Ex Parte Sinha et al

Patent Trial and Appeal Board

Jun 11, 2013

10811161 (P.T.A.B. Jun. 11, 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.
10/811,161 03/26/2004 Manish Sinha GP-303576 1978
65798 7590 06/12/2013
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
WALKER, KEITH D
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
06/12/2013 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 MANISH SINHA, MATTHEW C. KIRKLIN, and
CLARK G. HOCHGRAF
_____________

Appeal 2011-001853
Application 10/811,161
Technology Center 1700
______________

Before ROBERT E. NAPPI, JASON V. MORGAN, and HUNG H. BUI,
Administrative Patent Judges.

Per Curiam

DECISION ON APPEAL
Appeal 2011-001853
Application 10/811,161

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1 through 15.
We affirm.
INVENTION
The invention is directed to a system for distributing power generated
by a fuel cell. See paragraphs 14 and 15 of Appellants’ Specification.
Claim 13 is representative of the invention and reproduced below:
13. A fuel cell distribution system for controlling power
being applied to a system load, said system comprising:
a fuel cell, said fuel cell generating a draw current;
a battery, said battery generating a battery current;
a power conditioning module responsive to the draw
current and the battery current, said power conditioning module
conditioning the draw current and the battery current and
applying the conditioned draw current and battery current to the
system load;
a fuel cell sensor, said fuel cell sensor measuring the
draw current from the fuel cell and generating a fuel cell signal
indicative of the measured draw current; and
a fuel cell controller responsive to the fuel cell signal,
said fuel cell controller operating a load following algorithm
that defines a command signal applied to the fuel cell that sets
the available output power from the fuel cell, said load
following algorithm also defining a maximum draw current
signal applied to the power conditioning module that defines a
maximum draw current to be drawn from the fuel cell, said load
following algorithm defining an approach threshold region,
wherein the fuel cell controller increases the available output
power by the command signal if the draw current enters the
approach threshold region, and wherein the load following
algorithm maintains the available output power constant by the
command signal if the draw current leaves the approach
threshold region, said load following algorithm also defining a
diverge threshold region, wherein the fuel cell controller
decreases the available output power by the command signal if
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the draw current enters the diverge threshold region, and
wherein the load following algorithm maintains the available
output power constant by the command signal if the draw
current leaves the diverge threshold region.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 15 under 35 U.S.C. § 112
first paragraph as failing to comply with the enablement requirement.
Answer 3-5.1
The Examiner has rejected claims 7 and 14 under 35 U.S.C. § 112
second paragraph as being indefinite. Answer 6.
The Examiner has rejected claims 1 through 5, 10 through 13 under
35 U.S.C. § 102(b) or in the alternative 35 U.S.C. § 103 (a) over Dickman
(2001/0049038 A1; Dec. 6, 2001). Answer 7-9.
The Examiner has rejected claims 1 through 5, 10 through 13 under
35 U.S.C. § 102(b) or in the alternative 35 U.S.C. § 103 (a) over Jones
(2002/0082785 A1; Jun 27, 2002). Answer 9-10.
The Examiner has rejected claims 1 through 5, 10 through 13 under
35 U.S.C. § 103 (a) over Jones and Inoue (5,637,414; Jun. 10, 1997).
Answer 10.
The Examiner has rejected claims 6 through 9, 14 and 15 under 35
U.S.C. § 103 (a) over Dickman and Jung (Jin-Hwan Jung, Power Control
Strategy for Fuel Cell Hybrid Electric Vehicles, SAE International (2003)).
Answer 11-12.

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
August 3, 2010.
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The Examiner has rejected claims 6 through 9, 14 and 15 under 35
U.S.C. § 103 (a) over Jones, Inoue, and Jung. Answer 12-13.
The Examiner has rejected claims 6 through 9, 14 and 15 under 35
U.S.C. § 103 (a) over Dickman and Takabayashi (4,839,574; Jun 13, 1989).
Answer 13-14.
The Examiner has rejected claims 6 through 9, 14 and 15 under 35
U.S.C. § 103 (a) over Jones and Takabayashi. Answer 14-15.

Rejections under 35 U.S.C. § 112
ISSUES
Appellants argue on pages 9 through 12 of the Appeal Brief that the
Examiner’s rejection under 35 U.S.C. § 112 first paragraph is in error.2
These arguments present us with the issue:
a) Did the Examiner err in finding that Appellants’ originally filed
specification does not enable the power conditioning module,
controller, and load following algorithm?3

Appellants argue on page 13 and 14 of the Appeal Brief that the
Examiner’s rejection under 35 U.S.C. § 112 second paragraph is in error.
These arguments present us with the issues:
b) Did the Examiner err in finding claims 7 and 4 as indefinite?

2 Throughout this opinion we refer to Appellants’ Appeal Brief filed on
May 21, 2010 and Reply Brief dated September 29, 2010.
3 We note that Appellants argue, on page 9 and 13 that the rejections based
upon 35 U.S.C. § 112 are not timely and therefore not reasonable. These
arguments do not present an appealable issue.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments.

With respect to the first issue directed to the rejection of claims 1
through 15 under 35 U.S.C. § 112 first paragraph, we agree with Appellants’
conclusion that the originally filed specification enables the power
conditioning module, the controller, and the load following algorithm,
without requiring undue experimentation to practice the invention. The
enablement requirement “is met when at the time of filing the application
one skilled in the art, having read the specification, could practice the
invention without “undue experimentation.” In re Wands, 858 F.2d 731,
736–37 (Fed. Cir. 1988). Here, the citations to the Specification Appellants
provided in on pages 10 through 12 of Brief, along with the skill in the art as
demonstrated by the evidence of record show that the Examiner erred in
finding that practicing the invention given the Appellants’ disclosure
requires undue experimentation. Accordingly, we will not sustain the
Examiner’s rejection under 35 U.S.C. § 112 first paragraph.
With respect to the second issue directed to the rejection of claims 7
and 14 under 35 U.S.C. § 112 second paragraph, we disagree with
Appellants’ conclusion that the Examiner erred in finds claims 7 and 14 as
indefinite. The Examiner finds claim 7 to be indefinite because it is unclear
how the claimed function works or fits into the claimed algorithm. Answer
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6. The Examiner reasons that “[s]ince the battery sensor is always
measuring the battery current, then the battery current is always measuring a
predetermined current for a predetermined period of time.” Id. In response
thereto, Appellants argue that the claim is clear and asserts that the limitation
requires “if the battery current maintains some value the, the controller will
signal that the amount of output power may be increased. . . . ” Answer 14.
We disagree with Appellants, notably, the claim does not recite that if the
sensor measures a predetermined current value then …; rather the claim just
recites that “if the battery sensor measures a predetermined battery current
continuously.” Thus, Appellants’ argument is not commensurate with the
claim as the claim is not referring to a value measured by the battery current
sensor. Accordingly, we sustain the Examiner’s rejection of claims 7 and 14
under 35 U.S.C. § 112 second paragraph.

Obviousness rejections based upon Jones and Inoue 4

4 The Examiner has provided numerous prior art rejections, against the
claims of this application. We have reviewed Appellants arguments directed
to each of these rejections. Our decision directed to the obviousness
rejections based upon Jones and Inoue, is dispositive of the Appeal.
Accordingly, we only address these rejections in our decision and we do not
reach the other rejections based upon 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103 (a). See In re Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012)
(Affirmance of rejection of all claims under § 103(a) made it unnecessary to
reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421,
1423 (Fed. Cir. 1984) (Having decided a single dispositive issue, the ITC
was not required to review other matters decided by the presiding officer).
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ISSUES
Appellants argue on pages 25 through 28 of the Appeal Brief that the
Examiner’s rejection of claims 1 through 5, 10 through 13 under 35 U.S.C.
§ 103 based upon Jones and Inoue is in error. These arguments present us
with the issues:
c) Did the Examiner err in finding that the combination of Jones and
Inoue teaches a command signal applied to a fuel cell that sets the
available output power from the fuel cell?
d) Did the Examiner err in finding that the combination of Jones and
Inoue teaches a maximum current draw signal applied to a power
conditioning module that defines the maximum current that can be
drawn from the fuel cell?
e) Did the Examiner err in finding that the combination of Jones and
Inoue teaches the approach and diverge thresholds as recited in
claim 13?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusions with respect to each of the three issues raised.

With respect to the first issue, Appellants argue that Jones teaches a
system that increases or decreases the fuel applied to the fuel cell but not a
load following algorithm. Brief 23, 26. In response the Examiner finds that
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Jones’ controller monitors the current draw and provides a signal to adjust
the fuel flow to match the current. Thus the Examiner reasons that
Jones defines a maximum current that can be drawn from the
fuel cell by setting the amount of reactant supplied to the fuel
cell. For a given amount of reactant, the amount of current that
can be drawn from the fuel cell is limited and the maximum
draw current is set.

Answer 23. We concur, with the Examiner’s reasoning and finding that
Jones teaches a load following algorithm that “defines a command” that sets
the available output power from the fuel cell, as recited in claim 1 and 13.

With respect to the second issue, Appellants argue that Jones is silent
about the controller setting a maximum draw current to the power
conditioning module. Brief 26. Further, Appellants argue that while Inoue
discloses a system that calculates the maximum power available based upon
the fuel available this is not responsive to the system load. Brief 27. We are
not persuaded as the Examiner’s argument does not address the combined
teachings of the references. While neither of the references individually
teaches the load following algorithm as claimed, the Examiner has relied
upon the combined teachings. As discussed above we concur with the
Examiner’s reasonings and findings that Jones teaches a load following
algorithm that sets the available output power from the fuel cell and Inoue
teaches a maximum draw signal sent to the power controlling module.

With respect to the third issue, Appellants argue that Inoue does not
teach the approach and diverge thresholds as recited in claim 13. The
Examiner finds that Jones teaches the approach and diverge thresholds.
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Answer 9, 26. We concur with the Examiner’s finding as it is supported by
ample evidence, see for example para. 0030 and figures 3 and 4. Appellants
have not addressed or challenged the Examiner’s finding.
For the above reasons, Appellants’ arguments directed to the
obviousness rejection under 35 U.S.C. § 103 based upon Jones and Inoue
have not persuaded us of error in the rejection. Accordingly, we sustain the
Examiner’s rejection of 1 through 5, 10 through 13 under 35 U.S.C. § 103.

Rejection of claims 6 through 9, 14 and 15 under 35 U.S.C. § 103
based upon Jones, Inoue and Jung

Appellants argue on page 30 of the Appeal Brief that the Examiner’s
rejection of claims 6 through 9, 14 and 15 based upon Jones, Inoue and Jung
is in error for the same reasons as discussed with respect to the rejection
based upon Jones and Inoue. Further, Appellants argue that the Jung does
not remedy the deficiencies noted in the rejection based upon Jones and
Inoue. As discussed above, Appellants’ arguments directed to the rejection
based upon Jones and Inoue have not persuaded us of error. Accordingly,
we sustain the Examiner’s rejection of claims 6 through 9, 14 and 15 under
35 U.S.C. § 103 based upon Jones, Inoue and Jung for the reasons discussed
above.

DECISION
The decision of the Examiner to reject claims 1 through 15 is
affirmed.
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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

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