Ex Parte Kelley et al

Board of Patent Appeals and Interferences

Aug 31, 2012

11302358 (B.P.A.I. Aug. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/302,358 12/13/2005 Ronald James Kelley CM01566LD01/10-93D01 2046
51874 7590 09/04/2012
LAW OFFICES OF CHARLES W. BETHARDS, LLP
P.O. BOX 1622
COLLEYVILLE, TX 76034
EXAMINER
YANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
09/04/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte RONALD JAMES KELLEY,
STEVEN DUANE PRATT, SIVAKUMAR MUTHUSWAMY,
and ROBERT PENNISI
________________

Appeal 2011-007271
Application 11/302,358
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007271
Application 11/302,358

2
The Examiner finally rejected claims 1-16 of Application 11/302,358
under 35 U.S.C. § 102(e) as anticipated and/or under 35 U.S.C. § 103(a) as
obvious.1 Appellants seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
Background
Fuel cells are electrochemical cells in which a free energy change
resulting from fuel oxidation is partially converted into electrical energy.
Spec. 1. Fuel cells are comprised of an anode, a cathode, and an electrolyte
that separates the two. Id. In a fuel cell, fuel is oxidized at the anode,
producing a stream of electrons that flow through electrical conductors
across a load and are used to reduce an oxidant (commonly atmospheric
oxygen) at the cathode. Id. at 1-2. Along with the electron flow, the
oxidation of fuel in a fuel cell produces a flow of ions through the electrolyte
layer. Id. at 1.
Fuel crossover occurs when un-oxidized fuel crosses through the
electrolyte layer to the cathode. Id. at 3. For example, in direct methanol fuel
cells, methanol is the fuel. Id. at 1. Methanol can cross through the ion-
exchange membranes that are commonly used in solid polymer
electrochemical fuel cells. Id. at 3. Diffusion of methanol to the cathode
reduces the fuel cell’s fuel utilization efficiency and can lead to performance
losses. Id. Indeed, depending on the particular type of cathode and oxidant
used in the fuel cell, methanol oxidation at the cathode may poison the
cathode’s catalyst material. Id. at 4.

1 The Examiner has conceded that a non-statutory type double patenting
rejection has been overcome. Ans. 4.
Appeal 2011-007271
Application 11/302,358

3
The ’358 application is directed to apparatus that allegedly can be
used to limit or reduce fuel crossover.2 Spec. 1. Claim 1 is reproduced
below, with the key claim limitations emphasized:
1. A fuel cell system arranged and constructed to limit an
amount of a fuel that is not electro-oxidized in a fuel cell, the
fuel comprising a liquid fuel, the fuel cell system comprising:
a fuel cell membrane having an anode layer, a cathode layer and
an electrolyte layer disposed between said anode layer and said
cathode layer, said anode layer and said cathode layer arranged
to be coupled to an electrical load; and
a fuel delivery system including a fuel chamber disposed
proximate to said anode layer at a side opposite to said
electrolyte layer, said fuel delivery system for; [sic]
setting a molecular ratio of the fuel and water for a fuel-
water mixture to be substantially equal to one; and
controlling an amount of said fuel-water mixture that is
available to said anode layer of the fuel cell membrane
according to an amount of the fuel that will be electro-
oxidized by the fuel cell thereby limiting fuel crossover
and fuel that is not electro-oxidized in the fuel cell.
App. Br. 18 (emphasis added).
Rejections
1. The Examiner finally rejected claims 1-3 under 35 U.S.C. § 102(e)
as anticipated by U.S. Patent No. 6,824,899 B2 (“Acker,” issued
Nov. 30, 2004). Ans. 4.
2. The Examiner finally rejected claims 1-6, 9, and 10 under
35 U.S.C. § 103(a) as obvious over U.S. Patent Application

2 The ’358 application is a divisional of an application that issued as
U.S. Patent No. 7,282,283 B2 on Oct. 16, 2007. The ’283 patent has claims
directed toward methods for limiting or reducing fuel crossover in fuel cells.
Appeal 2011-007271
Application 11/302,358

4
Publication 2006/0251935 A1 (“Barrett,” Nov. 9, 2006) in view of
U.S. Patent Application Publication 2003/0143444 A1 (“Liu,” July
31, 2003). Id. at 5.
3. The Examiner finally rejected claims 11-16 under 35 U.S.C.
§ 103(a) as obvious over Acker in view of U.S. Patent No.
6,106,965 (“Hirano,” issued Aug. 22, 2000). Id. at 7.
4. The Examiner finally rejected claims 7, 8, and 11-16 under
35 U.S.C. § 103(a) as obvious over Barrett in view of Liu and
further in view of U.S. Patent No. 6,632,553 B2 (“Corey,” issued
Oct. 14, 2003). Id. at 8.
5. The Examiner finally rejected claim 7 under 35 U.S.C. § 103(a) as
obvious over Barrett in view of Acker. Id. at 10.
Discussion
Rejection 1
Claims 1-3 were finally rejected under 35 U.S.C. § 102(e) as
anticipated by Acker. Ans. 4.
Appellants identify the following groups of claims for the purpose of
challenging this rejection: (1) claims 1 and 2, and (2) claim 3.
Claims 1 and 2. Appellants argue that this rejection is improper
because Acker does not specifically describe
the steps of “setting a molecular ratio of the fuel and water for a
fuel-water mixture to be substantially equal to one” and
“controlling an amount of said fuel-water mixture that is
available to said anode layer of the fuel cell membrane
according to an amount of fuel that will be electro-oxidized by
the fuel cell” as recited in claim 1.
App. Br. 7 (quoting claim 1).
Appeal 2011-007271
Application 11/302,358

5
We begin by noting that the claims of the ’358 application are directed
to a machine, namely a fuel cell system. “A machine is a concrete thing,
consisting of parts, or of certain devices and combination of devices.” Burr
v. Duryee, 68 U.S. 531, 570 (1863) (defining “machine”). While there is
nothing inherently wrong with using functional language in an apparatus
claim, In re Swinehart, 439 F.2d 210, 212 (CCPA 1971), patent applicants
do so at their own peril, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). Because a mechanical apparatus is a structure, the claimed apparatus
must be distinguished from the prior art on the basis of structure. Where
there is reason to conclude that the prior art structure is inherently capable of
performing a claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. Id.; In re Hallman, 655 F.2d 212, 215 (CCPA 1981).
In this case, the Examiner found that Acker’s apparatus is capable of
varying the ratio of methanol in the fuel-water mixture to any concentration
between 0% and 100%. Ans. 5, 10-11. Thus, the Examiner found that Acker
is capable of “setting a molecular ratio of the fuel and water for a fuel-water
mixture to be substantially equal to one.”
The Examiner further found that the function of controlling the
amount of fuel-water mixture supplied to the anode according to the amount
of fuel that will be oxidized by the fuel cell also is within the capabilities of
Acker’s device. Id. at 11.
The Examiner’s finding regarding the ability of Acker’s apparatus to
set a molecular ratio of fuel to water substantially equal to one is supported
by a preponderance of the evidence. In the portion of Acker cited by the
Examiner, Acker states that the amounts of water and methanol supplied to
Appeal 2011-007271
Application 11/302,358

6
concentration regulator 20 are independently controlled. Acker, col. 3, l. 67-
col. 4, l. 16. Thus, Acker is capable of adjusting the fuel-water ratio to any
arbitrary number including those required by the claims.
The Examiner’s finding that Acker’s device is capable of adjusting the
amount of fuel-water mixture provided to the fuel cell also is supported by a
preponderance of the evidence. As discussed above, Acker describes an
apparatus that is capable of independently controlling the amount of water
and of methanol supplied to the fuel cell’s anode. Thus, it is capable of
increasing and decreasing, within limits, the amount of a fuel-water mixture
with a 1:1 molecular ratio of methanol and water that is supplied to the
anode.
The Examiner has established a prima facie case that Acker’s
apparatus can perform the claimed functions. Appellants, therefore, have the
burden of demonstrating that Acker’s device does not inherently have the
ability to perform the claimed functions. Schreiber, 128 F.3d at 1478. As the
Federal Circuit has stated:
A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 58
C.C.P.A. 1027, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting
patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.
Id.
In this case, Appellants have not demonstrated that Acker’s device is
incapable of carrying out the claimed functions and, therefore, of a different
structure than that claimed. For that reason, we sustain the Examiner’s
rejection of claims 1 and 2 as anticipated by Acker.
Appeal 2011-007271
Application 11/302,358

7
Claim 3. In addition to the arguments we have already rejected in our
discussion of claims 1 and 2, Appellants present a separate argument for the
patentability of claim 3. Appellants argue that claim 3 is not anticipated by
Acker because Acker does not describe the step of “ʻsaid controller said
controlling said amount of said fuel-water mixture that is available to said
anode layer of the membrane in the fuel cell in accordance with said
demand.’” App. Br. at 9 (quoting claim 3).
Appellants contend that Acker doesn’t meet this claim limitation
because Acker controls an amount of methanol delivered to the anode by
varying the methanol concentration in a methanol-water mixture. App. Br. 9.
The Examiner found that Acker’s device includes a controller that
controls the amount of fuel delivered to the electrode. Ans. 5, 15-16. This
finding is supported by a preponderance of the evidence, see, e.g., Acker,
col. 4, ll. 4-16; col. 4, ll. 39-65. Acker periodically reduces or interrupts the
methanol-and-water flow to the anode and observes the drop in potential
across load. Id. Based on the observed behavior, Acker’s controller adjusts
the flow of methanol and water to optimize the methanol concentration. Id.
We, therefore, sustain the Examiner’s rejection of claim 3.
Rejection 2
The Examiner finally rejected claims 1-6, 9, and 10 as obvious over
Barrett in view of Liu. Ans. 5.
In contesting this rejection, Appellants identify the following groups
of claims: (1) claims 1-3, (2) claim 4, (3) claims 5 and 6, and (4) claims 9
and 10. App. Br. 5.
Appeal 2011-007271
Application 11/302,358

8
Claims 1-3. Appellants advance several arguments against the
rejection of these claims as obvious over the combination of Barrett and Liu.
Id. at 10.
We can resolve Appellants’ appeal of this rejection with regard to
these claims by addressing Appellants’ argument that neither Barrett nor Liu
teach setting a molecular ratio of the fuel and water for a fuel-water mixture
to substantially one. Id. The Examiner argues that Barrett is capable of
producing a fuel and water mixture between the range of 0.1 and 1.0. Ans. 6,
12. As Appellants point out, however, Barrett describes the creation of a
mixture of fuel and exhaust gas from a metal oxide fuel cell. While water
vapor is a component of the exhaust gas, the Examiner has not provided any
basis for the naked assertion that there is sufficient water vapor present in
the exhaust gas to enable Barrett’s system to achieve a 1:1 molecular ratio of
fuel to water.
Because the Examiner has not established that Barrett’s device was
capable of performing this claimed function, we cannot sustain the rejection
of claims 1-3 as obvious over the combination of Barrett and Liu.
Claims 4-6, 9, and 10. Claim 4 is an independent claim, and claims 5,
6, 9, and 10 depend directly or indirectly from claim 4. While Appellants
advance several arguments against the Examiner’s rejections of these claims,
App. Br. 11-12, we can resolve this aspect of the appeal on the basis of the
Examiner’s failure to identify an adequate reason for a person of ordinary
skill in the art to modify Barrett’s apparatus to incorporate aspects of the
nozzle arrangements and control systems described in Liu.
Barrett describes a metal oxide fuel cell apparatus that uses gas phase
fuels such as hydrogen or methane. Barrett ¶ [0002]. The jet nozzles
Appeal 2011-007271
Application 11/302,358

9
described in Barrett combine the fuel with a variable amount of recycled
exhaust gas to create a fuel-steam mixture for use in an internal reforming
reaction. Id. at ¶¶ [0003]-[0006]. The fuel-exhaust gas mixture is delivered
to a fuel manifold, which in turn supplies the mixture to the fuel cell anode.
Id. at ¶ [0045].
Liu, on the other hand, describes a direct methanol fuel cell that uses a
a fuel supply apparatus such as a thermal drop ejector with a multiplicity of
nozzles to supply a fine spray of methanol/water droplets to the anodes of
the fuel cell stack. Liu ¶¶ [0037] and [0039].
The Examiner has not provided an adequate reason for a person of
ordinary skill in the art to combine the structures of two such disparate fuel
cell systems. The Examiner’s proffered reason is that “[i]t would have been
obvious for one of ordinary skill in the art to adapt the nozzles of Barrett to
the multiple nozzle injection set up of Liu because Liu teaches that this setup
lowers the concentration of fuel needed and has less fuel crossover by
producing a more uniform distribution of fuel to the anodes.” Ans. 6 (citing
Liu ¶ 5).
This rationale does not meet the Examiner’s burden. The cited
advantages of Liu’s system address shortcomings of liquid-fueled fuel cells.
Liu achieves these advantages by using liquid ejectors to create an extremely
fine mist of fuel droplets (0.5x10-18 to 260x10-12 liters in volume). Liu ¶
[0039]. In essence, Liu describes a system that turns liquid fuel into a near-
gaseous state. Barrett delivers the fuel in an already gaseous state. The
Examiner has not provided any rational reason why a person of ordinary
skill in the art working with Barrett’s apparatus and gaseous fuels would use
Liu’s liquid droplet ejectors to supply Barrett’s gaseous fuel.
Appeal 2011-007271
Application 11/302,358

10
Because the Examiner’s proffered reason to combine Barrett and Liu
is not supported by a preponderance of the evidence, we cannot sustain the
Examiner’s rejection of claims 4-6, 9, and 10.
Rejection 3
Claim 11 is the only independent claim at issue in this rejection. It is
reproduced below, with the claim language that is important to our analysis
emphasized:
11. A fuel cell system arranged and constructed to limit an
amount of a fuel that is not electro-oxidized in a fuel cell, the
fuel comprising a liquid fuel, the fuel cell system comprising:
a fuel cell membrane having an anode layer, a cathode layer,
and an electrolyte layer disposed between said anode layer and
said cathode layer, said anode layer and said cathode layer
arranged to be coupled to an electrical load; and
a fuel delivery system including a fuel chamber disposed
proximate to said anode layer at a side opposite to said
electrolyte layer, said fuel delivery system for; [sic]
determining an appropriate molecular ratio of the fuel
and water for a fuel-water mixture, the appropriate
molecular ratio within an inclusive range of 0.1 to
substantially equal to and including 1.0; and
controlling an amount of said fuel-water mixture that is
available to said anode layer of the fuel cell membrane
according to an amount of the fuel that will be electro-
oxidized by the fuel cell thereby limiting fuel crossover
and fuel that is not electro-oxidized in the fuel cell,
wherein said fuel delivery system further includes a
porous membrane having limited permeability for the
fuel and water, said porous membrane disposed between
said anode layer of the fuel cell membrane in the fuel cell
and the fuel and water and proximate to said anode layer
of the fuel cell membrane in the fuel cell, said porous
Appeal 2011-007271
Application 11/302,358

11
membrane controlling said amount of said fuel-water
mixture that is available to said anode layer of the
membrane in the fuel cell by allowing an amount of the
fuel and the water to cross to the anode layer that
corresponds to said appropriate molecular ratio and that
provides said amount of the fuel that will be electro-
oxidized by the fuel cell.
App. Br. 21-22 (emphasis added).
The Examiner finally rejected claims 11-16 as obvious over Acker in
view of Hirano. Ans. 7. Although Appellants have identified five different
groups of claims which they argue separately, we have determined that their
appeal of this rejection can be resolved by consideration of a single issue.
That issue is whether the Examiner’s finding that the electrically
conductive gas diffusion layer disposed proximate to the anode in Hirano
controls the amount of the fuel-water mixture available to the anode by
allowing an amount of the fuel and the water to cross to the anode layer that
corresponds to the appropriate molecular ratio and that provides the amount
of the fuel that will be electro-oxidized by the fuel cell.
For the reasons set forth below, we conclude that Hirano does not
teach such a membrane, and we do not sustain the Examiner’s rejection of
claims 11-16 as obvious over these references.
The Examiner found that Hirano described a fuel cell comprising a
membrane electrode assembly that includes an electrically conductive
carbon fiber layer proximate to the MEA. Ans. 7 (citing Hirano, col. 5, l. 50
et seq.). The Examiner then makes a series of assumptions about the
physical properties of the carbon fiber layer, especially about its behavior in
response to changes in temperature. Id. The Answer does not contain any
citations to the record in this case that support these assumptions. Therefore,
Appeal 2011-007271
Application 11/302,358

12
the Examiner’s findings regarding the properties of the carbon fiber layer are
not supported by a preponderance of the evidence.
Furthermore, the Examiner’s assumptions form the basis for his
finding that the carbon fiber layer disclosed in Hirano would perform the
functions of the claimed porous membrane if combined with Acker. Id. Even
if we were to credit the Examiner’s assumptions regarding the physical
properties of the carbon fiber layer, there is no factual basis identified in the
record that supports the Examiner’s finding that the carbon fiber layer’s
passive response to changes in the fuel cell’s operating temperature would
happen to be sufficient to limit passage of the fuel-water mixture through the
carbon fiber layer to the anode to the precise amount that will be electro-
oxidized by the fuel cell. Thus, the Examiner’s finding that the combination
of Acker and Hirano describes or suggests this claim limitation also is not
supported by a preponderance of the evidence.
Rejection 4
The Examiner finally rejected claims 7-8 and 11-16 as obvious over
Barrett in view of Liu and further in view of Corey. Ans. 8.
Although Appellants propose arguing the merits of these rejections
with respect to four different groups of claims, we have determined that a
single issue is dispositive of Appellants’ appeal of the rejection of all of
these claims as a single group. That issue is whether the Examiner has
identified an adequate reason for a person of ordinary skill in the art to have
combined the device described in Corey with the Barrett and Liu references.
We find that the Examiner has not identified such a reason to combine
the references cited in this rejection. We therefore cannot sustain the
Appeal 2011-007271
Application 11/302,358

13
Examiner’s rejection of claims 7, 8, and 11-16 as obvious over the
combination of Barrett, Liu, and Corey.
In challenging this rejection, Appellants assert that it would not be
reasonable to combine Corey, which describes a liquid fueled fuel cell, with
Barrett, which describes a metal oxide fuel cell that uses fuel in a gaseous
form. App. Br. 15. We understand Appellants to be arguing that the
Examiner has not identified an adequate basis for combining the cited
references.
The Examiner found that “[c]ombining the nozzles of Barrett et al. in
place of Corey et al. would have been obvious at the time the invention was
made since Corey et al. had valves in their fuel cell for operating portable
devices effectively.” Ans. 9. Thus, the Examiner’s stated reason is that it
would have been obvious to modify the device described in one reference by
incorporating features from a second reference because the two references
described different devices.
We cannot sustain this rejection because this alleged reason to
combine references is inadequate. The mere fact that two references describe
different devices cannot be an adequate reason to pick and choose elements
from each for combination to recreate the claimed invention. If this were an
adequate reason to combine the references, the requirement that a reason be
stated on the record, see KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007), would not provide any protection against hindsight reconstruction of
the applicant’s invention.
Rejection 5
The Examiner finally rejected claim 7 as obvious over Barrett in view
of Acker. Ans. 10. Claim 7 depends from claim 4, App. Br. 20, and thus
Appeal 2011-007271
Application 11/302,358

14
includes claim 4’s limitation requiring a plurality of jet nozzles for spraying
the fuel and water on a single anode layer of a fuel cell.
Appellants argue that neither reference teaches or suggests a plurality
of jet nozzles for spraying the fuel-water mixture onto the anode layer. Id. at
17. The Examiner claims that Acker teaches a plurality of independent
nozzles. Ans. 19. Acker does not, in fact, describe any nozzles, but the
format of the Examiner’s citation to the reference suggests that the Examiner
actually intended to cite Barrett for this teaching. See id. (apparently citing
paragraphs, not columns and line numbers). In their reply, Appellants
assume that the Examiner intended to cite Barrett, and argue that while the
cited portion of Barrett describes multiple nozzles, each of the nozzles
supplies fuel-water mixture to the anode layer of a different fuel cell in a
fuel cell stack. Reply 6. Appellants therefore claim that Barrett does not
describe a plurality of nozzles supplying a fuel-water mixture to a single
anode. Id.
We agree with Appellants and note that in Rejection 2, the Examiner
cited Liu for its teaching of multiple nozzles supplying a fuel-water mixture
to an anode layer, Ans. 6, presumably because Barrett did not, in fact
describe or suggest this limitation. The Examiner’s finding that Barrett
describes the limitation of a plurality of nozzles for spraying fuel and water
onto a single anode is not supported by a preponderance of the evidence. We
cannot sustain the Examiner’s rejection of claim 7 over this combination of
references.
Appeal 2011-007271
Application 11/302,358

15
Conclusion
For the foregoing reasons, we sustain the rejections of claims 1-3 as
anticipated by Acker. However, we do not sustain the rejection of these
claims as obvious over Barrett in view of Liu.
We also cannot sustain the Examiner’s rejection of claims 4-6, 9, and
10 as obvious over the combination of Barrett and Liu.
We cannot sustain the rejections of claims 11-16 as obvious over the
combination of Acker and Hirano or of claims 7, 8, and 11-16 as obvious
over the combination of Barrett, Liu, and Corey.
Finally, we do not sustain the Examiner’s rejection of claim 7 as
obvious over Barrett in view of Acker.
In sum, at least one rejection of each of claims 1-3 has been sustained,
while there are no sustained rejections of claims 4-16.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

bar