Ex Parte Raiser et al

Board of Patent Appeals and Interferences

Jun 29, 2012

11112103 (B.P.A.I. Jun. 29, 2012)

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.
11/112,103 04/22/2005 Stephen Raiser GP-304895 6542
65798 7590 07/02/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
RAMADAN, RAMY O
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
07/02/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN RAISER, GEORGE R. WOODY,
and MARK W. VERBRUGGE
____________

Appeal 2009-015231
Application 11/112,103
Technology Center 2800
____________

Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and
GLENN J. PERRY, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015231
Application 11/112,103

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse but enter a new ground of rejection under 37 C.F.R. § 41.50(b).

Invention
Appellants’ invention relates to a fuel cell system that employs a
matched battery. See generally Spec. ¶ 0001. Claim 1 is reproduced below
with the key disputed limitations emphasized:
1. A fuel cell system comprising:

an electrical power bus line;

a fuel cell stack electrically coupled to the power bus line; and

a matched battery electrically coupled to the power bus line, said
battery being matched to a full voltage swing of the fuel cell stack as
defined by a voltage/current characteristic of the fuel stack by the
number of battery cells, a discharge rate of the battery and state of
charge (SOC) depending parameters of the battery that prevent [the
battery] from discharging below a damaging SOC so that the
voltage/current characteristic of the fuel cell stack does not need to be
changed to match the battery.

The Examiner relies on the following as evidence of unpatentability:
Kates US 6,337,557 B1 Jan. 8, 2002
Yanase US 6,429,613 B2 Aug. 6, 2002
Pearson US 2004/0009380 A1 Jan. 15, 2004
Norimatsu US 2006/0035115 A1 Feb. 16, 2006
(filed Mar 4, 2005)

Appeal 2009-015231
Application 11/112,103

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THE REJECTIONS
1. The Examiner rejected claims 1, 3, 4, and 8 under 35 U.S.C.
§ 102(b) as anticipated by Pearson. Ans. 3-4.
2. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Pearson and Norimatsu. Ans. 4-5.
3. The Examiner rejected claims 5, 6, 9-11, 14, and 16 under
35 U.S.C. § 103(a) as unpatentable over Pearson and Kates. Ans. 5-6.
4. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Pearson and Yanase. Ans. 6-7.
5. The Examiner rejected claims 12 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Pearson, Kates, and Norimatsu. Ans. 7-8.
6. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Pearson, Kates, and Yanase. Ans. 8-9.
7. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Pearson, Kates, Norimatsu, and Yanase. Ans. 9.

THE ANTICIPATION REJECTION OVER PEARSON
Regarding independent claim 1, Appellants assert, among other
things, that Pearson does not teach a matched battery as claimed. App.
Br. 10-11; Reply Br. 4-5. Specifically, Appellants argue:
that what does matter is that Appellant[s] claim[] a matched battery
that is matched to a full voltage swing of the a cell stack as claimed so
that the voltage/current characteristic of the fuel cell stack does not
need to be changed to be matched to the battery . . . Pearson . . .
includes a DC/DC converter, or the series pass element 32 as a
substitute therefore, because [the DC/DC converter] cannot be
eliminated.

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Application 11/112,103

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App. Br. 10. Appellants further contend that the current changes in
Pearson’s system between the fuel cell and battery with series element 32,
and thus, the battery is not matched to the fuel cell within the system without
changing the voltage/current characteristics of the fuel cell. Reply Br. 4-5.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Pearson discloses the matched battery being matched to a full voltage
swing of the fuel cell stack as defined by a voltage/current characteristic of
the fuel stack that prevents the battery from discharging below a damaging
SOC so that the voltage/current characteristic of the fuel cell stack does not
need to be changed to match the battery?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
rejection of claim 1. The Examiner first:
submits that the battery (24) is matched to the fuel cell stack (14) in
Pearson so that the voltage/current characteristic of the fuel cell stack
does not need to be changed to match the battery. In Pearson, by
selecting the open circuit voltage (state of charge parameter) of the
battery to be similar to the full load voltage of the fuel cell stack (14),
the battery (24) is matched to the fuel cell stack (14), which
eliminate[s] the need for the voltage/current characteristic of the fuel
cell stack (14) to be changed to match the battery (24).

Ans. 13. In the Examiner’s view, because the battery matches to the fuel
cell, a DC/DC converter is not used in Pearson, implicitly suggesting that no
voltage or current characteristics have changed. Id.
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However, the Examiner also states “the series element (32) disclosed
by Pearson . . . is a current limiting resistor or a controlled transistor that
limits current.” Id. Pearson describes a series pass element 32 located
between a fuel cell stack 14 and battery 24. ¶¶ 0043-45, 0048, 0051-0055;
Fig. 1. This element 32, along with the regulator circuit 34, controls current
flow through element 32, such that more current is provided to load 12 when
demand is greater than fuel cell stack’s output and excess current is sunk
when the fuel cell stack’s output exceeds the load’s demand. ¶¶ 0048-49,
0053; Fig. 1. Pearson demonstrates, as the Examiner admits (see Ans. 13
(stating element 32 limits current)), that the current in the system is
controlled or adjusted between the fuel cell and the battery such that the
current characteristic of the fuel cell does need to be changed to match the
battery. In contrast, claim 1 requires that the matched battery be matched to
the fuel cell stack’s fuel voltage swing as defined by a voltage/current
characteristic so that the stack’s voltage/current characteristic does not need
to be changed to match the battery.
Thus, even assuming Pearson teaches the matched battery being
matched to a full voltage swing as recited, Pearson still falls short of claim
1’s requirement that both the voltage and the current characteristics for the
fuel cell stack do not need to be changed to match the battery. Also, while
claim 1 does not recite that a DC/DC converter is eliminated from the
system as argued by Appellants (see App. Br. 9), the claim recites the
matched battery is matched to the fuel cell stack’s fuel voltage swing as
defined by a voltage/current characteristic so that the stack’s voltage/current
characteristic does not need to be changed to match the battery. As
explained above, Pearson fails to disclose this limitation.
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For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claim 1 and dependent claims 3, 4, and 8 for
similar reasons.

THE OBVIOUSNESS REJECTIONS
Claims 2 and 5-7
Claims 2 and 5-7 depend from independent claim 1. The Examiner
has not relied on Norimatsu, Kates, or Yanase to cure the above-noted
deficiencies of claim 1. See Ans. 4-7. Thus, because we reverse the
Examiner’s rejection of independent claim 1, we likewise will not sustain
the rejections of claims 2 and 5-7.

New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for
claims 9-17 under 35 U.S.C. § 112, second paragraph as being indefinite.
“The test for definiteness is whether one skilled in the art would understand
the bounds of the claim when read in light of the specification . . . If the
claims read in light of the specification reasonably apprise those skilled in
the art of the scope of the invention, § 112 demands no more.” Miles Labs.
Inc. v. Shandon Southern Prod. Ltd., 997 F.2d 870, 875 (Fed. Cir. 1993)
(citing to Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986).
Independent claim 9 recites a lithium ion battery including a
predetermined number of battery cells and a certain internal impedance that
allow the battery to be matched to a full voltage swing of the fuel cell stack
defined by a voltage/current characteristic of the fuel stack by its SOC
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characteristics to the voltage on the power bus line provided by the fuel cell
stack so that the voltage/current characteristic of the fuel cell stack does not
need to be matched to the battery. This claim recites two conditions that are
inconsistent. Namely, claim 9 recites both that the battery is matched to the
full voltage swing of the fuel cell stack defined by the voltage/current
characteristic, while also reciting that the voltage/current characteristic of
the fuel cell stack does not need to be matched to the battery.1 This claim
fails to recite clearly and distinctly whether the fuel cell stack’s
voltage/current characteristic, which defines the full voltage swing, is to be
matched or not matched to the battery.
Moreover, even assuming that these phrases in claim 9 can somehow
be considered agreeable, inconsistencies between the claim language and the
Specification may turn an otherwise definite claim into a claim that does not
reasonably apprise an ordinarily skilled artisan of the claim’s scope. See In
re Cohn, 438 F.2d 989, 992-93 (CCPA 1971). The Specification states that
the matched battery operates over a voltage swing as dictated by the fuel cell
voltage/current characteristic (¶ 0009), the voltage of the battery matches the
voltage on the bus dictated by the voltage output of the fuel cell stack
(¶ 0016), the matched battery characteristics provide a discharge curve
having a high voltage versus SOC that allows the battery to be matched to
the voltage of the bus line (¶ 0020),the battery is matched to the voltage
output of the fuel cell stack (¶ 0021), and that the battery must be matched to
protect against overcharge (¶ 0024). The clear import from these discussion

1 The language of claim 9, “the voltage/current characteristic of the fuel cell
stack does not need to be matched to the battery” differs from the language
of claim 1, “the voltage/current characteristic of the fuel cell stack does not
need to be changed to match the battery” (emphasis added).
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is that Appellant’s invention contains fuel cell stacks having voltage and
current characteristics that need to be matched to the battery and not “so that
the voltage/current characteristic of the fuel cell stack does not need to be
matched to the battery” as recited.
We therefore find that the Appellants have not provided a clear
measure of what Appellants regard as their invention, and we cannot
determine the metes and boundaries of claim 9.
Independent claim 15 is commensurate in scope with claim 9. Based
on the above reasons, we find this claim to be indefinite as well. We
likewise find dependent claims 10-14, 16, and 17 to be indefinite as they
include the limitations claims 9 and 15.
For the reasons expressed above, claims 9-17 are rejected under
§ 112, second paragraph as being indefinite. Therefore, the prior art
rejections must fall, because they necessarily are based on speculative
assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). Notably, our decision is based solely on the
indefiniteness of the claimed subject matter and does not reflect on the
adequacy of the prior art evidence in support the rejections.

CONCLUSION
The Examiner erred in rejecting claims 1, 3, 4, and 8 under § 102 and
claims 2, 5-7, and 9-17 under § 103.
We enter a new ground of rejection under 37 C.F.R. § 41.50(b),
rejecting claims 9-17 as indefinite under 35 U.S.C. § 112, ¶ 2.
This rule provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.” This rule also provides that the
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Application 11/112,103

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Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that
the proceeding be reheard under §
41.52 by the Board upon the same
record. . . .

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)(iv).

DECISION
The Examiner’s decision rejecting claims 1-17 is reversed.

REVERSED
37 C.F.R. § 41.50(b)

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