Ex Parte Muramatsu

Patent Trial and Appeal Board

Jun 24, 2016

11831182 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111831, 182 07/31/2007
54071 7590 06/28/2016
YAMAHA
C/O KEA TING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
FIRST NAMED INVENTOR
Yasuyuki MURAMATSU
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.
90606.232/ta 4006
EXAMINER
WANG, EUGENIA
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
JKEATING@KBIPLA W.COM
uspto@kbiplaw.com
sfunk@kbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUYUKI MURAMATSU 1
Appeal2014-007922
Application 11/831, 182
Technology Center 1700
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 4-9, 12, and 17-20 under 35 U.S.C. § 112,
first paragraph for lack of enablement and for lack of written description.
We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 Appellant identifies Yamaha Hatsudoki Kabushiki Kaisha as the Real Party
in Interest. Appeal Brief filed April 24, 2014 ("App. Br."), 2.
Appeal2014-007922
Application 11/831, 182
CLAIMED SUBJECT MATTER
Appellant's invention relates to a fuel cell system including an
aqueous solution holding device in which a temperature sensor detects the
temperature of the aqueous fuel solution. Spec. Abstract.
Claim 12-the sole independent claim-reproduced from the Appeal
Brief with added emphasis is illustrative:
12. A fuel cell system comprising:
a fuel cell including an anode;
an aqueous solution holding device including a first
storing portion and a second storing portion each arranged to
hold aqueous fuel solution to be supplied to the fuel cell, and a
connecting portion arranged to connect the first storing portion
and the second storing portion with each other;
a circulation device arranged to circulate a supply of the
aqueous fuel solution between the fuel cell and the aqueous
solution holding device by supplying the aqueous fuel solution
from the aqueous solution holding device to the anode of the
fuel cell and returning the aqueous fuel solution from the anode
of the fuel cell to the aqueous solution holding device, the
circulation device including a supply channel arranged to
supply the aqueous fuel solution from the first storing portion to
the anode of the fuel cell, a first return channel arranged to
return the aqueous fuel solution from the anode of the fuel cell
to the first storing portion, and a second return channel arranged
to return the aqueous fuel solution from the anode of the fuel
cell to the second storing portion without the aqueous fuel
solution first passing through the first storing portion;
a temperature detection device arranged to detect a
temperature of the aqueous fuel solution; and
a setting device programmed to set an amount of the
aqueous fuel solution to flow through the first return channel
and an amount of the aqueous fuel solution to flow through the
second return channel based on a detection result from the
temperature detection device; wherein
the second storing portion is arranged to concurrently
receive the aqueous fuel solution into the second storing portion
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through an input pipe of the second return channel and to
discharge the aqueous fuel solution from the second storing
portion through the connecting portion to the first storing
portion.
Appeal Brief ("App. Br."), 14.
Claim 17 recites further limitations including that the setting device is
programmed to set the switching valve to a first position or to a second
position based on the detection result from the temperature detection device.
As set forth in the claim, the second position can direct flow of the aqueous
fuel solution concurrently through both the first and the second return
channels or it can direct the flow only through the second return channel.
Claim 17.
DISCUSSION
We have reviewed the Examiner's rejections in light of Appellant's
arguments and are persuaded the Examiner erred in rejecting the claims for
lack of enablement and for lack of written description.2 For both, the
Examiner "'bears the initial burden ... of presenting a prima facie case of
unpatentability."' In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
We begin our analysis by determining the scope and meaning of the
claims, giving claim terms the broadest reasonable interpretation consistent
with the Specification as they would be interpreted by one of ordinary skill
in the art. See, e.g., In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)
(citing In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010)). In
2 We refer to the Final Office Action (mailed November 1, 2013, "Final
Act."), the Appeal Brief (filed April 24, 2014), the Examiner's Answer
(mailed May 15, 2014, "Ans."), and the Reply Brief (filed July 14, 2014,
"Reply Br.").
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Application 11/831, 182
doing so, we tum first to the claims themselves. See, e.g., Rapoport v.
Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001).
With respect to claim 12, we conclude that setting "an amount ... to
flow through the first return channel and an amount ... to flow through the
second return channel" includes flow through both first and second return
channels simultaneously because setting the flow of each to non-zero
amounts is encompassed by the plain language of the claim. Further, where
dependent claim 17 explicitly encompasses embodiments in which "the
supply of the aqueous fuel solution flows concurrently through both of the
first and the second return channels," it follows that independent claim 12
also encompasses a fuel cell system in which there is simultaneous flow
through both first and second return channels.
With respect to claim 17, we are of the opinion that, in setting forth
that the second position can direct flow of the aqueous fuel solution
concurrently through both the first and the second return channels or it can
direct the flow only through the second return channel, the claim is simply
setting forth two alternative embodiments, both of which are encompassed
by the claim. Properly construed, claim 1 7 does not require that any single
embodiment has a second position that directs flow through both the first
and second return channels and through only the second return channel.
Having carefully considered the Specification, we find no basis for a
narrower, or different, interpretation of the above-discussed limitations of
claims 12 and 17. See Spec. ,-i,-i 119-21, especially ,-i 121 (describing
gradually increasing the ratio of flow in the second return channel to the
flow in the first return channel in response to increasing detected
temperature such that operations begins with a first state with flow only in
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Application 11/831, 182
the first return channel, then shifts to a second state with flow in both the
first and second return channels, and then shifts to a third state with flow in
only the second return channel).
As to the recitation of a "setting device programmed to set ... [first
return channel and second channel] flow ... based on a detection result from
the temperature detection device" (claim 12), we are of the opinion that the
setting device is a programmable device accepting input based, inter alia, on
detected temperatures. See, e.g., Spec. Fig. 3, iii! 72-75, 79.
As to paragraphs 93-96 and Figure 5 of the Specification, they only
describe and illustrate an embodiment narrower than what is set forth in
claim 12 as properly construed. Cf Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("[I]t is important not
to import into a claim limitations that are not part of the claim .... a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.").
Turning to the rejection for lack of enablement, we cannot sustain the
Examiner's determination that the Specification fails to enable one having
ordinary skill in the art to make and use the claimed fuel cell system with "a
setting device programmed to set an amount of ... flow through the first
return channel and an amount of ... flow through the second return channel
based on a detection result from the temperature detection device." Claim
12. The PTO bears the initial burden when rejecting claims for lack of
enablement. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993); In re
Oetiker, 977 F.2d at 1445. It is well-established law that the test for
compliance with the enablement requirement is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
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make and use the claimed invention without undue experimentation. Jn re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner determines that undue experimentation would be
necessary because the scope of the programming is broader than that
appreciated and supported by the as-filed application. Ans. 4. The
Examiner's conclusory determination is grounded on the claims being
"focused on a special purpose controller" (Ans. 3) and then discounting
disclosure as to a controller because it is deemed a general controller (Ans.
3, citing Spec. iJ 73) and discounting disclosure as to how flow through a
first and second channel, including concurrent flow, is controlled in response
to a detected temperature because these are deemed not linked to any
specific algorithm/programmed control (Ans. 3--4, citing iii! 120-21 ). The
Examiner determines that the "only appreciated program algorithm" is that
shown in Figure 5, described in paragraphs 93-99, and is thus limited to an
embodiment in which flow is directed through either a first channel or a
second channel. Ans. 3--4.
On this record, we will not sustain the Examiner's determination that
the claims lack enablement. In concluding the claims were "focused on a
special purpose controller" and then relying on only the program algorithm
depicted in Figure 5, the Examiner appears to have determined de facto that
the strictures of 35 U.S.C. § 112, iJ 6 apply and looked to the Specification
for corresponding structure, albeit for enablement and written description
rather than for defining the scope of the claims. In re Donaldson Co., Inc.,
16 F.3d 1189, 1194-95 (Fed. Cir. 1994). In doing so, the Examiner has
failed to adequately explain why the recited setting device should be treated
as "means for" and, if deemed "means for" setting the first and second
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channel flow, to what structure set forth in the Specification that the setting
device is properly limited by the claims. Generally, Final Act.; Ans.
The Examiner also erred: (i) in improperly focusing on the "only
appreciated program algorithm" (Ans. 3-4, citing Spec. Figure 5, iii! 93-99);
(ii) in failing to recognize that paragraph 120-mirroring claim 17-
discloses two different embodiments rather than a single embodiment in
which the second mode directs flow through both a first and second
channel-in a first embodiment-or only through a second channel-in a
second embodiment (Ans. 10-25); and (iii) in failing to adequately explain
why the Specification, including particularly paragraphs iii! 72-75, 79, 119-
21, fails to provide sufficient guidance to enable one of ordinary skill in the
art to make and use the claimed invention without undue experimentation, In
re Wands, 858 F.2d at 737. For these reasons, we are of the opinion the
Examiner has failed to meet the initial burden of presenting a prima facie
case that the claims lack enablement.
As to the rejection for lack of written description, we similarly are of
the opinion that the Examiner has erred reversibly.
The first paragraph of Section 112 requires that "[t]he specification
shall contain a written description of the invention." 35 U.S.C. § 112, first
paragraph. To satisfy the requirement, "the applicant must convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the claimed invention," Carnegie Mellon
University v. Hoffmann-La Roche Inc., 541F.3d1115, 1122 (Fed. Cir. 2008)
(internal quotations omitted), and "it is the specification itself that must
demonstrate possession," Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F .3d
1336, 1352 (Fed. Cir. 2010) (en bane)).
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Application 11/831, 182
"If ... the specification contains a description of the claimed
invention, albeit not in ipsis verb is (in the identical words), then the
examiner ... , in order to meet the burden of proof, must provide reasons
why one of ordinary skill in the art would not consider the description
sufficient." In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
According to the Examiner, Appellant's original disclosure fails to
provide descriptive support for the setting device programmed to "set an
amount of aqueous fuel solution to flow through the first return channel and
an amount of the aqueous fuel solution to flow through the second return
channel based on a detection result from the temperature detection device"
because the "only appreciated program algorithm" only discloses where
either the first or the second tank is chosen to have fluid returned to them,
not both. Ans. 4. As with the enablement rejection, the Examiner maintains
that the disclosures of paragraphs 12 0 and 121 are inadequate because they
"are not linked to any specific algorithm/programmed control." Ans. 4-5.
As manifest in our determination of the scope and meaning of the
claims in light of the Specification set forth above, it is our opinion that there
is adequate written description for the claims. Further, we also are of the
opinion that the Examiner has failed to sufficiently explain why one of
ordinary skill in the art would not consider the description sufficient,
particularly that including paragraphs iii! 72-75, 79, 119-21. The Examiner
erred, as in the enablement rejection, by focusing improperly on an
embodiment depicted in Figure 5, failing to recognize that paragraph 120
discloses two different embodiments, and failing to adequately explain why
the Specification does not describe the claimed invention, particularly that
including paragraph 121.
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On this record, therefore, the Examiner has not shown that the
Specification as filed would not have conveyed with reasonable clarity to
those skilled in the art that, as of the filing date, Applicants were in
possession of the claimed invention and, thus, has failed to meet the initial
burden of presenting a prima facie case that the claims lack sufficient written
description.
CONCLUSION
The Examiner's rejections of claims 4-9, 12, and 17-20 are
REVERSED.
REVERSED
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