11719588 (P.T.A.B. Jul. 25, 2013)

Ex Parte Taniguchi et al

Patent Trial and Appeal BoardJul 25, 2013

11719588 (P.T.A.B. Jul. 25, 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. 11/719,588 05/17/2007 Ikuhiro Taniguchi 040302-0659 9116 22428 7590 07/25/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER THOMAS, BRENT C ART UNIT PAPER NUMBER 1724 MAIL DATE DELIVERY MODE 07/25/2013 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 IKUHIRO TANIGUCHI and KEISUKE SUZUKI __________ Appeal 2012-002171 Application 11/719,588 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002171 Application 11/719,588 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 5, 6, 8, 10, and 12 under 35 U.S.C. § 102(b), as being anticipated by Okura (JP 2003-109637, published November 4, 2003, as translated). We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative of the claimed subject matter: 1. An output limiting device for a fuel cell which is cooled by a coolant supplied thereto, comprising: an inlet coolant temperature sensor which detects an inlet coolant temperature at a coolant inlet of the fuel cell; an outlet coolant temperature sensor which detects an outlet coolant temperature at a coolant outlet of the fuel cell; and an output limiter which limits power or current extracted from the fuel cell according to the detected inlet coolant temperature and the detected outlet coolant temperature, wherein the output limiter comprises: an output limiting value calculation unit configured to calculate an output limiting value as a limiting value of the power or current according to the inlet coolant temperature; an output limiting value correction unit configured to correct the output limiting value to be smaller, as a deviation obtained by subtracting a target temperature limit at the coolant outlet of the fuel cell from the outlet coolant temperature becomes larger; and a limiting unit configured to limit the power or current extracted from the fuel cell, based on the corrected output limiting value. ISSUE Did the Examiner reversibly err in finding that Okura’s control unit is identically structured to the “output limiter” as recited in claim 1 such that it would have been capable of performing all of the functions listed in claim 1? We decide this issue in the affirmative. Appeal 2012-002171 Application 11/719,588 3 ANALYSIS After review of the respective positions provided by Appellants and the Examiner, we agree with Appellants that the Examiner has not met the burden of establishing anticipation in this case for the reasons stated by Appellants in their Briefs. We add the following for emphasis. The Examiner dismisses the claim limitation “configured to” as language that does not add any structure to the “output limiter” elements of claim 1 (Ans. 5, 6). We disagree. Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the output limiter must possess the necessary structure, hardware or software, for example, the programming, to function as claimed. The Examiner indeed de facto admits that Okura is not programmed or otherwise structured to function as claimed, and the Examiner does not rely upon any reasoning why one of ordinary skill in the art would have been motivated to have configured the output limiter to function as claimed (see generally Ans.). The Examiner’s analysis appears to be based upon a finding that Okura’s control unit would have been capable of performing the claimed functions upon further modification, such as the installation of software (Ans. 5, 6). While it might be possible to install software and/or hardware that would allow Okura’s to perform the functions of the output limiter as Appeal 2012-002171 Application 11/719,588 4 required in claim 1 , the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller”, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the case here. A preponderance of the evidence supports Appellants’ arguments that their output limiter requires structure that is not identically disclosed in Okura to perform the functions recited in claim 1 (App. Br. 10, 11; Reply Br. 1-4). As the Examiner has not established that Okura’s apparatus is structurally identical to the claimed apparatus, we reverse the Examiner’s § 102(b) rejection. DECISION The Examiner’s decision is reversed. ORDER REVERSED Appeal 2012-002171 Application 11/719,588 5 tc