Ex Parte Sennoun et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10912298 (B.P.A.I. Sep. 21, 2010)

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.
10/912,298 08/05/2004 Mohammed E. Sennoun GP-304698 1904
60770 7590 09/21/2010
General Motors Corporation
c/o REISING ETHINGTON P.C.
P.O. BOX 4390
TROY, MI 48099-4390
EXAMINER
CHUO, TONY SHENG HSIANG
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/21/2010 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 MOHAMMED E. SENNOUN and ROBERT C. REID
________________

Appeal 2009-012615
Application 10/912,298
Technology Center 1700
________________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-7 and 9-15, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-012615
Application 10/912,298

The Invention
The Appellants claim a fuel cell product. Claim 1 is illustrative:
1. A product comprising:

a cathode inlet conduit for carrying a cathode inlet stream;

a humidifier provided in fluid communication with said cathode
inlet conduit for receiving and humidifying the cathode inlet stream;

a fuel cell provided in fluid communication with said humidifier
for receiving the cathode inlet stream from said humidifier;

a cathode humidifier bypass conduit connecting said cathode inlet
conduit to said fuel cell for selectively shunting the cathode inlet stream
around said humidifier to said fuel cell;

a cathode humidifier bypass valve provided in fluid communication
with said cathode inlet conduit and said cathode humidifier bypass conduit,
and wherein the cathode humidifier bypass valve is in a position to block the
flow of the cathode inlet stream into the humidifier and to allow the flow of
the cathode inlet stream around the humidifier and into the fuel cell;

a drive motor connected to the fuel cell so that current flows thereto
when the cathode humidifier bypass valve is in a position to block the flow
of the cathode stream into the humidifier and to allow the flow of the
cathode inlet stream around the humidifier and into the fuel cell.

The References
Katagiri 2001/0010875 A1 Aug. 2, 2001
Roberts 2001/0055707 A1 Dec. 27, 2001
Raiser 2002/0064695 A1 May 30, 2002
Wheat 2002/0164509 A1 Nov. 7, 2002

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Application 10/912,298

The Rejections
The claims stand rejected as follows: claims 1-7 and 9-15 under
35 U.S.C. § 102(b) over Wheat as evidenced by Raiser, and claims 1-7
and 9-15 under 35 U.S.C. § 103 over Roberts in view of Katagiri and Raiser.
OPINION
We reverse the rejections and, under 37 C.F.R. § 41.50(b), enter new
grounds of rejection.
Rejection under 35 U.S.C. § 102(b)
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Wheat inherently discloses a drive motor connected to a
fuel cell so that current flows thereto when a cathode humidifier bypass
valve is in a position to block the cathode inlet stream flow into the
humidifier and allow the cathode inlet stream to flow around the humidifier
into the fuel cell?
Findings of Fact
Wheat discloses a fuel cell humidity control system comprising a
humidifier and a bypass line and valve for bypassing gas around the
humidifier such that the humidity of an individual fuel cell or a fuel cell
stack is decreased by bypassing more gas and increased by bypassing less
gas (¶¶ 0019, 0027). Bypass lines and valves can be used to vary the
humidity of the gas inlet streams to the anode and the cathode (¶¶ 0019,
0032). Wheat discloses that fuel cell systems “are increasingly being used
as a power source in a wide variety of applications” (¶ 0002) and have “been
proposed for use in vehicles as a replacement for internal combustion
engines.” See id.
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Application 10/912,298

Raiser discloses that the uses of fuel cells include providing power for
motor vehicles (¶ 0002).
Analysis
The Examiner has the initial burden of establishing a prima facie case
of anticipation by pointing out where all of the claim limitations appear,
either expressly or inherently, in a single reference. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990); Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989); In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986).
The Appellants argue that Wheat does not anticipate the claimed
product because Wheat does not disclose a drive motor and Raiser does not
indicate that Wheat’s fuel cell inherently is connected to a drive motor
(Br. 7-8).
The Examiner argues that “[a]s evidenced by Raiser, the Wheat fuel
cell system that is used as a power source for a motor vehicle inherently
comprises a drive motor that is fed electrical energy from the fuel cell
system” (Ans. 9).
An inherent characteristic must be inevitable, and not merely a
possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA
1981). The Examiner has not established that Wheat’s fuel cell system
inevitably is a power source for a motor vehicle. Wheat merely discloses
that fuel cell systems are used in a wide variety of applications and have
been proposed for use as a replacement for internal combustion engines
(¶ 0002).

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Application 10/912,298

Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that Wheat inherently discloses a drive motor connected to a
fuel cell so that current flows thereto when a cathode humidifier bypass
valve is in a position to block the cathode inlet stream flow into the
humidifier and allow the cathode inlet stream to flow around the humidifier
into the fuel cell.
Rejection under 35 U.S.C. § 103
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a drive motor connected to a fuel
cell so that current flows thereto when a cathode humidifier bypass valve is
in a position to block the cathode inlet stream flow into the humidifier and
allow the cathode inlet stream to flow around the humidifier into the fuel
cell?
Findings of Fact
Roberts discloses a fuel cell control device operable to direct reactant
fluid through a humidifier to a fuel cell stack during normal operation while
electrical power is being generated by the stack, and through a bypass
conduit to the stack during a shutdown procedure after the electrical current
supply from the stack to an external circuit has been interrupted (¶¶ 0020,
0047).
Katagiri discloses a fuel cell humidification system comprising a
humidifier (6) and a gas bypass (21) around the humidifier (6), the gas
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Application 10/912,298

bypass (21) having therein a flow regulation valve (22) for regulating the
amount of bypass gas flow (¶¶ 0015, 0045; Fig. 1). The gas can be air or
fuel hydrogen (¶¶ 0038, 0053, 0069, 0096). “[T]he apparatus is suitable for
a fuel cell vehicle” (¶ 0054).
Analysis
The Appellants argue that
if the Katagirl [sic] reference as evidenced by Raiser does
teach “operating humidifier bypass valves during normal
operation when electrical energy is delivered by the fuel cell
to a drive motor” (Office Action mailed July 7, 2008, page
10), then the combination of the three references would
change the principle of operation of Roberts et al. because
Roberts et al. teaches to interrupt the flow of electricity from
the fuel cell stack to the circuit before opening the bypass
valves to purge the stack of water

(Reply Br. 6).
The Examiner argues that “the fact that Roberts et al teaches operating
the humidifier bypass purge system while the fuel cell system is being shut
down does not preclude the humidifier bypass system from being operated
during normal operating conditions when the fuel cell is supplying current to
the drive motor” (Ans. 11). The Examiner argues that during normal
operation “one skilled in the art would alternate between humidified reactant
gas and non-humidified reactant gas to maintain a balance in the humidity
level of the fuel cell” (Ans. 12).
Roberts bypasses the humidifier during shutdown “to improve the
cold start capability and freeze tolerance of the stack by reducing the amount
of water remaining within the fuel, oxidant and coolant passages of the
stack” (¶ 0011). The Examiner has not established that in view of that
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Application 10/912,298

purpose one of ordinary skill in the art would have been led by the applied
prior art to modify Roberts’ system such that the humidifier is bypassed
during normal operation of the fuel cell.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a drive motor connected to a fuel
cell so that current flows thereto when a cathode humidifier bypass valve is
in a position to block the cathode inlet stream flow into the humidifier and
allow the cathode inlet stream to flow around the humidifier into the fuel
cell.
New grounds of rejection
We address only claims 1 and 2 and leave it to the Examiner to
address the other claims.
Claims 1 and 2 are rejected under 35 U.S.C. § 103 as being
unpatentable over Wheat in view of the Appellants’ admitted prior art.
Wheat discloses a fuel cell gas inlet which can be a cathode inlet
(Appellants’ claim 1) or an anode inlet (Appellants’ claim 2) from a gas
supply (60), a humidifier (54) in fluid communication with the gas inlet (60)
for receiving and humidifying the inlet gas, a fuel cell (56) in fluid
communication with the humidifier (54) for receiving the stream from the
gas inlet, a bypass conduit (104) for bypassing the inlet gas around the
humidifier (54), and a humidifier bypass valve (100) for blocking the gas
flow to the humidifier (54) and allowing the gas to bypass the
humidifier (54) (¶¶ 0008, 0019, 0025, 0027). Wheat discloses that
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humidifier bypass lines and valves can be used to vary the humidity of gas
that is supplied to both the anode and cathode flow lines (¶ 0032).
Wheat does not disclose a drive motor. However, Wheat discloses
that fuel cell systems have been proposed for use in vehicles as a
replacement for internal combustion engines (¶ 0002) and the Appellants
acknowledge that at the time of their invention it was known in the fuel cell
art to use fuel cells for vehicle operation and to distribute electrons from the
anode through a drive motor to a cathode (Spec. ¶¶ 002, 005). Therefore it
would have been prima facie obvious for one of ordinary skill in the art to
connect Wheat’s fuel cell to a vehicle drive motor to permit the fuel cell to
function as a replacement for an internal combustion engine as proposed by
Wheat. Flowing current to the drive motor regardless of whether the
humidifier is bypassed would have been prima facie obvious to one of
ordinary skill in the art to provide power for running the vehicle
continuously.
Claims 1 and 2 are rejected under 35 U.S.C. § 103 as being
unpatentable over Katagiri in view of the Appellants’ admitted prior art.
Katagiri discloses a fuel cell gas inlet conduit (17) for a gas which can
be cathode inlet gas (Appellants’ claim 1) or anode inlet gas (Appellants’
claim 2), a humidifier (6) in fluid communication with the gas inlet for
receiving and humidifying the inlet gas, a fuel cell (1) in fluid
communication with the humidifier (6) for receiving the gas from the
humidifier, a humidifier bypass conduit (21) for bypassing the gas around
the humidifier (6), and a humidifier bypass flow regulating valve (22) for
regulating the amount of flow of bypassing gas (¶¶ 0015, 0038, 0045, 0053,
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0069, 0096; Fig. 1). Katagiri teaches that “the apparatus is suitable for a fuel
cell vehicle” (¶ 0054).
Katagiri does not state that both the cathode inlet gas and the anode
inlet gas can be humidified. However, the disclosure that the gas can be
oxygen in supplied air (cathode inlet gas) or separately supplied hydrogen
(anode inlet gas) (¶ 0038) would have led one of ordinary skill in the art,
through no more than ordinary creativity, to humidify both the cathode inlet
gas and the anode inlet gas to obtain the benefit of controlling the humidity
in both of them. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (In making an obviousness determination one “can take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ”).
Katagiri does not state that the bypass valve blocks the flow of the gas
into the humidifier. However, Katagiri’s disclosure that the bypass allows
the gas to bypass the humidifier to control the gas humidity (¶¶ 0015, 0053)
would have led one of ordinary skill in the art, through no more than
ordinary creativity, to bypass the humidifier to the extent needed to obtain
the desired gas humidity, including complete bypass, i.e., blockage of the
gas flow to the humidifier. See KSR, 550 U.S. at 418.
Katagiri does not disclose a drive motor. However, in view of
Katagiri’s disclosure that the apparatus is suitable for a fuel cell vehicle
(¶ 0054) and the Appellants’ admitted prior art knowledge of using a fuel
cell for vehicle operation and for distributing electrons as electric current
from an anode through a drive motor to a cathode (Spec. ¶¶ 002, 005), it
would have been prima facie obvious to one of ordinary skill in the art to
connect Katagiri’s fuel cell to a vehicle drive motor to provide the benefit of
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powering the fuel cell vehicle, and to do so such that current flows to the
drive motor regardless of whether the humidifier is bypassed in order to
provide continuous power for running the vehicle without interruption.
DECISION/ORDER
The rejections of claims 1-7 and 9-15 under 35 U.S.C. § 102(b) over
Wheat as evidenced by Raiser, and claims 1-7 and 9-15 under
35 U.S.C. § 103 over Roberts in view of Katagiri and Raiser are reversed.
New grounds of rejection have been introduced under 37 C.F.R. § 41.50(b).
It is ordered that the Examiner’s decision is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. § 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, 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. . . .

REVERSED, 37 C.F.R. § 41.50(b)
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Appeal 2009-012615
Application 10/912,298

ssl

GENERAL MOTORS CORPORATION
C/O REISING ETHINGTON P.C.
P.O. BOX 4390
TROY MI 48099-4390
11