Ex Parte Hild et al

Board of Patent Appeals and Interferences

Apr 8, 2010

10848203 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS HILD, THOMAS HERBIG,
and BERNHARD WNENDT
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Appeal 2009-005368
Application 10/848,203
Technology Center 1700
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Decided: April 08, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, and 4-21. We have jurisdiction under 35
U.S.C. § 6.
We REVERSE.
Appeal 2009-005368
Application 10/848,203

Appellants claim a fuel cell power system comprising a compressor
302 having two gas inlets (see 124, 322), a fuel cell stack 122 having a
reactant gas effluent outlet 306, a fluid connection 322 between the stack
outlet and the compression chamber of the compressor that delivers a
pressurized recycle gas stream comprising a portion of the reactant effluent
gas to one of the compressor gas inlets, and “a pressure regulator [308]
disposed in said fluid connection [322] for regulating a pressure of said
pressurized recycled gas stream” (claims 1, 19; fig. 3). Appellants also
claim a method of operating a fuel cell power system comprising moving a
reactant feed gas through a compressor and then directing the reactant feed
gas through a fuel cell stack, discharging a reactant gas effluent from the
fuel cell stack, and “re-circulating at least a portion of said reactant gas
effluent in a pressurized gaseous state to a location within a compression
chamber of said compressor” (claim 11).
Representative claims 1 and 11 read as follows:
1. A fuel cell power system comprising:

a compressor having at least two gas inlets, a compression
chamber, a discharge and a reactant feed gas pumped therethrough;

a fuel cell stack receiving said reactant feed gas in a stack inlet
and discharging a reactant gas effluent from a stack outlet;

a fluid connection between said stack outlet and said
compression chamber that delivers a pressurized recycle gas stream
comprising a portion of said reactant effluent gas to one of said at least two
gas inlets; and

a pressure regulator disposed in said fluid connection for
regulating a pressure of said pressurized recycle gas stream as it is delivered
to one of said at least two gas inlets.
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Appeal 2009-005368
Application 10/848,203

11. A method of operating a fuel cell power system comprising:

moving a reactant feed gas through a compressor having an inlet
and a discharge;

directing said reactant feed gas from said discharge through a
fuel cell stack;

discharging a reactant gas effluent from said fuel cell stack; and

re-circulating at least a portion of said reactant gas effluent in a
pressurized gaseous state to a location within a compression chamber of said
compressor which is intermediate said inlet and said discharge, wherein said
re-circulated reactant gas effluent is maintained at an intermediate pressure
greater than an inlet pressure of said compressor and less than a discharge
pressure of said compressor.

The references set forth below are relied upon by the Examiner in the
rejections before us (Ans. 3):
Salvador (Salvador ‘108) 6,815,106 B1 Nov. 09, 2004
Dubel 2005/0037243 A1 Feb. 17, 2005
Salvador1 (Salvador ‘112) JP 2001-345112 Dec. 14, 2001
Preidel2 WO 03-052850 June 26, 2003
The Examiner rejects claims 1, 2, 5-13, and 15-21 under 35 U.S.C.
§ 102(a) as being anticipated by Dubel (i.e., WO 850).
The Examiner rejects claims 4 and 14 under 35 U.S.C. §103(a) as
being unpatentable over Dubel in view of Salvador (i.e., JP 112).

1 The Examiner relies on and refers to US 6,815,106 to Salvador as the
English language equivalent to the JP reference.
2 Both the Examiner and Appellants rely on and refer to US 2005/0037243
to Dubel as the English language equivalent of the WO reference. Like the
Examiner and Appellants, we will use the name Dubel in referring to the
WO reference.
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Appeal 2009-005368
Application 10/848,203

The § 102 Rejection
For a claim to be anticipated, each claim element must be disclosed,
either expressly or inherently, in a single prior art reference, and the claimed
arrangement or combination of those elements must also be disclosed, either
expressly or inherently, in that same prior art reference. Therasence, Inc. v.
Becton, Dickinson and Co., 593 F.3d 1325, 1332-33 (Fed. Cir. 2010).
We agree with Appellants (App. Br. 15-19) that Dubel does not
disclose, either expressly or inherently, the independent system claims 1 and
19 limitation “a pressure regulator disposed in said fluid connection for
regulating a pressure of said pressurized recycle gas stream”.
The Examiner finds this limitation to be satisfied by the compressor
35 or the throttle valve 15 shown in Figure 2 of Dubel (Ans. 4-6). However,
Dubel’s compressor cannot be “disposed in said fluid connection” (claims 1,
19) since the connection is defined as between the stack outlet and the
compression chamber or gas inlet of the compressor (i.e., the compressor
cannot be disposed between itself and the stack outlet). Moreover, because
the compressor and throttle valve of Dubel are located in a piping
arrangement which recycles incompressible liquid water, neither the
compressor nor the valve would be capable of functioning as “a pressure
regulator . . . for regulating a pressure of said pressurized recycle gas
stream” (claims 1, 19).
We also agree with Appellants (App. Br. 10-14) that Dubel fails to
disclose, either expressly or inherently, the independent method claim 11
limitation “re-circulating at least a portion of said reactant gas effluent in a
pressurized gaseous state to a location within a compression chamber of said
compressor”.
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Appeal 2009-005368
Application 10/848,203

Concerning this claim limitation, the Examiner states that, “[w]hile
the [E]xaminer recognizes that water separator 120 separates liquid water
from the gases to an acceptable purity level, it should be noted that any
residual amount of effluent gas might still be present in the liquid water and
carried back to the inlet of compressor 35” (Ans. para. bridging 15-16;
emphasis added). The Examiner’s statement that residual effluent gas
“might” (id.) be present in the recycled liquid water of Dubel is unsupported
speculation. Even assuming this speculation to be correct, the possibility
that residual effluent gas might be present in the recycled liquid water would
not establish that Dubel inherently discloses the method step under
consideration. It is well settled that inherency may not be established by
probabilities or possibilities. Therasense, 593 F.3d at 1332-33. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient. Id.
For the above stated reasons, we cannot sustain the Examiner’s § 102
rejection of claims 1, 2, 5-13 and 15-21 as being anticipated by Dubel.
The § 103 Rejection
The Examiner does not rely on the secondary reference to Salvador
for supplying the above-discussed deficiencies of the primary reference to
Dubel. Therefore, we also cannot sustain the Examiner’s § 103 rejection of
claims 4 and 14 as being unpatentable over Dubel in view of Salvador.
Order
The decision of the Examiner is reversed.
REVERSED

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Appeal 2009-005368
Application 10/848,203

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HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
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