Ex Parte Trabold et al

Board of Patent Appeals and Interferences

Jan 10, 2012

12016014 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/016,014 01/17/2008 Thomas A. Trabold GP-305424-FCA-CHE 3468
65798 7590 01/10/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
CHAN, HENG M
ART UNIT PAPER NUMBER
1728
MAIL DATE DELIVERY MODE
01/10/2012 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 THOMAS A. TRABOLD
and STEVEN R. FALTA
________________

Appeal 2010-008425
Application 12/016,014
Technology Center 1700
________________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a fuel cell. Claim 1 is illustrative:

Appeal 2010-008425
Application 12/016,014

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1. A fuel cell comprising:

a membrane; and

a flow field plate positioned proximate to the membrane, said flow
field plate including a plurality of parallel flow channels responsive to a gas
for delivering the gas to the membrane, wherein a number of several of the
flow channels have a predetermined same size and at least one of the flow
channels is a stability channel having a larger size than the predetermined
size.

The References
Cho US 2005/0255364 A1 Nov. 17, 2005
Ohma WO 2005/057697 A2 Jun. 23, 2005
The Rejections
The claims stand rejected as follows: claims 1-3, 5, and 8 under
35 U.S.C. § 102(b) over Ohma, claims 4, 9, 10, 12, 13, 16, and 18 under
35 U.S.C. § 103 over Ohma, claims 6, 7, 14, 15, 19, and 20 under
35 U.S.C. § 103 over Ohma in view of Cho, claims 11 and 17 under
35 U.S.C. § 103 over Ohma in view of the Appellants’ admitted prior art,
and claim 9 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the Appellants regard as the invention.
OPINION
We affirm the rejections under 35 U.S.C. §§ 102(b) and 103 and
reverse the rejection under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 102(b)
The Appellants rely upon the same argument with respect to
independent claim 1 and dependent claim 5, and do not separately address
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Application 12/016,014

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dependent claims 2, 3 and 8 (Br. 8-11). We, therefore, limit our discussion
to one claim among claims 1-3, 5 and 8, i.e., claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2007). That claim requires a flow field plate
having a plurality of parallel flow channels “wherein a number of several of
the flow channels have a predetermined same size and at least one of the
flow channels is a stability channel having a larger size than the
predetermined size.”
Ohma discloses an oxidant gas or fuel gas separator (1b) (which
corresponds to the Appellants’ flow field plate) comprising passages (4b)
(which correspond to the Appellants’ flow channels) (p. 4, ll. 14-19; p. 5,
ll. 20-21). In one embodiment
the width of the passages 4b increases gradually toward the
inside of the cell surface, but the width may be increased in
stages several passages at a time. Further, the reason for
altering the width of the passages 4b is to increase the sectional
area of the passages 4b, and therefore instead of, or in addition
to, altering the width of the passages 4b, the depth of the
passages 4b may be altered. [p. 5, ll. 15-20; Fig. 1b]

The Appellants argue (Br. 10):
As stated by Ohma on page 5, lines 15-17, the width of the
passages 4b are increased in stages, indicating that several
widths are required, and that the changes in passage width must
gradually increase or decrease, whereas Appellant’s claimed
invention only requires that two different widths are used, and
that the configuration of the two widths does not have to be in a
specific orientation, i.e., does not need to gradually increase or
decrease in a given direction. Accordingly, Appellant
respectfully submits that there is a clear structural difference
between Ohma and the claimed invention.

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Ohma’s passages in one stage correspond to the Appellants’ number
of flow channels having a predetermined same size, and Ohma’s larger
passages in another stage correspond to the Appellants’ at least one flow
channel having a larger size than the predetermined size. Due to the
Appellants’ “comprising” transition term, claim 1 does not exclude Ohma’s
other stages. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981).
Accordingly, we affirm the rejection under 35 U.S.C. § 102(b).
Rejections under 35 U.S.C. § 103
Regarding the rejections under 35 U.S.C. § 103 over Ohma and over
Ohma in view of the Appellants’ admitted prior art the Appellants rely upon
the same argument set forth with respect to the rejection of claim 1 under
35 U.S.C. § 102(b) (Br. 11-15, 17-18).
That argument is not persuasive for the reason given above regarding
the rejection of claim 1.
As for the rejection under 35 U.S.C. § 103 over Ohma in view of Cho,
the Appellants argue that “Cho does not provide the teaching missing from
Ohma” with respect to the argued subject matter in claim 1(Br. 16).
As indicated above regarding the rejection of claim 1, there is no such
missing teaching.
The Appellants argue that nothing in Cho “would be capable of
effectively preventing water accumulation and voltage stability at fuel cell
loads at least as low as 0.02 A/cm2” (Br. 17).
That is a claim limitation for which the Examiner relies upon Ohma,
not Cho (Ans. 6).
Thus, we are not persuaded of reversible error in the rejections under
35 U.S.C. § 103.
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Rejection under 35 U.S.C. § 112, second paragraph
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner argues that “low” in claim 9 is indefinite because it “is
not defined by the claim,[1] the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention” (Ans. 3).
The Examiner’s argument that “the specification does not provide a
standard for ascertaining the requisite degree” does not address the
Appellants’ disclosure that “[s]ome flow field plate designs lack voltage
stability at low loads (<0.4 A/cm2). . . .” (Spec. ¶ 0011). That disclosure
appears to indicate that the term “low” circumscribes a particular area with a
reasonable degree of precision and particularity, i.e., less than 0.4 A/cm2,
and the Examiner has not provided evidence or reasoning to the contrary.
Hence, the Examiner has not established a prima facie case of
indefiniteness of the Appellants’ claim 9. We, therefore, reverse the
rejection under 35 U.S.C. § 112, second paragraph.
DECISION/ORDER
The rejections of claims 1-3, 5, and 8 under 35 U.S.C. § 102(b) over
Ohma, claims 4, 9, 10, 12, 13, 16, and 18 under 35 U.S.C. § 103 over Ohma,
claims 6, 7, 14, 15, 19, and 20 under 35 U.S.C. § 103 over Ohma in view of

1 The amendment adding “of less than 0.4 A/cm2” to claim 9 as it is shown
in the appendix to the Appellants’ Brief was not entered by the Examiner
(advisory action mailed Feb. 2, 2010).
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Cho, and claims 11 and 17 under 35 U.S.C. § 103 over Ohma in view of the
Appellants’ admitted prior art are affirmed. The rejection of claim 9 under
35 U.S.C. § 112, second paragraph, is reversed.
It is ordered that the Examiner’s decision 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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