Ex Parte Stute et al

Patent Trial and Appeal Board

Dec 21, 2015

12653731 (P.T.A.B. Dec. 21, 2015)

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.
12/653,731 12/17/2009 Manfred Stute MB 744 7399
27956 7590 12/22/2015
KLAUS J. BACH
4407 TWIN OAKS DRIVE
MURRYSVILLE, PA 15668
EXAMINER
CREPEAU, JONATHAN
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
12/22/2015 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 MANFRED STUTE and SIEGFRIED SUMSER
____________

Appeal 2013-009861
Application 12/653,7311
Technology Center 1700
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a final
decision of the Primary Examiner to reject claims 1–9. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Appellants state that the Real Parties in Interest are the inventors and
Daimler AG (Appeal Brief filed March 12, 2013, hereinafter “App. Br.,” 1).
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BACKGROUND
The subject matter on appeal relates to an “arrangement” (i.e., an
apparatus) for providing a fuel cell with an oxidizing agent (Specification,
hereinafter “Spec.,” 1, ll. 1–7). According to the Appellants, a “principal
object of the present invention to provide a fuel cell system with an
improved operating behavior of the fuel cell by an improved control
capability of the oxidizing agent supply to the fuel cell” (id. at 2, ll. 14–16).
The claimed subject matter is best understood from a review of Figure 1,
which we reproduce as follows:

Figure 1 above is said to show “schematically a[n] arrangement according to
the invention,” wherein supply line 7 supplies oxidizing agent to cathode
chamber 3 of fuel cell 2 via compressor 8 having a branched output 81 that
recirculates oxidizing agent back to the inlet side of compressor 8 via
recirculation valve 19 and line 18, and control unit 23 stored with a
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performance graph (e.g., Fig. 2) controls recirculation valve 19, among other
things (Spec. 6, l. 8–8, l. 19).
Representative claim 1—the sole independent claim on appeal—is
reproduced from page 9 of the Appeal Brief (Claims App.) as follows:
1. An arrangement for providing a fuel cell (2) having a
cathode chamber (3) with an oxidizing agent, comprising a
supply line (7) extending to the cathode chamber (3) of the fuel
cell (2) for supplying an oxidizing agent thereto, a compressor
(8) connected in the supply line (7), a discharge line (13)
extending from the cathode chamber (3) to an expander (11), a
bypass line (14) extending between an output (81) of the
compressor (8) and an input (16) of the discharge line (13)
leading to the expander (11) and bypassing the fuel cell (2). a
first flow control valve (15) arranged in the bypass line (14),
and a recirculation arrangement (17) branching off from the
supply line (7) downstream of the compressor (8) and extending
to the supply line (7) upstream of the compressor (8) for re-
circulating oxidizing agent to the compressor (8), and a control
unit (23) including a performance graph for controlling the
recirculation so as to operate the compressor during fuel cell
idling under pumping conditions based on the performance
graph stored in the control unit (23).

THE REJECTIONS
On pages 2–7 of the Final Office Action mailed October 25, 2012
(hereinafter “Final Act.”), the Examiner rejected the claims under 35 U.S.C.
§ 103(a) as follows:
I. Claims 1, 3, 4, 8, and 9 as unpatentable over Taguma (JP 62-
55421, hereinafter “JP ’421”);2 and
II. Claims 2 and 5–7 as unpatentable over JP ’421 in view of Stute

2 Our citations to this reference are to the English language translation
attached to the Appeal Brief (Evid. App.) and the page numbers at the
bottom center of each page.
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et al. (US 2003/0232231 A1 published December 18, 2003,
hereinafter “Stute”).
On pages 2–9 of the Examiner’s Answer mailed May 22, 2013
(hereinafter “Ans.”), the Examiner indicated that the rejections set forth in
the Final Office Action are maintained and further entered two new grounds
of rejection under 35 U.S.C. § 103(a) as follows:
III. Claims 1, 3, 4, 8, and 9 as unpatentable over JP ’421 in view of
Pospichal et al. (US 2005/0164057 A1 published July 28, 2005,
hereinafter “Pospichal”); and
IV. Claims 2 and 5–7 as unpatentable over JP ’421, Pospichal, and
Stute.3

DISCUSSION
Although the Examiner cited an additional reference (Pospichal) in
support of two new grounds of rejection (Rejections III and IV) in the
Answer, the Appellants rely on the same or substantially the same arguments
against the new grounds as are offered in the Appeal Brief against
Rejections I and II (compare App. Br. 4–8, with Reply Br. 1–3).
Furthermore, the Appellants do not provide any argument in support of the
separate patentability of any of dependent claims 2–9 pursuant to the
requirements of 37 C.F.R. § 41.37(c)(1)(iv). Therefore, we confine our
discussion to claim 1, and our ruling on claim 1 controls our decision as to
all claims subject to the four rejections.

3 In reply to the Answer including the new grounds of rejection, the
Appellants filed a Reply Brief on July 19, 2013 (hereinafter “Reply Br.”).
Therefore, the Appellants maintained the appeal pursuant to 37 C.F.R.
§ 41.39(b)(2).
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The Examiner found, inter alia, that JP ’421 describes a fuel cell
system (1) in which a compressor (2b) is connected to a supply line (8) for
supplying oxidizing agent to a cathode chamber of the fuel cell system (1)
(Final Act. 2) (citing JP ’421, Abst. and Fig. 1). In addition, the Examiner
found that JP ’421 discloses a bypass line (13) (with on-off valve (14)),
which constitutes “a recirculation arrangement . . . branching off the supply
line downstream of the compressor and extending to the line upstream of the
compressor” (id.). Specifically, the Examiner explained (id. at 3):
In particular, if valve 7 is closed and valve 4 is opened, and if
the compressor (2) is operating, the branched passage 13 would
at least be capable of recirculating the compressed air to the
compressor. Therefore, it is seen that the structure of the
reference is capable of performing the function recited in claim
1 [“for re-circulating oxidizing agent to the compressor”].
Regarding the control unit limitations of claim 1, the Examiner found that
“[s]uch control units are known in the art for automating various processes
associated with the fuel cell, including reactant supply” (id.).4 Based on
these findings, the Examiner concluded that the subject matter of claim 1
“would have been obvious to one of ordinary skill in the art . . . because all
the claimed elements were known in the prior art and one skilled in the art
could have combined the elements as claimed by known methods with no
change in their respective functions and the combination would have yielded
predictable results . . . .” (Final Act. 3).

4 In the Answer, the Examiner relied on Pospichal to show that a “controller
contains a performance graph which relates the discharge pressure of the
compressor (i.e., compressor speed) to the mass flow of air therethrough,
and controls a valve (24) or the compressor in response to a measured
parameter” (Ans. 3) (citing Pospichal, Fig. 1 and ¶ 22).
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The Appellants contend that, contrary to the Examiner’s findings, JP
’421 does not describe a compressed air recirculation arrangement but rather
a bypass arrangement (App. Br. 6–7). According to the Appellants, “it is
never suggested that the valve 4 [in JP ’421] could be open to allow air flow
in a direction from the compressor outlet to the compressor inlet” and that,
as shown in Figure 2 of JP ’421, the valve (20) in the bypass line is a check
valve that prevents a reverse flow from air supply pipe (8) at the outlet of the
compressor (2b) to the air supply pipe (3) at the inlet side of the compressor
(2b) (id. at 7). Furthermore, the Appellants argue that “[i]n any case, claim
1 as on file defines also a control unit (23) including a performance graph
(that is, it is programmed) for controlling the recirculation so as to operate
the compressor during fuel cell idling under pumping conditions based on
the performance graph” (id.).
The Appellants’ arguments do not identify a reversible error in the
Examiner’s rejection of claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (“[E]ven assuming that the examiner had failed to make a prima facie
case, the Board would not have erred in framing the issue as one of
‘reversible error.’”).
The Appellants are correct in their argument (App. Br. 7) that valve
(20) as shown in JP ’421’s Figure 2 is a check valve that “prevent[s] a
reverse flow from air supply pipe (8) at the outlet side of compressor (2b) to
air supply pipe (3) at the inlet side of compressor (2b)” (JP ’421 at 15, ll. 7–
12). But as found by the Examiner (Ans. 6), on-off valve (14) in JP ’421’s
Figure 1—unlike check valve (2) of Figure 2—is a two-way valve that must
be closed manually to prevent reverse flow from air supply pipe (8) at the
outlet side of compressor (2b) to air supply pipe (3) at the inlet side of
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compressor (2b) (JP ’421 at 10, ll. 11–12; id. at 15, ll. 3–4, 12–18). Thus,
consistent with the Examiner’s explanation (Ans. 7), when valves (4) and
(14) are open as the system is started using start-up compressor (5), at least
some high pressure air from the outlet of compressor (2b) would necessarily
flow back through valve (14) due to the pressure differential between the
outlet of compressor (2b) and the air supply pipe (3) (JP ’421 at 14, l. 8–15,
l. 2). Giving the term “re-circulating” or “recirculation” its broadest
reasonable interpretation consistent with the Specification, we find that the
reverse flow of compressed air from compressor (2b) through valve (14) in
JP ’421, however small in amount or short in duration, constitutes “re-
circulating” or “recirculation,” as required by claim 1. In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (“[T]his court counsels the PTO to avoid the
temptation to limit broad claim terms solely on the basis of specification
passages.”).
As for the “control unit (23)” limitations of claim 1, it has long been
held that “[a] patent applicant is free to recite features of an apparatus either
structurally or functionally . . . Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Indeed, unless the claim language is
plainly drafted to invoke the strictures of 35 U.S.C. § 112, ¶ 6,
“‘[f]unctional’ terminology may render a claim quite broad” and “[b]y its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971).
Applying these principles, we find that the “control unit (23)” of claim
1 is not limited by any particular “performance” and is recited broadly to
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cover any operation—for any duration—of “the compressor during fuel cell
idling under pumping conditions” of any “performance graph stored in the
control unit (23).” In this regard, we emphasize that the mere recitation of a
“performance graph” (i.e., printed matter) cannot serve as a basis for
patentability. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Here, the Appellants do not dispute the Examiner’s determination,
Final Act. 3, that a person of ordinary skill in the art would have been
prompted to provide a control unit in JP ’421 to automatically control the
reactant supply to the fuel cell (e.g., compressed air supply), including the
operation of on-off valve (14) to effect fuel cell operation. Indeed, the
Appellants appear to admit as much (Reply Br. 2) (“Of course, the use of
performance graphs or maps which cover the operating performance range
of apparatus generally is well-known in modern control systems.”).
Therefore, under the correct claim construction discussed above, we discern
no error in the Examiner’s finding that the provision of a controller for
automatically controlling the reactant supply (e.g., air supply) to the JP
’421’s fuel cell satisfies the “control unit (23)” limitations of claim 1. When
implemented in JP ’421, the control unit would control valve (14), thereby
controlling reverse flow (i.e., “recirculation”) of compressed air through
valve (14) during the start-up operation of the fuel cell (JP ’421 at 14, l. 8–
15, l. 2).
For these reasons, we uphold the Examiner’s rejections of claim 1.

SUMMARY
Rejections I–IV are affirmed. Therefore, the Examiner’s decision to
reject claims 1–9 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).

AFFIRMED

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