Ex Parte Hashizume et al

Board of Patent Appeals and Interferences

Apr 22, 2010

10610975 (B.P.A.I. Apr. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENICHI HASHIZUME
and TIMO O. ERIKSSON
____________

Appeal 2009-012462
Application 10/610,975
Technology Center 1700
____________

Decided: April 22, 2010
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
TERRY J. OWENS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 3, 5-17, 22, 23,
26-28, and 30. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6. Claim 22 is illustrative:
22. A modular electricity generation system comprising:

a detachable fuel storage tank configured to store a type of fuel;

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a detachable fuel reformer corresponding to the stored type of fuel;

a fuel type specific interface configured to connect the detachable fuel
storage tank and the detachable fuel reformer, wherein the fuel type specific
interface prevents connection between a detachable fuel storage tank and a
detachable fuel reformer that do not correspond to a same type of fuel; and

a detachable fuel cell configured to connect to the detachable fuel
reformer.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Yamamoto 4,883,724 Nov. 28, 1989
Dickman US 2001/0049038 A1 Dec. 6, 2001
Cortright US 2003/0099593 A1 May 29, 2003
Shioya 6,777,118 B2 Aug. 17, 2004
Deshpande 6,824,577 B2 Nov. 30, 2004
Appellants' claimed invention is directed to a modular electricity
generation system. The system comprises a detachable fuel storage tank, a
detachable fuel reformer, and a detachable fuel cell connected to the fuel
reformer. An interface, which is specific to the fuel type in the tank, is
configured to connect the fuel storage tank to the fuel reformer. Claim 22
recites that "the fuel type specific interface prevents connection between a
detachable fuel storage tank and a detachable fuel reformer that do not
correspond to a same type of fuel." The other claims on appeal contain
similar recitations.
Appealed claims 5-7, 9-12, 15, 22, 23, 26, and 28 stand rejected under
35 U.S.C. § 102(e) as anticipated by or, in the alternative, under 35 U.S.C.
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§ 103(a) as being unpatentable over Shioya. In addition, the appealed claims
stand rejected under 35 U.S.C. § 103(a) as follows:
(a) claims 3, 27, and 30 over Shioya in view of Dickman,
(b) claims 23, 8, and 14-17 over Yamamoto in view of Shioya and
Dickman, and
(c) claim 13 over Yamamoto in view of Shioya, Dickman, and
Cortright.
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejections to the extent they are
based on § 103.
There is no dispute that Shioya, like Appellants, discloses an
electricity generation system comprising a detachable fuel storage tank, a
fuel reformer, and a fuel cell. Nor have Appellants rebutted the Examiner's
legal conclusion that it would have been obvious for one of ordinary skill in
the art to make the reformer and fuel cell of Shioya modular, or detachable.1
Appellants' principal argument is that none of Shioya or the other applied
references teaches or suggests the claim requirement for a fuel type specific
interface that prevents connection between a detachable fuel storage tank
and a detachable fuel reformer that do not correspond to a same type of fuel.

1 The Examiner's acknowledgement that Shioya does not expressly disclose
a detachable reformer and fuel cell necessitates that the § 102 rejection is not
sustainable.
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The flaw in Appellants' position is that the argued recitation does not
impart a structural limitation on the claimed system. The appealed claims
define a system that comprises a single detachable fuel storage tank and a
single detachable fuel reformer that are connected with a specific interface.
The appealed claims do not define a system comprising a plurality of
storage tanks and reformers that are connected with interfaces that are not
interchangeable with each other based on the tanks’ storage of different
types of fuels. Since it is fair to say that the systems of Shioya and
Yamamoto comprise interfaces which connect fuel storage tanks with fuel
reformers that are, by necessity, specific to the fuel types processed, we
perceive no patentable distinction between the structures of systems within
the scope of the appealed claims and the systems of the prior art.
Appellants' claim recitation of an interface that prevents connection
between a theoretical fuel tank and reformer for a different fuel type is
tantamount to a statement of intended use that does not further limit the
recited structure. Appellants do not claim any particular configuration for
the interface such that it serves as a distinction over the interfaces disclosed
by the prior art. Nor have Appellants established the nonobviousness of
configurations for the interface within the scope of the appealed claims.
Furthermore, to the extent there was a problem in the art of connecting
reformers and fuel cells to tanks containing the wrong types of fuel, we are
satisfied that it would have been a matter of obviousness for one of ordinary
skill in the art to readily recognize the problem, and its solution, by
preventing connection to the wrong fuel by using an interface which is
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incapable of connecting to that fuel. In re Ludwig, 353 F.2d 241 (CCPA
1965).
Separately argued claim 3 contains the recitation "wherein the first
input interface is not connectable with a second output interface of a second
detachable fuel tank configured to store a second fuel type." Appellants'
arguments for claim 3 fall for essentially the same reasons set forth above.
The system defined by claim 3 does not comprise a second detachable fuel
tank. The claim language at issue simply recites a hypothetical construct
wherein the first input interface is not connectable with a second unspecified
output interface of an unclaimed second detachable fuel tank. We
emphasize that claim 3 does not define a system comprising a second
detachable fuel tank. Also, again, we find nothing nonobvious in using
different connections to different fuel tanks to prevent use of the wrong fuel.
As for separately argued claim 11, we are satisfied that the Examiner
properly concluded that it would have been obvious for one of ordinary skill
in the art to provide an air inlet for the fuel cells of the prior art, and
Appellants have presented no argument to the contrary.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
In conclusion, based on the foregoing, the Examiner's decision
rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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