Ex Parte Robertson et al

Patent Trial and Appeal Board

Oct 30, 2013

11303473 (P.T.A.B. Oct. 30, 2013)

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.
11/303,473 12/16/2005 David M. Robertson PUG.0128US (1185) 6306
21906 7590 10/31/2013
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
BERHANU, SAMUEL
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
10/31/2013 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 DAVID M. ROBERTSON, JON W. MEREDITH,
MARK T. SCHNEIDER, and DUSTAN L. SKIDMORE
____________________

Appeal 2011-006737
Application 11/303,473
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006737
Application 11/303,473

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STATEMENT OF THE CASE
Introduction
The Examiner finally rejected claims 1-7, 9-15, 18, and 19. Claims 6,
8, 16, and 17 have been canceled. Appellants indicate in the Appeal Brief
(App. Br. 5 and 8) that only claims 1 and 11 are appealed and argued.
Claims 1, 4, 5, 7, 9-11, 13-15, 18, and 19 were rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Pavio
(U.S. 2004/0202900 A1), Jungreis (U.S. 6,369,461 B1), and Burke (U.S.
2002/0024322 A1) (Ans. 3-6), and claims 2, 3, and 12 were rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Pavio,
Jungreis, Burke, and Okamura (U.S. 5,532,572) (Ans. 6-7).
Appellants expressly indicate (App. Br. 5 and 8) that only claims 1
and 11 are on appeal and are argued, therefore, we confine our decision to
claims 1 and 11. See Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI 2008)
(precedential) (holding that when Appellant does not appeal some of the
claims under rejection and does not challenge the Examiner’s rejection of
these claims, the Board will treat these claims as withdrawn from the appeal,
which operates as an authorization for the Examiner to cancel those claims
from the application). Following our decision, the Examiner should cancel
the non-appealed claims (claims 2-5, 7, 9, 10, 12-15, 18, and 19). See id.;
see also Manual of Patent Examining Procedure (MPEP) § 1215.03, Rev. 8,
July 2010. Accordingly, we do not address the Examiner’s rejections of
claims 2-5, 7, 9, 10, 12-15, 18, and 19, which are not on appeal.
In view of the foregoing, we consider only claims 1 and 11 to be
properly before us on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2011-006737
Application 11/303,473

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Exemplary Claims
Claims 1 and 11, with emphases added, read as follows:
1. A fuel cell system comprising:
a fuel cell stack to provide a stack voltage;
a DC-to-DC converter comprising an input terminal to
receive the stack voltage; and
at least one capacitor coupled to the input terminal of the
DC-to-DC converter, wherein said at least one capacitor is
adapted to store energy and communicate energy to the DC-to-
DC converter in response to a state of the fuel cell system in
which the fuel cell stack provides some power for a load
demanded of the fuel cell system but not enough power for the
load demanded of the fuel cell system, wherein said at least one
capacitor is sized to provide greater than one kilowatt of power
for greater than 10 seconds.

11. A method comprising:
communicating reactant flows to a fuel cell stack to
produce power for a load;
providing a DC-to-DC converter to convert a stack
voltage of the fuel cell stack to a predetermined voltage level;
coupling at least one capacitor to an input terminal of the
DC-to-DC converter to store reserve energy to be supplied to
the load during a state of the fuel cell system in which the fuel
cell stack provides some power demanded by the toad but
temporarily fails to provide all of the power demanded by the
load;
sizing said at least one capacitor based on at least in part
on an input voltage range required for voltage regulation by the
DC-to-DC converter; and
using said at least one capacitor to provide greater than
one kilowatt of power for greater than 10 seconds.

Appeal 2011-006737
Application 11/303,473

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Examiner’s Rejections1
(1) The Examiner rejected claims 1, 4, 5, 7, 9-11, 13-15, 18, and 19
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Pavio, Jungreis, and Burke. Ans. 3-6. The Examiner relies upon Pavio as
teaching a fuel cell capacitor attached to the input of a DC/DC converter,
relies upon Jungreis as teaching a catch-up process, and relies upon Burke as
teaching the specific size of the capacitor recited in claim 1 on appeal.
(2) The Examiner rejected claims 2, 3, and 12 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Pavio,
Jungreis, Burke, and Okamura. Ans. 6-7.
Issue on Appeal
Based on Appellants’ arguments in the briefs, the following issue is
presented on appeal:
Did the Examiner err in rejecting claims 1 and 11 as being obvious
because the combination of Pavio, Jungreis, and Burke fails to teach or
suggest the limitations at issue in representative claim 1?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’

1 Appellants argue patentability for claim 1 (see App. Br. 9-12 and Reply Br.
1-3) and claim 11 (see App. Br. 12-13; Reply Br. 4) individually. Claims 1
and 11 are each independent claims and contain similar limitations drawn to
a capacitor sized to provide greater than one kilowatt of power for greater
than 10 seconds. We consider claim 1 to be representative of the group of
claims rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Pavio, Jungreis, and Burke, pursuant to our authority under
37C.F.R. § 41.37(c)(1)(iv). Accordingly, our analysis herein will only
address representative claim 1.
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contentions in the Appeal Brief (App. Br. 9-13) and the Reply Brief (Reply
Br. 1-4) that the Examiner has erred. We disagree with Appellants’
conclusions.
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Ans. 3-7), as well as
the Advisory Action mailed May 18, 2010, and (2) the reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief (Ans. 7-13). We highlight and amplify certain teachings and
suggestions of the applied references as follows.
Specifically, we agree with the Examiner (Ans. 7-13) that the
combination of Pavio, Jungreis, and Burke suggests the subject matter of
claims 1 and 11, as set forth above in our summary of the Examiner’s
rejection.
In view of the foregoing, we conclude that the inventions recited in
claims 1 and 11 have not been shown to be patentably distinguishable from
the teachings of the applied prior art, and we sustain the rejection of
representative claim 1, as well as claims 4, 5, 7, 9-11, 13-15, 18, and 19
grouped therewith, as being obvious over the combination of Pavio,
Jungreis, and Burke. For similar reasons, because claims 2, 3, and 12
depend from respective ones of claims 1 and 11, and because Appellants
have failed to present arguments with regard to claims 2, 3, and 12, we
sustain the Examiner’s obviousness rejection of claims 2, 3, and 12.

CONCLUSIONS
(1) The Examiner has not erred in rejecting representative claim 1,
and claims 4, 5, 7, 9-11, 13-15, 18, and 19 grouped therewith, as being
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Application 11/303,473

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obvious because the combination of Pavio, Jungreis, and Burke teaches the
limitations at issue in representative claim 1.
(2) Appellants fail to present any arguments with regard to the
rejection of claims 2, 3, and 12 (see App. Br. 5). Therefore, Appellants have
not disputed the Examiner’s rejection set forth in the Answer (see Ans. 6-7),
and Appellants have not shown the Examiner erred in rejecting claims 2, 3,
and 12. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION2
The Examiner’s rejections of claims 1-7, 9-15, 18, and 19 under
35 U.S.C. § 103(a) are 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).

AFFIRMED

llw

2 With regard to the rejection of claims 2, 3, and 12 under 35 U.S.C. § 103(a)
over Pavio, Jungreis, Burke, and Okamura (Ans. 6-7), because these claims
are not before us on appeal, have not been argued by Appellants in the
briefs, and should be canceled upon further prosecution in accordance with
Ex Parte Ghuman (see supra Decision 2), we do not reach the merits of this
rejection.