Ex Parte Hasuka

Patent Trial and Appeal Board

Mar 31, 2016

12669159 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/669, 159 01114/2010 Y oshinobu Hasuka
23838 7590 04/04/2016
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
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.
14006/158 2003
EXAMINER
LEONG, JONATHAN G
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHINOBU HASUKA
Appeal2014-008724
Application 12/669,159
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Action mailed June 24, 2013 ("Final Act."), finally rejecting claims 1,
3, and 4. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Toyota Jidosha Kabushiki
Kaisha (Appeal Br. 2).
Appeal2014-008724
Application 12/669,159
CLAHvIED SUBJECT ivIATTER
Appellant's invention is directed to a fuel cell system (Abstract). The
claimed system is illustrated by the following annotated version of FIG. 1 from
the Specification:
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Fig. 1
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Annotated FIG. 1 is a diagram of a fuel cell system according to an embodiment
of the invention in the application on appeal.
The control unit controls the operation of the purge valve so as to increase
the amount gas discharged through it as the operation temperature of the fuel cell
rises (Spec. 4). Details of the claimed invention are set forth in representative
claim 1, which is reproduced below from the Claims Appendix of the Appeal
Brief (key claim limitations in italics):
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Appeal2014-008724
Application 12/669,159
1. A fuel cell system comprising:
a fuel cell;
a fuel gas system which supplies a fuel gas to the fuel
cell and circulates the gas discharged from the fuel cell;
a purge valve which discharges the gas from the fuel gas
system; and a control device that controls the opening/closing
operation of the purge valve,
wherein a partial pressure of impurities in the fuel gas
system is increased more than in a case of ordinary
temperature, when the operation temperature of the fuel cell is
higher than the ordinary temperature, and
wherein the control device controls the opening/closing
operation of the purge valve so that partial pressure of
impurities in the fuel gas system is constant in the entire load
region, in a case where the operation temperature of the fuel
cell is the ordinary temperature, and so that the partial pressure
of impurities in the fuel gas system is constant in the entire
load region, in a case where the operation temperature of the
fuel cell is higher than the ordinary temperature,
wherein the control device controls the opening/closing
operation of the purge valve so as to increase the amount of
the gas discharged from the fuel gas system, as the operation
temperature of the fuel cell rises.
DISCUSSION
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Kamihara. 2
"A prior art reference anticipates a patent claim under 35 U.S.C.
§ 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d
1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet
Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance,
Appellant contends that Kamihara does not teach that "[wherein] the control
2 Kamihara, U.S. Patent Pub. 2005/0244686 Al, published November 3, 2005.
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Appeal2014-008724
Application 12/669,159
device controls the opening/closing operation of the purge valve so as to
increase the amount of the gas discharged from the fuel gas system as the
operation of the fuel cell rises" (Appeal Br. 5). Instead, Appellant argues
that Kamihara teaches that "the higher the fuel gas temperature is, the lower
the purged hydrogen.flow rate threshold is set to decrease the opening
degree of the purge valve" (id.).
The Examiner finds that Kamihara discloses that as the temperature of
the fuel cell rises, in order to maintain a constant concentration of nitrogen
in the fuel cell exhaust, Kamihara necessarily increases the amount of gas
discharged from the fuel gas system through the purge valve (Ans. 6, 10,
citing Kamihara, i-fi-1 4, 34, 3 5). 3 The Examiner finds that the claim limitation
is described in Kamihara because "the amount of nitrogen gas discharged
from the fuel gas system as the operation temperature of the fuel cell rises
inherently increases with temperature in order to satisfy the constant
nitrogen concentration requirement" (Ans. 10, emphasis added). Thus, the
3 The Examiner also suggests that the claim limitation at issue ("wherein the
control device controls the opening/closing operation of the purge valve so
as to increase the amount of the gas discharged from the fuel gas system as
the operation of the fuel cell rises") should be given no patentable weight
because "the controller has not been claimed with 'programmed to'
language. We disagree with the Examiner and conclude that this claim
limitation is entitled to patentable weight. See, e.g. Typhoon Touch Techs.,
Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) ("while it is possible
to install software and/or hardware that would allow Aroneo's control unit to
perform the functions of the control unit, the 'configured to' language
requires that the prior art structure be capable of performing the function
without further programming"). In this case, the claimed fuel cell system
requires a controller which controls the claimed purge valve to perform
specific functions. If a prior art controller is not so programmed, it does not
meet that claim limitation.
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Appeal2014-008724
Application 12/669,159
anticipation rejection relies on a finding that Kamihara inherently discloses a
system in which "the control device controls the opening/closing operation
of the purge valve so as to increase the amount of gas discharged from the
fuel gas system, as the operation temperature of the fuel cell rises."
"Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from given set of circumstances
is not sufficient" to establish inherency. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (citations omitted). In this instance, Appellant has provided
a detailed explanation of why Kamihara does not inherently disclose the
claim limitation at issue (Appeal Br. 7-12). In particular, Appellant explains
that the concentration of nitrogen is kept constant in Kamihara's system by
adjusting the flow of hydrogen into the system, rather than by purging gas
out of the system (Appeal Br. 10, Reply Br. 3-5, (citing, inter alia,
Kamihara, i-fi-134, 35).
Therefore, we find that the preponderance of the evidence supports
Appellant's position that Kamihara does not disclose the final claim
limitation of claim 1. This finding necessitates reversing the anticipation
rejections over Kamihara.
CONCLUSION
We REVERSE the rejection of claims 1, 3, and 4 under
35 U.S.C. § 102(b) as being anticipated by Kamihara.
REVERSED
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