Ex Parte Maier et al

Patent Trial and Appeal Board

Apr 30, 2013

11304349 (P.T.A.B. Apr. 30, 2013)

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.
11/304,349 12/15/2005 Oliver Maier GP-307203 6082
65798 7590 04/30/2013
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
LEONG, JONATHAN G
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
04/30/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLIVER MAIER, SASCHA SCHAEFER,
THOMAS WEISPFENNING, PETER WILLIMOWSKI
and ROLF ISERMANN
____________

Appeal 2011-010231
Application 11/304,349
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH and
DEBORAH KATZ, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010231
Application 11/304,349

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 22. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention relates to a system for determining a
desired flow of a cooling fluid through a fuel cell stack. App. Br. 7.
Claim 1 is illustrative:
1. A system for determining a desired flow of a cooling
fluid through a fuel cell stack, said system includes computer-
readable medium tangibly embodying computer-executable
instructions for:

determining a power loss from the stack;

determining dissipated heat power from the stack;

determining the temperature of the stack based on the
power loss and the dissipated heat power;

revising the dissipated heat power using the temperature
of the stack and the temperature of the cooling fluid out of the
stack; and

calculating the flow of the cooling fluid based on the
temperature of the stack, the temperature of the cooling fluid
out of the stack and the temperature of the cooling fluid into the
stack.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Goto US 6,087,028 July 11, 2000

J.C. Amphlett et al., A Model Predicting Transient Responses of
Proton Exchange Membrane Fuel Cells, 61 J. POWER SOURCES 183 (1996).
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Application 11/304,349

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J.H. Lee & T.R. Lalk, Modeling Fuel Cell Stack Systems, 73 J. POWER
SOURCES 229 (1998).

Appellants request review of the following rejections (App. Br. 14)
from the Examiner’s final office action:
1. Claims 1-14 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement.
2. Claims 1-14 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
3. Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Amphlett, Lee and Goto.

OPINION
I. WRITTEN DESCRIPTION UNDER § 112, 1ST PARAGRAPH
The dispositive issue for this rejection is: Did the Examiner err in
determining that the Appellants’ Specification fails to provide written
descriptive support for a “system includ[ing] computer-readable medium
tangibly embodying computer-executable instructions” as required by the
subject matter of independent claims 1 and 10? 1
We answer in the negative and AFFIRM for the reasons presented by
the Examiner and add the following for emphasis.
With regard to the limitation of using “system includes computer-
readable medium tangibly embodying computer-executable instructions,”

1 Appellants argued independent claims 1 and 10 together. App. Br. 16.
Appellants have not argued the additional limitations of dependent claims 2-
9 and 11-14. Thus, we will limit our discussion in this rejection to
independent claim 1.
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Application 11/304,349

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Appellants submit that paragraph [0015]2 of the Specification supports the
claim language because it discloses a controller configured to control the
operations of a coolant pump by “employ[ing] an algorithm that uses stack
power loss and cooling fluid temperature to determine the volume flow of
the cooling fluid through the loop.” App. Br. 16. Appellants further submit
that any person having ordinary skill in the art would readily appreciate that
a controller inherently includes a form of computer readable medium
capable of executing instructions (e.g., algorithms). Id.
The Examiner found that the language “system includes computer-
readable medium tangibly embodying computer-executable instructions”
inserted via amendment to independent claim 1 lacks descriptive support in
the original disclosure. Ans. 4. The Examiner found that Specification
[0016] is insufficient to provide descriptive support for the disputed
limitation because the ordinary artisan would readily appreciate that a
controller can be a human operator who manually and mentally employs an
algorithm. Id. at 12.
We are unpersuaded by Appellants’ argument and agree with the
Examiner’s determination that the disputed claim limitation lacks descriptive
support. Id. While the written “description need not recite the claimed
invention in haec verba . . . [, it] must do more than merely disclose that
which would render the claimed invention obvious.” ICU Med., Inc. v.
Alaris Med. Sys., Inc., 558 F.3d 1368, 1376-77 (Fed. Cir. 2009). While
Appellants contend that a controller inherently includes a form of computer

2 Appellants directed us to paragraph [0015] of the Specification for
descriptive support of this limitation. Ap. Br. 16. However, we believe that
Appellants intended to direct our attention to paragraph [0016] of the
Specification.
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Application 11/304,349

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readable medium (App. Br. 16), Appellants have not directed us to any basis
or evidence to support their contention. Further, Appellants have not
adequately disputed the Examiner’s determination that the Appellants’
disclosed controller reads on a human operator who manually and mentally
employs an algorithm (Ans. 12). Thus, on this record and upon due
consideration of Appellants’ arguments, we find that the weight of the
evidence reasonably supports the Examiner’s lack of written description
determination with respect to claims 1-14.
Accordingly, we affirm the Examiner’s rejection of claims 1-14 under
35 U.S.C. § 112, first paragraph as lacking descriptive support in the original
Specification for the reasons given above and presented by the Examiner.

II. SUBJECT MATTER ELIGIBILITY UNDER § 101
The dispositive issue for this rejection is: Did the Examiner err in
determining that the system as recited by the subject matter of independent
claims 1 and 10 is directed to non-statutory subject matter?3
We answer in the negative and AFFIRM for the reasons presented by
the Examiner and add the following for emphasis.
Our review of the Examiner’s determination of non-statutory subject
matter requires that the claims must first be construed to define the scope
and meaning of the term “system.” See Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997).

3 Appellants argued independent claims 1 and 10 together. App. Br. 16.
Appellants have not argued the additional limitations of dependent claims 2-
9 and 11-14. Thus, we will limit our discussion in this rejection to
independent claim 1.
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We note that both the Examiner and Appellants address the subject
matter of independent claim 1 as directed to a computer readable medium.
Ans. 4; App. Br. 17. Accordingly, we treat the system described by the
subject matter of independent claim 1 as directed to a computer readable
medium.
The Examiner rejects the subject matter of independent claim 1
because it can be construed to cover a signal. Ans. 4.
Appellants argue that there is nothing in the Specification to remotely
suggest that Appellants either actively or passively have sought to
encompass signals such as transmission media or carrier waves. App. Br.
17.
We are unpersuaded. As noted by the Examiner (Ans. 4), Appellants
have not expressly defined what is a computer readable medium. Absent
any such definition, we find Appellants’ invention encompasses transitory
propagating signals which are unpatentable under 35 U.S.C.§ 101. See In re
Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (transitory embodiments are
not directed to statutory subject matter).4
Accordingly, we affirm the Examiner’s rejection of claims 1-14 under
35 U.S.C. § 101 as directed to non-statutory subject matter for the reasons
given above and presented by the Examiner.

III. PRIOR ART REJECTION
The dispositive issue for this rejection is: Did the Examiner err in
determining that the combination of Amphlett, Lee and Goto would have led

4 Also see David J. Kappos, Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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Application 11/304,349

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one skilled in the art to a fuel cell system as required by independent claim
15?5 ,6
We answer this question in the negative and AFFIRM for the reasons
presented by the Examiner and add the following for emphasis.
The Examiner found that Amphlett discloses a fuel cell system
comprising a fuel cell stack that is maintained at a desired temperature
through the use of a cooling fluid. Ans. 5. The Examiner found that
Amphlett does not explicitly disclose that a pump is used to circulate the
cooling fluid or whether a controller is programmed to determine the various
parameters of the fuel cell stack to control the pump. Id. at 8.
The Examiner relied on Goto as teaching a similar fuel cell system
including a pump to circulate cooling water through a cooling water flow
path to cool the fuel cell stack. Id. The Examiner also found that Goto
regulates the pump with a controller constructed as an arithmetic-logic
circuit connected to temperature sensors and a CPU that performs the variety
of operations using a computer readable medium (RAM) containing control
programs. Id. The Examiner concluded that it would have been obvious to
one having ordinary skill in the art to modify the fuel system of Amphlett to
incorporate the pump and controller of Goto to improve the ability of the
fuel cell system to remove heat. Id. at 8-9.

5 Having found that claims 1-14 lack descriptive support and are directed to
non-statutory subject matter, we do not reach the prior art rejection of these
claims. Accordingly, we address the prior art rejection as it pertains to claim
15-22. We limit our initial discussion for this rejection to independent claim
15.
6 A discussion of Lee is unnecessary for disposition of the present appeal.
The Examiner relied upon this reference for features not related to the
dispositive issue.
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Application 11/304,349

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We have considered Appellants’ arguments (App. Br. 17-22) and are
unpersuaded because they do not address the merits of the Examiner’s stated
rejection. Appellants’ arguments focus on the primary reference Amphlett.
Id. There is no discussion of the secondary reference Goto and why
Amphlett could not be modified to incorporate the features of Goto as
presented by the Examiner. Moreover, Appellants have not explained why
the fuel system disclosed by Goto is not capable of cooling a fuel cell system
as claimed.
Accordingly, we affirm the Examiner’s rejection of claims 15-22
under 35 U.S.C. § 103 as unpatentable over Amphlett, Lee and Goto for the
reasons given above and presented by the Examiner.

ORDER
The rejection of claims 1-14 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement, is affirmed.
The rejection of claims 1-14 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 15-22 under 35 U.S.C. § 103(a) as
unpatentable over Amphlett, Lee and Goto is 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)(1).

AFFIRMED
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