Ex Parte Rapaport et al

Board of Patent Appeals and Interferences

Jan 29, 2009

10848701 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PINKHAS A. RAPAPORT and JEFFREY A. ROCK
__________

Appeal 2008-4939
Application 10/848,701
Technology Center 1700
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Decided: January 29, 2009
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Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3-7, 9-12, 14-25, and 27-30. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellants disclose a flow field geometry for a fuel cell and
regulating fluid flow through a flow field of a fuel cell (Spec. ¶ [0001]). The
flow field geometry has inlet legs 38, outlet legs 46, and branched legs 42
Appeal 2008-4939
Application 10/848,701

(Spec. ¶ [0029], Fig. 2). The flow field provides a more even flow through
the field by controlling the pressure drop to provide a high flow rate through
lateral flow channels (i.e., those near the edge) relative to the medial flow
channels (i.e., those near the center) (Spec. ¶ [0027]).
Claim 1 is illustrative:

1. A coolant flow field geometry for directing coolant across a fuel
cell, comprising:

a straight first inlet channel having a first length and a first coolant
flow therethrough;

a straight second inlet channel having a second length and a second
coolant flow therethrough wherein said second length is greater than said
first length;

a first junction dividing said first channel into a first set of branched
channels and a second junction dividing said second channel into a second
set of branched channels, wherein a number of said first set of branched
channels is less than a number of said second set of branched channels; and

an inlet header, wherein said straight first inlet channel runs from said
inlet header to said first junction and said straight second inlet channel runs
from said inlet header to said second junction;

wherein said first and second coolant flows are metered to provide an
equivalent coolant flow per unit length between said first and second
channels.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Fujii US 6,406,809 B1 Jun. 18, 2002
Rock US 2004/0151971 A1 Aug. 5, 2004

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The rejections as presented by the Examiner are as follows:1
1. Claims 1, 3-7, 9-12, 14-25, and 27-30 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Fujii in view of Rock.
2. Claims 1, 3, 4, 14, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rock in view of Fujii.

Appellants argue the claims together as a group. In accordance with 37
C.F.R. § 41.37, we select claim 1 as the representative claim on which to
render our decision. Moreover, because the rejections rely on the same
references with the only difference being the order of the references in the
statement of the rejection, we focus on rejection 1 and thereby address both
rejections. In re Bush, 296 F.2d 491, 496 (CCPA 1961) (When a rejection is
based on a combination of references, the order in which prior art references
are cited to the Applicant is of no significance, but merely a matter of
exposition).
The Examiner finds that Fujii discloses all the features recited in
claim 1, except expressly disclosing that the “specific inlet channels running
from the inlet header to junction being straight” (Ans. 3-7). The Examiner
finds that Rock discloses straight inlet legs running from a manifold to a
junction to form bifurcated flow channels in a fuel cell flow field (Ans. 8).
Based on these findings, the Examiner concludes that it would have been
obvious to use Rock’s straight inlet channels in Fujii’s flow field plate in

1 The rejections of claims 1, 3, 4, 14, and 22 under § 102 over Rock and
§ 103 over Rock alone have been withdrawn. (Ans. 2).

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Application 10/848,701

order to permit uniform distribution over the entire region such that lower
manifold-to-manifold pressure drops are possible (Ans. 9).
Appellants do not dispute that the combination of Fujii in view of
Rock discloses all the claimed features (App. Br. 12-15; 17-20). Rather,
Appellants argue that there is no reason to combine Fujii’s and Rock’s
teachings (App. Br. 13). Specifically, Appellants contend that Fujii and
Rock are directed to two separate issues: cooling a separator plate (Fujii) and
distributing reactant gases to electrodes (Rock), such that they address
different problems and the apparent benefits are not relevant to each other
(App. Br. 13-14).

ISSUE
Did the Appellants show that the Examiner erred in finding a reason
to combine Rock’s straight inlet channels in a fuel cell flow field with Fujii’s
coolant flow field in a fuel cell? We answer this question in the negative.

PRINCIPLES OF LAW
Although common sense directs one to look with care at a patent
application that claims as innovation the combination of two known devices
according to their established functions, it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 1741 (2007).
“[A]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” Id.
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A statement of intended use of an apparatus or product does not make
a claim to the old product or apparatus patentable. In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) citing In re Sinex, 309 F.2d 488, 492 (CCPA
1962) (a statement of intended use in an apparatus claim failed to distinguish
over the prior art apparatus).

FACTUAL FINDINGS (FF)
1. Rock discloses using straight inlet legs (122) and exit legs (124),
which are coupled to bifurcated midsections (126, 128) in a reactant
flow field (¶¶ [0001], [0018]; Fig. 4).
2. Rock discloses that pressure differentials between the supply manifold
and the exhaust manifold, and between adjacent flow channels or
segments of the same flow channel are of considerable importance in
designing a fuel cell (¶ [0005]).
3. Rock further discloses designing the flow field to control (i.e., lower)
the manifold-to-manifold pressure drops (¶ [0007]).
4. Fujii discloses a fuel cell with coolant flow passages having main
flow passage grooves 48a, 48b, which communicate with the
branched flow passage grooves 50a to 50d (col. 3, ll. 50-64).
5. Fujii discloses that the main flow passage grooves 48a, 48b are
“designed to have the minimum number of bent portion (one portion
or no such portion)” (col. 5, ll. 39-41).
6. Fujii discloses a problem with the cooling channels is a large pressure
loss such that the system efficiency of the power generation of the
entire fuel cell is lowered (col. 2, ll. 1-3).
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7. Fujii further discloses that the main flow passage grooves 48a, 48b are
designed such that the number of bent portions is greatly reduced to
decrease the amount of pressure loss (col. 5, ll. 36-45).
8. Fujii discloses decreasing the passage length for the fuel gas flow
passages to avoid pressure loss for the fuel gas and the oxygen-
containing gas (col. 8, ll. 56-62).
9. FF 2, 3, and 6-8 disclose that Rock and Fujii are directed to the same
problem: pressure drop in fuel cell flow channels.
10. Rock’s “inlet legs” correspond to Fujii’s main flow passage grooves
48a, and Rock’s “exit legs” correspond to Fujii’s main flow passage
grooves 48b.

ANALYSIS
Contrary to Appellants’ motivation argument, we determine that Fujii
provides an explicit reason for combining Rock’s straight inlet legs with
Fujii’s coolant grooves. Specifically, Fujii discloses that the main flow
passages 48a and 48b are designed to have a minimum number of bent
portions, including no bent portion (FF 5). Accordingly, we determine that
Fujii provides a reason for combining Rock’s straight inlet legs with Fujii’s
coolant grooves (i.e., to minimize the number of bent portions).
Part of Appellants’ motivation argument is directed to Fujii’s use of
the grooves to convey coolant in a separator plate versus Rock’s use of the
channels to convey fuel or oxidant to electrodes (App. Br. 13). Such
argument is not persuasiave because Appellants’ statement that the apparatus
claims are “for directing coolant” is merely an intended use for the flow field
geometry that does not patentably distinguish over the prior art. Our
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determination is supported by Appellants’ Specification that discloses that
the claimed invention lies not in the material flowing through the channels,
but, rather, in the channel structure that regulates fluid flow through a flow
field of a fuel cell (Spec. ¶ [0001]). In fact, the Specification indicates that
the flow field geometry can be in implemented in other flow field
applications, including reactant flow fields (¶ [0034]) such as in Rock.
Furthermore, we determine that both Rock and Fujii are directed to
solving the same problem: pressure drop in fuel cell flow channels (FF 9).
Accordingly, we determine that one skilled in the art would have looked to
Rock and Fujii to control pressure drop in the fuel cell flow passages.
Moreover, Fujii discloses that pressure drop is lowered by reducing the
number of bends in the main flow passages 48a and 48b (FF 7). Fujii’s flow
passages 48a and 48b correspond to Rock’s inlet legs 122 and exit legs 124,
respectively (FF 10). Accordingly, we determine that it would have been
obvious to substitute Rock’s straight inlet and outlet legs for Fujii’s main
flow passages in order to lower the pressure loss as explicitly taught by Fujii
(FF 7).
DECISION
We sustain the § 103 rejection of claims 1, 3-7, 9-12, 14-25, and 27-
30 over Fujii in view of Rock.
We sustain the § 103 rejection of claims 1, 3, 4, 14, and 22 over Rock
in view of Fujii.
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)(1)(iv).

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AFFIRMED

PL Initial:
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HARNESS, DICKEY & PIERCE, PLC
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