Ex Parte O et al

Patent Trial and Appeal Board

Mar 8, 2018

13612384 (P.T.A.B. Mar. 8, 2018)

United States Patent and Trademark Office
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.
13/612,384 09/12/2012 Kelly A. O'Leary P019395-FCA-CHE 4435
65798 7590
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
AMPONSAH, OSEI K
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
03/08/2018 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 KELLY A. O'LEARY,
BALASUBRAMANIAN LAKSHMANAN,
ROBERT C. REID, ROBERT J. MOSES, and
ROBERT S. FOLEY
Appeal 2017-003321
Application 13/612,384
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL1
1 In explaining our Decision, we cite to the Specification dated September
12, 2012(Spec.), Final Office Action dated December 9, 2015 (Final), the
Appeal Brief dated May 5, 2016 (Appeal Br.), the Examiner’s Answer dated
November 2, 2016 (Ans.), and the Reply Brief dated December 21, 2016
(Reply Br.).
Appeal 2017-003321
Application 13/612,384
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision to reject claims 10-14, 16, 17, and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a fuel cell system including a fuel cell
stack, a battery, and an electrical converter. The issue on appeal concerns
the electrical converter.
Claim 10, with key language highlighted, is illustrative:
10. A fuel cell system comprising:
a fuel cell stack including a plurality of fuel cells each
having an anode electrode and cathode electrode;
a battery; and
an electrical converter electrically coupled to the battery,
said electrical converter being configured to assist in providing
an oxidation potential to the fuel cell stack by converting
electrical power from the battery at a time effective to oxidize
contaminants on the cathode or anode electrodes in the fuel cell
stack, wherein the effective time is a time where an amount of
hydrogen in the fuel cell stack is known so as to define a
reference potential within the stack and there are no system
loads drawing power from the fuel cell stack, said oxidation
potential being the reference potential plus a voltage potential
provided by the electrical converter.
Appeal Br. 19 (claims appendix) (emphasis added).
2 Appellants identity the real party in interest as GM Global Technology
Operations, LLC. App. Br. 3.
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Application 13/612,384
The Examiner maintains the following rejections:
A. The rejection of claims 10, 12, 13, 16, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Stimming3 in view of Saito4;
B. The rejection of claims 11 and 21 under 35 U.S.C. § 103(a) as
being unpatentable over Stimming and Saito and further in view of
Saunders5; and
C. The rejection of claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Stimming and Saito and further in view of
Burch.6
OPINION
Appellants’ claim 10 recites that the electrical converter is
“configured to assist in providing an oxidation potential to the fuel cell stack
by converting electrical power from the battery at a time effective to oxidize
contaminants on the cathode or anode electrodes in the fuel cell stack” and
then defines the effective time.
The first issue to be resolved is the limiting nature of the “configured
to assist in . . .” recitation of the claim. The question is: How does the
electrical converter assist in providing an oxidation potential and how does
the functional recitation regarding the providing step and its timing limit the
structure of the electrical converter? In considering the limiting nature of
the “configured to assist in . . .” recitation, we keep in mind that 35 U.S.C.
§101 requires the subject matter of a claim fit into one of the statutory
3 US 2003/0022033 Al, published Jan. 30, 2003.
4 US 2004/0106025 Al, published June 3, 2004.
5 US 2005/0123809 Al, published June 9, 2005.
6 US 2008/0081224 Al, published Apr. 3, 2008.
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Appeal 2017-003321
Application 13/612,384
classes of invention, i.e., process, machine, manufacture, or composition of
matter. In the context of the claim before us the system is a “machine” as it
is “a concrete thing, consisting of parts, or of certain devices and
combination of devices.” In re Nuijten, 500 F.3d, 1346, 1355 (Fed. Cir.
2007) (quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863).
According to Appellants’ Specification, the electrical converter is
either: (1) a power converter that converts the high voltage battery power
from the battery 22 to a voltage potential suitable for the oxidation process;
or (2) a boost converter that converts a low voltage to a high enough voltage
portion to provide the oxidation. Spec. 127. The Specification does not
disclose that the electrical converter itself determines the timing of the
power conversion or boost conversion. Instead, the fuel cell system includes
a voltage monitoring circuit 48 and a system controller 44 that controls the
operation of the fuel cell system 10 and receives the voltage values from the
voltage monitoring circuit 48. Spec. 123. Electrical converter 34 is
controlled by controller 44. Spec. 125. Controller 44 monitors the
maximum and minimum cell voltages provided by the voltage monitoring
circuit 48 and only allows the converter 34 to provide the oxidation potential
to the fuel cell stack 12 when the maximum cell voltage, i.e., the fuel cell
with the highest voltage, is below a maximum cell voltage threshold and the
minimum cell voltage, i.e., the fuel cell with the lowest voltage, is above a
minimum cell voltage threshold. Spec. 126.
As pointed out by the Examiner, claim 10 does not recite a controller.
Ans. 10. Although the electrical converter is configured to assist the
controller in performing the functions recited in claim 10, the electrical
converter structure remains that of an electrical converter. Thus, the
functional recitation regarding the assistance in claim 10 does not patentably
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Appeal 2017-003321
Application 13/612,384
distinguish the structure of the electrical converter from the electrical
converter structures known in the prior art.
Appellants state in the Reply Brief that the Examiner’s determination
regarding the failure of claim 10 to recite a controller “represents a new line
of argument by the Examiner not previously presented in prosecution,” and
“[i]f the position of the Office is that a controller, particularly programmed
with the logic of [Appellants’] claims, would overcome the art, this could
easily have been added to [Appellants’] claims via amendment.” Reply Br.
3. We do not decide whether such an amendment would overcome the prior
art, however, we do point out that language directed to a controller
programmed with the logic disclosed in the Specification would, at least,
provide a structural limitation.
“[I]f a machine is programmed in a certain new and unobvious
way, it is physically different from the machine without that
program; its memory elements are differently arranged. The
fact that these physical changes are invisible to the eye should
not tempt us to conclude that the machine has not been
changed.”
In reBernhart, 417 F.2d 1395 at 1400 (CCPA 1969).
For the above reasons, none of Appellants’ arguments are persuasive
of reversible error. Because the claims sweep in the structure of the prior
art, we sustain the rejections of the Examiner.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
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Application 13/612,384
TIME PERIOD FOR RESPONSE
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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