Ex Parte Fink et al

Patent Trials and Appeals Board

Apr 12, 2019

13976105 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/976,105 06/26/2013 Garrett W. Fink
500 7590 04/16/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
P99297WOOUS0/130609567USP 1574
EXAMINER
KEKIA, OMAR M
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
04/16/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRETT W. FINK, DAVID MELO FERREIRA,
and CHRISTOPHER JOHN CARNEY ALE
Appeal2018-006039
Application 13/97 6,105
Technology Center 1700
Before LINDA M. GAUDETTE, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, 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 1-5, 7-11, and 13. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal 2018-006039
Application 13/976,105
The invention relates to a fuel pressure regulator and a fuel cell
comprising such a regulator. App. Br. 3---6. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below:
1. A fuel pressure regulator unit for a fuel cell
compnsmg:
a housing providing a fuel inlet passage, regulated fuel
outlet passage, a sense pressure passage, a recycle passage and
a mixed fuel passage;
a pressure regulator provided in the housing and arranged
fluidly between the fuel inlet passage and the regulated fuel
outlet passage, the sense passage fluidly interconnecting the
mixed fuel passage and the pressure regulator, and the pressure
regulator configured to regulate the flow of fuel from the fuel
inlet passage to the regulated fuel passage in response to a
pressure from the sense pressure passage; and
an ejector arranged within the housing fluidly between
the regulated fuel outlet passage and the mixed fuel passage, the
ejector configured to receive recycled fuel from the recycle
passage, and
wherein the housing includes an installed orientation in
which the sense pressure passage is arranged at an oblique
angle to vertical and the ejector is arranged vertically.
Independent claim 8 is directed to a fuel cell comprising essentially
the fuel pressure regulator of claim 1.
Appellants 1 request review of the following rejections from the
Examiner's Final Office Action:
I. Claim 1 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bitzer (US 2005/0208357 Al, published September 22,
2005), Gillett (US 2003/0054209 Al, published March 20, 2003), and Saito
(US 2003/0199387 Al, published October 23, 2003).
1 The real party in interest is identified as the Audi AG. Br. 1.
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Application 13/976,105
II. Claims 2--4, 8, and 10 rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Bitzer, Gillett, Saito, and Sachs (US
2006/0081290 Al, published April 20, 2006).
III. Claim 5 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bitzer. Gillett, Saito, Sachs, and Kanno (US
2006/0088745 Al, published April 27, 2006).
IV. Claim 7 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bitzer, Gillett, Saito, Sachs, and Freeman (US
2005/0112428 Al, published May 26, 2005).
V. Claim 9 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bitzer, Gillett, Saito, Sachs, and Boss
(http://www.engineering-dictionarv.org/Boss, accessed June 26, 2015)
VI. Claim 11 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bitzer, Gillett, Saito, Sachs, and Pabst (US 2010/0221623
Al, published September 2, 2010).
VII. Claim 13 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bitzer, Gillett, Saito, Sachs, and Freeman.
Appellants rely on the same line of arguments to address the
rejections of independent claims 1 and 8. See generally App. Br.
Appellants do not present additional arguments addressing the various
rejections of dependent claims 2-5, 7, 9-11, and 13. Id. Accordingly, we
select claim 1 as representative of the subject matter claimed and decide the
appeal as to all grounds of rejections based on Appellants' arguments made
in support of the patentability of claim 1.
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Appeal 2018-006039
Application 13/976,105
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we affirm the Examiner's prior art rejections of claims 1-5,
7-11, and 13 for essentially the reasons the Examiner presents in the Final
Office Action and the Answer. We add the following for emphasis.
Claim 1 is directed to a fuel pressure regulator unit for a fuel cell
comprising a sense pressure passage fluidly interconnecting a mixed fuel
passage and a pressure regulator within a housing and wherein the housing
includes an installed orientation in which the sense pressure passage is
arranged at an oblique angle to vertical.
We refer to the Examiner's Final Office Action for a complete
statement of the rejection of independent claim 1. Final Act. 2-7. Briefly,
the Examiner finds that the combined teachings of Bitzer and Gillet disclose
a fuel cell regulator unit that differs from the claimed invention in that the
combined teachings do not teach a sense pressure passage arranged at an
oblique angle to vertical. Final Act. 2-5. The Examiner finds Saito teaches
a compact tubular fuel cell comprising gas passages that can be shaped at
will. Final Act. 4; Saito ,r,r 10, 12, 15. The Examiner determines that it
would have been obvious to a person of ordinary skill in the art to modify
Bitzer' s fuel pressure regulator by orienting all the supply and exhaust
conduits, including the sense pressure passage, in an upward vertical
direction rather than a horizontal orientation to minimize the sideways
expansion of the fuel housing and minimize the floor area occupied by the
fuel cell. Final Act. 4--5.
Appellants argue that the cited art does not teach or suggest a fuel
pressure regulator unit for a fuel cell having a housing wherein the housing
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Appeal 2018-006039
Application 13/976,105
includes an installed orientation in which the sense pressure passage is
arranged at an oblique angle to vertical. Br. 7-8. Specifically, Appellants
argue that the Examiner's reliance on Saito to meet this limitation in in error
because Saito only provides a generic teaching that a dimension can be
changed that does not amount to a teaching that the dimension has any
specific magnitude or range of magnitudes, let alone that a sense pressure
passage is arranged as recited in independent claim 1. Id. at 9-10.
We are unpersuaded of Examiner error for the reasons the Examiner
presents in the Final Office Action and the Answer. The premise of
Appellants' arguments is based on bodily incorporation. It is well
established that the obviousness inquiry does not ask "whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole." In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller,
642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference").
The arguments do not address adequately the Examiner's reasons for
combining the cited art. Final Act. 10-12; Ans. 12. Saito is directed to a
fuel cell comprising a tubular casing, an electrolyte layer received in the
tubular casing, and a pair of diffusion electrodes interposing the electrolyte
layer and defining a fuel passage and an oxidant passage. Saito ,r 2. Saito
seeks to provide a tubular case that is flexible enough to accommodate
special configurations based on the space available for installing the fuel cell
by allowing the shape of the gas passages to be selected at will. Saito ,r,r 9,
12. Like Appellants' and Bitzer's fuel cells, Saito's fuel cells use hydrogen
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Appeal 2018-006039
Application 13/976,105
and oxygen as fuels, which generate water upon reaction. Saito ,r,r 3, 32;
Bitzer ,r,r 11, 16; Spec. ,r 2-3. See also Kanno2 ,r 8 ( describing the creation
of water from the reaction of the fuels in the fuel cell). Saito's disclosure is
consistent with the Examiner's finding that Saito's gas passages are also
capable of draining any water generated from the reaction of the fuel
components from the gas passages. Ans. 17-18. Appellants' arguments do
not dispute this finding by the Examiner. Thus, Appellants have not
explained adequately why the Examiner reversibly erred in finding that one
skilled in the art, using ordinary creativity, would have been capable of
modifying Bitzer' s pressure regulator unit by providing it with gas passages
that allow Bitzer' s fuel cell to fit in the available space for installation, as
taught by Saito, and still allow for draining of any water generated from the
reaction of the fuels. Saito ,r 9;see KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."); see also In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the
art).
In addition, Appellants have not directed us to any evidence showing
that the angle at which the sense pressure passage is oriented is critical.
While the cited portions of the Specification relied upon by Appellants
associate the water freezing issue with a number of fuel/ gas passages and the
pressure regulator (Br. 8-9), none of these cited portions specifically point to
this issue as affecting the sense pressure passage. The Specification only
2 While we are aware that the Examiner did not apply the teachings of
Kanno to the rejection of claim 1, we refer to this reference only to
emphasize what Appellants acknowledge in their Specification.
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Appeal 2018-006039
Application 13/976,105
discloses that the sense pressure passage is provided within the housing at an
angle. Spec. ,r 19. 3
Appellants' arguments, thus, do not address adequately the rejection
the Examiner presents and do not point to error in the determination of
obviousness.
Accordingly, we affirm the Examiner's prior art rejections of claims
1-5, 7-11, and 13 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 1-5, 7-11, and 13 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
3 We note that the Examiner states that "[ t ]he specification does not
explicitly recite 'oblique angle to vertical' in describing the orientation of
the sense pressure passage" as claimed and "that in the drawing of Figure 3
the orientation of the sense passage cannot be unambiguously determined to
be at an oblique angle to vertical." Ans. 18. There is no written descriptive
support rejection under 35 U.S.C. § 112, first paragraph before us for review
on appeal and, thus, we do not reach this issue. We leave it to the Examiner
to consider this issue more fully if the Application is subject to further
prosecution.
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