Ex Parte Nakanishi et al

Patent Trial and Appeal Board

Jun 29, 2016

12188011 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/188,0ll 08/07/2008 Y oshihiro Nakanishi
959 7590 07/01/2016
NELSON MULLINS RILEY & SCARBOROUGH LLP
FLOOR 30, SUITE 3000
ONE POST OFFICE SQUARE
BOSTON, MA 02109
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.
TOW-225 4130
EXAMINER
0 DONNELL, LUCAS J
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
ipbos ton.docketing@nelsonmullins.com
chris.schlauch@nelsonmullins.com
ipqualityassuranceboston@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIHIRO NAKANISHI, NARUTOSHI SUGITA, and
MASAAKI SAKAN01
Appeal2015-000238
Application 12/188,011
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-3, and 5 in the above-identified application. We
have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Honda Motor Co. Ltd.
Appeal Br. 2.
Appeal2015-000238
Application 12/188,011
BACKGROUND
Appellants' invention relates to "a fuel cell stack formed by stacking a
plurality of power generation units." Spec. 1: 5---6. An embodiment is
depicted in Figure 3, reproduced below:
FIG.3 H!a I ~a l.2 .............................. ,.......... ........ ~~ ................... A... ............................................................................................................ ':
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Figure 3 depicts "a cross-sectional view showing main components of the
fuel cell stack." Id. at 6: 11-12. The stack includes as sections, from right to
left, a power generating unit 12, an end power generation unit 16a, and a
dummy unit 18a. See id. at 13-14; see also Figure 2 (showing power
generating unit 12 in more detail).
Claim 1, the sole independent claim, is representative. Appellants
submit the following version of claim 1 with added reference numbers:
2
Appeal2015-000238
Application 12/188,011
1. A fuel cell stack (10) formed by stacking a plurality of
power generation units (12), the power generation units (12)
each comprising first and second electrolyte electrode
assemblies (28a and 28b ), and being formed by stacking a first
separator (26), the first electrolyte electrode assembly (28a), a
second separator (30), the second electrolyte electrode assembly
(28b ), a third separator (32) in this order, the first and second
electrolyte electrode assemblies (28a and 28b) each including a
pair of electrodes ( 44 and 46) and an electrolyte ( 42) interposed
between the electrodes, reactant gas flow fields ( 48 and 52) for
reactant gases being formed on both of electrode ( 44 and 46)
surfaces of each of the first and second electrolyte electrode
assemblies (28a and 28b ), a coolant flow field (50) for a coolant
being formed between the power generation units, reactant gas
passages (36a, 36b, 38a, 38b ), and coolant passages ( 40a and
40b) extending through the power generation units (12) in the
stacking direction (A) as passages of the reactant gases and the
coolant, the fuel cell stack (10) comprising:
an end power generation unit (16a) adjacent to the power
generation unit (12) provided at least at one end in the stacking
direction (A) of the power generation units (12), wherein
the end power generation unit (16a) is formed by
stacking a fourth separator ( 66), another first electrolyte
electrode assembly (28a), a fifth separator (68), a dummy
electrolyte electrode assembly (70), and a sixth separator
(72) in this order from the power generation unit (12);
the fourth separator ( 66) has the same structure as the
first separator (26); and
the sixth separator (72) is formed by providing a seal
member (64c) in a separator having the same structure
as the third separator (32), for blocking communication
between the coolant flow field (50) and the coolant
passages (40a and 40b); and
a dummy unit (l 8a) adjacent to the end power generation
unit (l 6a), the dummy unit (l 8a) is formed by stacking a
seventh separator (74), a first dummy electrolyte electrode
assembly (70a), an eighth separator (76), a second dummy
electrolyte electrode assembly (70b), and a ninth separator (78)
in this order from the end power generation unit (l 6a).
3
Appeal2015-000238
Application 12/188,011
Appeal Br. 4--5 (emphasis added).
The Examiner maintains the following ground of rejection: 2 Claims
1-3 and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
U.S. Patent Pub. No. US 2005/0053810 Al [hereinafter Kato '810]
(published Mar. 10, 2005) in view of U.S. Patent Pub. No. US
2004/0265667 Al [hereinafter Kato '667] (published Dec. 30, 2004). Final
Action 5-12; Answer 5-12.
Appellants argue claims 1-3 and 5 as a group. See id. at 5-8.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to independent claim 1, and all claims stand
or fall together.
2 Claims 1-3 and 5 were also provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1---6 of copending U.S. Patent Application No. 12/012,322. See Final
Action 10; Answer 9-10, 13. However, the Examiner holds this rejection in
abeyance. Answer 10. We note that U.S. Patent Application 12/012,322
issued as U.S. Patent No. US 8,574,778 B2 on November 5, 2013, thereby
rendering the provisional obviousness-type double patenting rejection moot.
Upon return of jurisdiction to the Examiner, the Examiner may consider
whether a non-provisional obviousness-type double patenting rejection over
U.S. Patent No. US 8,574,778 B2 is appropriate.
4
Appeal2015-000238
Application 12/188,011
DISCUSSION
Figure 8 of Kato '810 is reproduced below:
Figure 8 is a cross-sectional view of "a stacked state of single cells of a fuel
cell stack" for use in a subzero temperature startup system. Kato '810 i-f 5 8.
Kato '880 describes a fuel cell stack that includes electrolyte electrode
assemblies 54, and states that the overall quantity of coolant needed to cool
the stack may be reduced "by providing the first fluid flow passage sections
63 that have the coolant flow passages 60 altematingly with the second fluid
flow passage sections 65 that do not have the coolant flow passages 60." Id.
,-r 113.
5
Appeal2015-000238
Application 12/188,011
Figure 1 of Kato '667 is reproduced below:
10
48a +.. ...t:-P.Â¥:11-ml-'fflq..
48a:
soa ··
12a
t'
14
12 12
I
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46(02)
I.I II
Oc'O'l.'f-11-381
36 (22
~K""-40)
. ~46 {02}
'""'-""""""
'W'>'i4-'*'48a
46a
s-oa
,,
4fflr-m-~4-tt....I' ...J...48a
46a
50a
Figure 1 depicts an embodiment of a fuel cell stack. Kato '667 i-f 22. It
includes dummy cells 16 at both ends of the stack. Id. i-f 32. Coolant flows
in channels 50, see id. i-f 40, while coolant flow path 50a is formed as a
"closed heat-insulating space, see id. i-f 44, as are insulating paths 46a and
48a, which correspond to oxidizer and fuel gas flow paths 46 and 48,
respectively, see id. i-f 54. According to Kato '667, the use of dummy cells
and insulating spaces prevents temperature drop at the ends of the stack. See
id. ,-r 54, 68.
The Examiner finds that Kato '810 and Kato '667, in combination,
teach all the elements of claim 1. See Final Action 5-10. In particular, the
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Appeal2015-000238
Application 12/188,011
Examiner finds that in Kato '810, "Figure 8 illustrates three types of
separators, 55, 56, 64 which are repeatedly stacked in sequence in the fuel
cell stack" in order to produce the power generation unit and end power
generation unit of claim 1. See id. at 6-7. Regarding the end power
generation unit, the Examiner finds that Kato '667 teaches the use of a
dummy electrolyte assembly (16 in Fig. 1 ), and concludes that "replacing a
normal MEA3 of Kato '810 [e.g., 54] with a dummy MEA" would have been
obvious to one of ordinary skill in the art "in order to provide insulation at
the end of the stack." Answer 12; see also Final Action 7-8 (citing Kato
'667 i-f 44). The Examiner further concludes that although Kato '810 and
Kato '667 do not refer to a separate dummy unit, it would have been obvious
to duplicate the same structures in order to "provide additional insulation."
Final Action 10; Answer 14.
Appellants argue that neither Kato '810 nor Kato '667 "teaches an end
power generation unit that includes both a functioning electrolyte electrode
assembly and a dummy electrolyte electrode assembly." Appeal Br. 6.
Thus, according to Appellants, incorporating the dummy unit of Kato '667
into the structure of Kato '810 disregards the hybrid nature of the end power
generation unit in claim 1, so that it "would be only a partial modification of
the existing Kato '810 structure and would fundamentally change the
operational features of the component." Id. at 6-7.
As the Examiner correctly states, see Answer 12-13, obviousness
does not require that the structure of Kato '667 be bodily incorporated into
3 The Specification uses the term membrane electrode assembly (MEA)
interchangeably with electrolyte electrode assembly. See, e.g., Spec. 1: 17-
26, 8:5, 10:6, 11:1-2. The term is also used by the cited references. See,
e.g., Kato '810 i-f 78; Kato '667 i-f 33.
7
Appeal2015-000238
Application 12/188,011
the structure of Kato '810. See In re Keller, 642 F.2d 413 (CCPA 1981).
Moreover, Appellants point to no specific "operational features" of Kato
'810 that would change in such a way as to dissuade one of ordinary skill in
the art from combining the two references. Thus, we find no reversible error
in the Examiner's determination that Kato '667 teaches one of ordinary skill
in the art that one of the MEAs of Kato '810 may be replaced by a dummy
MEA to yield the structure of the end power generation unit recited in claim
1.
Appellants also argue that one of ordinary skill in the art cannot
simply duplicate the prior art structures in order to obtain the structure of the
dummy unit as specified by claim 1. Appeal Br. 7-8. Such a duplication,
Appellants argue, "needs to fundamentally change the nature of the
suggested 'end power generation unit' of Kato '810," and requires "a
significant modification" of both the end power generation unit of Kato '810
and the dummy unit of Kato '667. Id.; see also Reply Br. 6-8. Rather than
perform such a modification, Appellants argue, a person of ordinary skill in
the art would have simply added a separate, unmodified dummy unit as
taught by Kato '667. See Appeal Br. 7-8; Reply Br. 6-8. Moreover,
according to Appellants, a duplication of the parts of '667 "would result in
four separators and two conductive plates, rather than the structure of
Appellant's claimed dummy unit which has three separators and two dummy
electrode assemblies (MEAs)." Reply Br. 7. In addition, Appellants argue
that the Examiner has failed to provide a reason to combine the references to
obtain the specific overall structure of the fuel cell stack of claim 1, given
that "a thermal management effect could be provided using the Kato '667
dummy unit without any alteration." Id. at 8.
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Appeal2015-000238
Application 12/188,011
We have carefully considered Appellants' arguments regarding the
combination of Kato '810 and Kato '667. However, we are not persuaded
that a simple duplication of the dummy cell 16 of Kato '667 would fall
outside the scope of claim 1. We interpret patent claims according to their
broadest reasonable interpretation consistent with the Specification. See In
re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007). While the
"dummy unit" limitation of claim 1 requires the stacking of "a seventh
separator, a first dummy electrolyte electrode assembly, an eighth separator,
a second dummy electrolyte electrode assembly, and a ninth separator in this
order," claim 1 is open-ended, as indicated by the transition word
comprising used to introduce the end power generation unit and the dummy
unit. See Appeal Br. 10. Therefore, the broadest reasonable interpretation
of the "dummy unit" limitation does not exclude additional separators. This
interpretation is consistent with the Specification, which does not explicitly
exclude the use of any additional separators in the dummy unit, and indicates
that "variations and modifications can be effected [to the invention] by those
skilled in the art without departing from the spirit and scope of the invention
as defined by the appended claims." Spec. 23: 18-21.
In light of this broadest reasonable interpretation, we determine that a
dummy unit consisting of two adjacent dummy cells 16 as described by Kato
'667 would fall within the scope of claim 1. Such a structure would meet all
the required features of the dummy unit in claim 1, and would have an
additional separator between the "eighth separator" and the "second dummy
electrolyte electrode assembly." Consequently, we find no reversible error
in the Examiner's determination, see Final Action 9-10; Answer 13-14, that
a person of ordinary skill in the art would have reason to produce the
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Appeal2015-000238
Application 12/188,011
dummy unit by duplicating parts, in order to provide additional insulation at
the ends of the fuel cell stack.
Therefore, by a preponderance of the evidence presented to us on this
appeal record, we find no reversible error in the Examiner's decision to
reject independent claim 1. For the same reasons, we find no reversible
error in the Examiner's decision to reject dependent claims 2, 3, and 5.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
10