Ex Parte Niezabytowski et al

Patent Trial and Appeal Board

Oct 21, 2013

12831639 (P.T.A.B. Oct. 21, 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.
12/831,639 07/07/2010 Francis Niezabytowski 81204829 2838
28395 7590 10/21/2013
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
DOUYETTE, KENNETH J
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
10/21/2013 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 FRANCIS NIEZABYTOWSKI, FRED G. BRIGHTON,
CRAIG MICHAEL MATHIE, and DOUGLAS PICCARD
____________

Appeal 2012-007585
Application 12/831,639
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007585
Application 12/831,639

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

Appellants claim the combination of a vehicle and a fuel-cell system
or the subcombination of a fuel-cell system which includes a cathode loop
having a portion forming a water pooling location and (i) "a normally open
mechanical check valve disposed within the vicinity of the water pooling
location" (independent claim 1) or (ii) a mechanical check valve "configured
to close when a pressure within the loop is greater than a predetermined
threshold and to open when the pressure is less than the threshold"
(independent claim 5) or "a normally open mechanical check valve . . .
having a cracking pressure approximately equal to the operating pressure"
(independent claim 11).
A copy of claims 1, 5, and 11 (i.e., all the independent claims on
appeal), taken from the Claims Appendix of the Appeal Brief, appears
below.
1. A vehicle comprising:
a fuel cell system configured to provide motive power for
the vehicle and including a cathode loop (i) being arranged such
that a portion of the loop forms a water pooling location where
water normally pools during stack operation or after stack shut-
down and (ii) including a normally open mechanical check
valve disposed within a vicinity of the water pooling location.
5. A fuel cell system comprising:
a cathode loop including a fuel stack, a humidifier, a first
tube fluidly connecting the stack and humidifier, a control
Appeal 2012-007585
Application 12/831,639

3
valve, and a second tube fluidly connecting the control valve
and humidifier; and
a mechanical check valve (i) configured to close when a
pressure within the loop is greater than a predetermined
threshold and to open when the pressure is less than the
threshold and (ii) disposed within the loop such that water
within the loop and in a vicinity of the check valve drains from
the loop if the check valve is open.
11. A vehicle comprising:
a fuel cell system configured to provide motive power for
the vehicle and including a cathode loop having an operating
pressure during fuel cell system operation, the cathode loop
including a normally open mechanical check valve (i) disposed
at a water pooling location within the loop and (ii) having a
cracking pressure approximately equal to the operating
pressure.
Under 35 U.S.C. § 102(b), the Examiner rejects independent claims 1
and 5 as anticipated by Suzuki (U.S. 2002/0039674 A1 published Apr. 4,
2002) and rejects independent claim 11 as anticipated by Katagiri
(U.S. 2005/0280166 A1 published Dec. 22, 2005). The Examiner rejects the
dependent claims under 35 U.S.C. § 102 or 35 U.S.C. § 103 over these
respective references alone or in combination with additional prior art.1
The Examiner finds that valves 19, 20 of Suzuki satisfy mechanical
check valve limitations defined by independent claims 1 and 5 (Ans. 4-6).
The Examiner's finding is erroneous. We agree with Appellants that
the Suzuki valves 19, 20 are not disclosed as being "a normally open

1 The Examiner fails to include dependent claim 8 in the statements of
rejections listed in the Answer. The Examiner's failure is harmless in light
of our disposition of this appeal.
Appeal 2012-007585
Application 12/831,639

4
mechanical check valve" in accordance with claim 1 (App. Br. 3). Rather,
these valves are normally closed and are opened only at the time of water
accumulation or at a predetermined timing prior thereto (id. citing Suzuki
para. 0074). Likewise, we agree with Appellants that the Suzuki valves are
not disclosed as being "a mechanical check valve . . . configured to close
when a pressure within the loop is greater than a predetermined threshold
and to open when the pressure is less than the threshold" in accordance with
claim 5 (id. at 4). As correctly explained by Appellants in reference to
paragraph 0078 of Suzuki, these valves (unlike the claim 5 valve) are opened
and closed depending on whether the pressure loss between the entrance
head 62 and the exit head 63 of Suzuki's humidifier exceeds a predetermined
value.
The Examiner finds that check valve 67 of Katagiri satisfies the claim
11 requirement for "a normally open mechanical check valve . . . having a
cracking pressure approximately equal to the operating pressure” (Ans. 7).
This finding also is erroneous. We agree with Appellants that the
normally open check valve of claim 11 will close when exposed to the
operating pressure of the cathode loop due to its cracking pressure being
approximately equal to the operating pressure (App. Br. 5). In contrast,
Katagiri's check valve is in an open position during operation of the fuel cell
system (id. citing Katagiri para. 0052).
The Examiner's response to Appellants' arguments regarding the
independent claims indicates that the Examiner may believe the functional
recitations of these claims do not have patentable weight because the claims
are directed to an apparatus (Ans. 11-13). Such a belief is contrary to the
well-established legal precedent that "[a] patent applicant is free to recite
Appeal 2012-007585
Application 12/831,639

5
features of an apparatus either structurally or functionally." In re Schreiber,
128 F.3d 1473, 1478 (Fed. Cir. 1997).

For the above stated reasons, the § 102 rejections of the independent
claims will not be sustained. Concomitantly, the § 102 and § 103 rejections
of the dependent claims also will not be sustained.

The decision of the Examiner is reversed.

REVERSED
bar