Ex Parte Tomimatsu et al

Patent Trial and Appeal Board

Apr 13, 2017

12054845 (P.T.A.B. Apr. 13, 2017)

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.
12/054,845 03/25/2008 Norihiro TOMIMATSU 324315US2SRD 6798
22850 7590 04/17/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SLIFKA, SARAH A
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
04/17/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIHIRO TOMIMATSU,
MASATO AKITA, and RYOSUKE YAGI
Appeal 2015-002628
Application 12/054,8451
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
N. WHITNEY WILSON, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—12. We have jurisdiction under 35 U.S.C. § 6.
1 The real party in interest is KABUSHIKI KAISHA TOSHIBA.
App. Br. 1.
Appeal 2015-002628
Application 12/054,845
Appellants’ invention is generally directed to a fuel cell apparatus,
which comprises: a fuel cell generating electric power and a control unit
having a load control portion configured to control a load applied to the fuel
cell. Spec. 5. Claim 1 illustrates the subject matter on appeal and is
reproduced from the Appeal Brief below:
1. A fuel cell apparatus, comprising:
a fuel cell generating electric power, including
an electrolyte membrane,
a fuel electrode which includes an anode catalyst, which is
disposed in one side of the electrolyte membrane, which is
supplied with liquid fuel, and which discharges gas
generated by a chemical reaction accelerated by the anode
catalyst, and
an oxidizing agent electrode which includes a cathode
catalyst, which is disposed in the other side of the electrolyte
membrane, and which is supplied with air; and
a control unit having a load control portion configured to
control a load applied to the fuel cell and a timer portion
connected to the load control portion for measuring a period
of operation of the fuel cell and measuring predetermined
time intervals, the control unit configured to increase the
load using the load control portion in at least one of two
cases, one case being when electric power generated by the
fuel cell falls below a predetermined reference value and
another case being at predetermined time intervals
measured by the timer, and configured to stop the increase
of the load after elapse of a predetermined time period from
the start of the increase of the load measured by the timer
portion.
2
Appeal 2015-002628
Application 12/054,845
Appellants (see App. Br., generally) requests review of the rejection
of claims 1—12 are rejected under 35 U.S.C. § 103(a) as obvious over Sakai
et al. (U.S. 2004/0009381 Al, published Jan. 15, 2004) (“Sakai”).2
OPINION3
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible error in the
Examiner’s determination that the applied prior art would have rendered the
subject matter recited in claims 1—12 obvious to one of ordinary skill in the
art within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s § 103(a) rejection of the above claims for the reasons set forth in
the Final Action and the Answer. We add the following.
A complete statement of the rejection appears on pages 5—11 of the
Final Office Action. The Examiner found Sakai describes a direct methanol
fuel cell system comprising an electrical controller and measuring devices.
Final Act. 5—6. The Examiner found Sakai describes the load supplied to the
system depends on the measurement of the voltage, current and time
interval. Final Act. 6; Sakai Tflf 12—13, 82—83, and 92. The Examiner
determined that a person of ordinary skill in the art would have been capable
2 The Examiner has withdrawn the rejection of claims 1—13 under 35 U.S.C.
§ 102(b) and the rejection of claims 1—12 under 35 U.S.C. § 112, second
paragraph. Ans. 2.
3 Appellants present their substantive arguments addressing independent
claim 1. We limit our discussion to independent claim 1 as representative of
the subject matter on appeal.
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Appeal 2015-002628
Application 12/054,845
of operating Sakai’s controller and measuring devices to perform the control
operations required by the claimed invention. Final Act. 6.
Appellants argue there are significant differences between the control
unit of Sakai and the control unit of the claimed invention. Appellants argue
the control unit of the claimed invention operates to increase the efficiency
of fuel cell by generating electric power at a constant rate by varying the
load generated for a specific period of time. App. Br. 7—8. Appellants argue
there is no evidence that would suggest the controller of Sakai could have
been modified—i.e., programmed—to operate as specified by claim 1
resulting in increased fuel cell efficiency. App. Br. 8. Appellants
specifically state
an operator cannot program the controller of Sakai et al. to
perform the functions of the control unit of claims 1-12 since
the knowledge to do so does not exist in the prior art. The
operator needs to know exactly how to program the functions.
Simply being able to program a controller, without knowing
what to program, leaves an operator incapable of obtaining the
control unit of claims 1-12.
App. Br. 8.
Appellants’ arguments are not persuasive of reversible error. It is not
disputed that Sakai describes a fuel cell system comprising electrical devices
for measuring the current (load) and time interval and a controller for their
operation. Appellants argue Sakai’s controller is not configured to operate
as required by the claimed invention and there is no suggestion for person of
ordinary skill in the art to perform this programming. Reply Br. 4—6.
Appellants further argue the Specification’s Figure 4 is a sufficient
description of what is necessary for a person of ordinary skill in the art to
program the controller to operate as required by claim 1. Reply Br. 6.
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Appeal 2015-002628
Application 12/054,845
Appellants have failed to establish a patentable distinction between the
programming necessary for operation of the devices for measuring the
current (load) and time interval as required by Sakai and the claimed
invention. As pointed out by the Examiner, Sakai —Figure 5 and
paragraphs 86—92—describes increasing the electrical current and measuring
the time interval. Appellants have not explained how the descriptions of
Specification Figure 4 results in a patently distinct controller. Sakai
discloses the controller comprises a voltage regulator that adjusts the voltage
supplied to the fuel cell system. Sakai Tflf 77, 92. Appellants argue “the
specification provides support for a controller programmed as able to
perform the operations in the flowchart of Figure 4.” Reply Br. 6.
However, Appellants have failed to explain how the descriptions appearing
in Figure 4 would have resulted in a program that is patently distinct from
the program resulting from the descriptions of Sakai. In other words,
Appellants have not adequately explained how the descriptions of the
control unit in the present Specification would have resulted in a
programmed control unit that controls a load applied to the fuel cell based on
voltage output and time would not have been obvious to a person of ordinary
skill in the art based on Sakai’s disclosure which describes controlling the
load applied to the fuel cell based on voltage output and time. Appellants in
the Specification have failed to adequately describe the instructions—
necessary for operation of the control unit—in such detail that would have
distinguished the claimed invention from the control unit that would have
resulted from a person of ordinary skill in the art reasonably following the
descriptions of Sakai for the control unit.
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Appeal 2015-002628
Application 12/054,845
Based on our consideration of the totality of the record before us, and
having evaluated the obviousness rejection in view of Appellants’ arguments
and evidence, we conclude that the preponderance of evidence weighs in
favor of the obviousness of the claimed subject matter within the meaning of
§ 103. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
CONCLUSION
The obviousness rejection under 35 U.S.C. § 103(a) is 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).
AFFIRMED
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