failed to not limit
the functional language by sufficient structure or material limitations.” Final
Act. 2.
The sixth paragraph of 35 U.S.C. § 112 sets forth the manner in which
means-plus-function limitations should be expressed and interpreted, and
thus is not a proper ground for a rejection. If the requirements of 35 U.S.C.
§ 112, sixth paragraph have not been met, the claim language is not treated
as a means-plus-function limitation or is considered indefinite under 35
U.S.C. § 112, second paragraph. Accordingly, the Examiner improperly
rejects claim 21 under 35 U.S.C. § 112, sixth paragraph.
Nevertheless, we note that, contrary to the Examiner’s assertions,
claim 21 does not recite a structure that performs the recited function of
controlling the production amperage of the fuel cell stack based on the
detected supply pressure by actively controlling the load-regulating device.
In addition, Appellants identify the structure described in the Specification
that corresponds to the means for performing this recited function, and the
Examiner does not dispute that the identified portions of the Specification
describe such structure. Compare App. Br. 6–8 citing Spec. 33, ll. 3–15; 34,
ll. 19–23; Fig. 3, 4 with Ans. 2–11.
We accordingly do not sustain the Examiner’s rejection of claim 21
under 35 U.S.C. § 112, sixth paragraph.

Appeal 2014-006903
Application 13/168,034

5
Rejection II
Claim 1 requires an energy-producing and consuming assembly to
comprise a controller programmed to selectively control the production
amperage of a fuel cell stack based on a detected pressure of supply fuel by
controlling a load regulating device. Independent claim 21 requires an
energy-producing and consuming assembly to comprise means for
selectively controlling the production amperage of a fuel cell stack based on
a detected pressure of supply fuel by controlling a load regulating device.
The Examiner finds in essence that Yang discloses a fuel cell system
comprising a fuel supply device 4, 411 that provides a fuel supply stream at a
pressure detected by a pressure gauge P1, which is upstream of a pressure
regulator 43 and valve 42 that adjust the flow rate and pressure of the fuel
supply stream. Final Act. 2–3. Consistent with the Examiner’s findings
(Final Act. 3), Yang discloses that a pressure gauge P2, which is
downstream of the pressure regulator 43, detects the pressure of the
regulated fuel stream that is supplied to a fuel cell stack 1 along with air to
produce a current I to satisfy a load 2. Yang ¶¶ 14, 15, 20, Fig. 1. The
Examiner finds that Yang discloses a control device 6 that receives signals
from the pressure gauges P1 and P2 representing the hydrogen pressures
upstream and downstream of the regulator 43, respectively. Final Act. 3
citing Yang ¶ 20. The Examiner determines that Yang’s fuel cell system
operates to produce a current based on the pressure of the fuel supply
stream. Final Act. 4 citing Yang ¶ 20, Fig. 1.

1 The reference numerals provided in the discussion of Yang’s disclosures
refer to Figure 1 of Yang.
Appeal 2014-006903
Application 13/168,034

6
The Examiner acknowledges that Yang does not disclose a load-
regulating device and controller as recited in claims 1 and 21. Final Act. 3.
To remedy these deficiencies in Yang, the Examiner relies on Fields’
disclosure of a fuel cell system having a regulator circuit 402 that controls
the output voltage of a DC-DC converter 20 based on the voltage output by a
fuel cell stack 10. Final Act. 3; Fields ¶¶ 35–38, Fig. 1. Specifically, Fields
discloses that when the fuel cell stack output voltage is higher than a
predetermined set point, the regulator circuit 40 increases the output voltage
of the DC-DC converter 20, and when the fuel cell stack output voltage is
lower than the set point, the regulator circuit 40 decreases the output voltage
of the DC-DC converter 20. Fields ¶¶ 37, 38. The Examiner finds that
Fields discloses that the DC-DC converter functions to protect the fuel cells
in the fuel cell stack from damage caused by reverse bias. Final Act. 3 citing
Fields ¶ 42. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the system of Yang to
include the converter and controller to operate it as taught by
Fields in order to protect the fuel cells located within the stack
from a low voltage reverse bias situation.

Final Act. 3.

However, the Examiner does not identify any disclosure in Fields, or
provide any other evidence, indicating that Fields’ controller is programmed
to selectively control the production amperage of the fuel cell stack by
controlling a load-regulating device based on a detected fuel supply

2 The reference numerals provided in the discussion of Fields’ disclosures
refer to Figure 1 of Fields.
Appeal 2014-006903
Application 13/168,034

7
pressure, as required by claims 1 and 21. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden . . . of
presenting a prima facie case of unpatentability.”); see also Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed.Cir.2008)(explaining that a prior structure must be capable of
performing the recited function without further programming). As discussed
above, Fields’ regulator circuit controls the output voltage of the DC-DC
converter based on the voltage output by the fuel cell stack, and not based on
a detected fuel supply pressure. Fields ¶¶ 35–38, Fig. 1. Although the
Examiner asserts that the “system of Fields detects a supply pressure which
is decreasing which decreases a production amperage wherein a rated load is
produced from the load regulating device to be lowered,” we find no
disclosure in the portions of Fields relied upon by the Examiner indicating
that the production amperage of Fields’ fuel cell stack is controlled by the
load-regulating device based on a detected fuel supply pressure. Final Act. 4
citing Fields ¶¶ 92–116.
In addition, although the Examiner determines that Yang’s system and
controller “control of the production amperage which is based on the
detected supply pressure wherein the detected supply pressure correlates to
the pressure of the input of fuel into the cell and directly to how much
amperage the fuel cell produces,” the portions of Yang relied upon by the
Examiner do not indicate that the controller controls the production
amperage of the fuel cell stack based on a detected fuel supply pressure, as
required by claims 1 and 21. Final Act. 4 citing Yang ¶ 20, Fig. 1.
Moreover, although the Examiner asserts that it is inherent to all fuel cell
Appeal 2014-006903
Application 13/168,034

8
systems that production amperage is based on the pressure of the fuel supply
(Ans. 3), the Examiner does not provide any evidence in support of the
asserted inherency. Ans. 2–11. Accordingly, the Examiner’s assertion that
“the function of the instant controller is met by that of the prior art” (Ans.
11) is treated as mere speculation in the absence of any supporting evidence,
and such speculation or conjecture is not a sufficient basis for a prima facie
case of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); In
re Sporck, 301 F.2d 686, 690 (CCPA 1962).
Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 1, 3–8, 10–15, and 21.

ORDER
For the reasons set forth above and in the Appeal Brief, the decision
of the Examiner is reversed.

REVERSED