Ex Parte Yu et alDownload PDFPatent Trial and Appeal BoardJun 28, 201611463622 (P.T.A.B. Jun. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111463,622 08/10/2006 65798 7590 06/29/2016 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD A VENUE SUITE 300 BLOOMFIELD HILLS, MI 48304 FIRST NAMED INVENTOR Paul Taichiang Yu 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 ATTORNEY DOCKET NO. CONFIRMATION NO. GP-306112-GAPR-CHE 7245 EXAMINER Y ANCHUK, STEPHEN J ART UNIT PAPER NUMBER 1723 MAILDATE DELIVERY MODE 06/29/2016 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 PAUL TAI CHIANG YU, and FREDERICK T. WAGNER Appeal2014-003636 Application 11/463,622 Technology Center 1700 Before BEYERL YA. FRANKLIN, MARK NAGUMO, and N. WHITNEY WILSON, Administrative Patent Judges. Opinion for the Board by FRANKLIN, Administrative Patent Judge. Opinion dissenting by NAGUMO, Administrative Patent Judge. FRANKLIN, Administrative Patent Judge DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-9 and 11. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). Appeal2014-003636 Application 11/463,622 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A fuel cell system comprising: a fuel cell stack including an anode side and a cathode side; a compressor for providing an air flow to the cathode side of the fuel cell stack; a hydrogen source for providing hydrogen gas to the anode side of the fuel cell stack; a first switch for connecting power from the stack to a primary load; a second switch for connecting power from the stack to an auxiliary load; a third switch for connecting power from the stack to a shortirn.! resistor that dissinates stack outnut nower: '-' _._ _._ _._ / a cross-over valve for providing the air flow from the compressor to the anode side of the stack; a re-circulation line for re-circulating cathode exhaust gas to the cathode side of the stack; a bleed valve for selectively bleeding hydrogen gas into the re-circulating line; and a controller programmed to control the system at start- up and shut-down, wherein the controller opens the first switch and closes the second switch to disconnect the first primary load and couple an output of the stack to the auxiliary load when the stack output voltage is reduced to a first predetermined range, re-circulates the cathode exhaust gas through the re-circulation line, bleeds a predetermined 2 Appeal2014-003636 Application 11/463,622 concentration of hydrogen gas into the re-circulation line, and uses the cross-over valve to purge the anode side of the stack with air at shut-down, and wherein the controller re- circulates the cathode exhaust gas through the re-circulation line, bleeds hydrogen gas into the re-circulation line until the stack voltage decreases to a second predetermined range and closes the third switch to short-circuit the stack at start-up. The Examiner relies on the following prior art references as evidence of unpatentabili ty: Margiott et al. US 2005/0031917 A 1 Feb. 10,2005 (hereafter "Margiott") Limbeck et al. US 2007 /0231623 A 1 Oct. 4, 2007 (hereafter "Limbeck") Zhang et al. US 2007/0154743 Al July 5, 2007 (hereafter "Zhang") THE REJECTIONS 1 1. Claims 1-9, 11 are rejected under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite. 2. Claims 1-9, 11 are rejected under 35 U.S.C §103(a) as being obvious over Margiott and further in view of Limbeck and Zhang. ANALYSIS We reverse the rejections substantially for the reasons in the record provided by Appellants, and add the following. 1 The Examiner has withdrawn the rejection of claims 1-9, and 11 under 35 U.S.C. § 112, first paragraph (written description). Ans. 5. 3 Appeal2014-003636 Application 11/463,622 Rejection 1 Rejection 1 is a new rejection that is set forth on pages 2--4 of the Answer. In essence, it is the Examiner's positon that the claim is directed to a machine, and therefore the limitations recited after the "controller programmed to" language, are indefinite because the recited limitations involve non-structural elements. It is Appellants position that there is nothing inadequate about claiming a controller and its associated manner of performing. Reply Br. 2- 3. Appellants also argue that the Examiner is ignoring the claim language as a whole in making the rejection. Id. We agree, and note that the relevant limitation is "controller programed to control ... ", and, it has been the law that a programmed general purpose computer is a 'new machine'. In re Alappat, 33 F.3d 1526, 1541 (Fed. Cir.1994) (en bane) ("We have held that such programming creates a new machine, because a general purpose ~ • (""("" ~ 1 • 1 ~ • ~ • compmer m eneci oecomes a specrn1 purpose compmer once n is programmed to perform particular functions pursuant to instructions from programmed software.") (citations omitted). Also, the idea that non- structural elements (e.g., the manner in which a controller performs) in a claim directed to a system (machine) are per se indefinite is incorrect. Without more, we cannot agree with the Examiner's determination. In view of the above, we reverse Rejection 1. 4 Appeal2014-003636 Application 11/463,622 Rejection 2 At issue in this rejection is whether the fuel system of Margiott teaches the claimed element of "a bleed valve for selectively bleeding hydrogen gas into the re- circulating line". It is Appellants position that Margiott does not teach this claim element (contrary to the Examiner's position) for the reasons expressed on page 13 of the Appeal Brief and on pages 3--4 of the Reply Brief. The Examiner's rejection is set forth on pages 3-6 of the Final Office Action. On page 3 of the Final Office Action, the Examiner finds that Margiott teaches a bleed valve for bleeding hydrogen gas into the recirculation line, but the Examiner does not point to a specific teaching (e.g., an item number for this bleed valve) in support thereof. In response to Appellants' aforementioned stated positon, the Examiner, for the first time, provides an annotated version ofMargiotts' Figure in an effort to support the finding that l'vfargiott teaches a bleed valve for bleeding hydrogen gas into the recirculation line (74). Ans.7. In so doing, the Examiner states: [the, sic] Examiner maintains that the cross over valve [ 64] is in connection with the cathode recycle line. The rationalization utilized is that an element A can be "connected" to an element C even if there is an element B therebetween where an element A is not "directly connected" to an C in the same situation. In the prior art, the two structural elements are in fluid communication with each other and therefore interpreted to be "connected" to each other. Appellants' Figure 1 shows that bleed valve 84 serves to bleed hydrogen gas (from source 24) into re-circulating line 82, and shows how 5 Appeal2014-003636 Application 11/463,622 bleed valve 84 is positioned with respect to re-circulating line 82. Spec. Fig.I. Margiott teaches that hydrogen transfer valve 64 (when open) permits hydrogen fuel to pass from the anode flow path 24 into the cathode flow path 38. Margiott, para. [0036]. We agree with Appellants that this is not a teaching of a bleed valve for bleeding hydrogen gas into the recirculation line (74) ofMargiott. The Examiner's explanation (quoted, supra) that element A is deemed connected to element C inadequately supports the Examiner's position that Margiott teaches that hydrogen transfer valve 64 bleeds hydrogen gas into recirculation line 74 because (1) Margiott teaches that hydrogen transfer valve 64 permits hydrogen fuel to pass from the anode flow path 24 into the cathode flow path 3 8 [which is not into recirculation line 74], and (2) the arrangement depicted in Appellants' Figure 1 regarding how bleed valve 84 serves to bleed hydrogen gas into • 1 ~. 1. {")!""\ • ~ ~ 11 1 • .... ~ .. ~1 ~ 1 • ~ 1 recircurnnon nne l'SL is suucmrauy mnerem rrom me arrangemem aep1c1ea in Margiott's Figure.2 As such, we agree with Appellants' position that the Examiner has not demonstrated that Margiott teaches this claim element (Appeal Br. 12-13), and therefore also agree with Appellants that the Examiner has failed to adequately show that Margiott's system is capable of performing the stated function (Id.). The Examiner does not rely upon the applied secondary references to cure this stated deficiency of Margiott (Final Act. 3-5). In view of the above, we therefore reverse Rejection 2. 2 Appellants' Figure 1 shows that bleed valve 84 is physically attached to recirculation line 74 whereas Margiott's Figure shows that hydrogen transfer valve 64 is physically attached to cathode flow path 38. 6 Appeal2014-003636 Application 11/463,622 DECISION Each rejection is reversed. ORDER REVERSED 7 Appeal2014-003636 Application 11/463,622 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL TAI CHIANG YU, and FREDERICK T. WAGNER Appeal2014-003636 Application 11/463,622 Technology Center 1700 NAGUMO, Administrative Patent Judge, dissenting. While I concur with the reversal of the rejection for indefiniteness, I respectfully dissent from the reversal of the rejection for obviousness. Appellants have not directed our attention to a clear definition of the term "re-circulation line for re-circulating cathode exhaust gas to the cathode side of the stack" that limits the "re-circulation line" to first recycle line 70 and second recycle line 74 in Margiott, Fig. 1, shown on the following page. In my view, on the present record, the broadest reasonable interpretation of the plain language of the term is purely functional: a re-circulating line is a line that carries exhaust gas back to the chamber whence the gas was exhausted. Cathode oxidant line 62, when valve 72 in first re-cycle line 70 is open, performs that function. Put another way, there is no definition, 8 Appeal2014-003636 Application 11/463,622 structural or otherwise, of the term "re-circulating line" that excludes line 62 between the junction of line 70 with line 62 and cathode flow field 28 of fuel cell 12. Margiott describes valve 64 in a line that connects anode fuel line 55, which fluidly connects hydrogen reservoir 54 to anode flow field 28 of fuel cell 12, to line 62, which fluidly connects oxygen reservoir 58 to cathode flow field 42 of fuel cell 12. Cathode recycle lines 70 and 74 connect to line 62. The language Margiott uses to describe the "hydrogen transfer means" is open and permissive: "[t]he hydrogen transfer means may be a hydrogen transfer valve 64 secured in fluid communication between the anode flow path 24 and the cathode flow path 38, such as between the anode inlet 26 and the cathode inlet 40" (emphasis added (Margiott 3 [0024]). Margiott Fig. 1 is shown below. 70 9 Appeal2014-003636 Application 11/463,622 There appears to be no reason (other than draughting convenience) for the position of the junction of the second cathode re-cycle line 74 with line 62. Moreover, Margiott describes an alternative hydrogen transfer means in the form of an electrochemical hydrogen pump that operates "by passing a direct current through the fuel cell in a manner known in the art." Thus Margiott is not very particular about where or how the hydrogen transfer is done. Appellants do not describe the connection of bleed valve 84, which connects hydrogen reservoir 24 to cathode re-circulation line 82, in very particular terms either. Specification Fig. 1 is shown below. 72 CONTROLLER 50 16 32 FIGURE 1 24 {Specification Fig. 1 shows an embodiment of inventive fuel cell system 10, with hydrogen bleed valve 84 connecting hydrogen reservoir 24 (right) to re-circulation line 82( dashed line); emphasis added} 10 Appeal2014-003636 Application 11/463,622 The '622 Specification reveals that "[t]here are several techniques for bleeding hydrogen into the cathode side of a fuel cell stack at system shut- down that are known in the art." (Spec. 1 [0016], last sentence.) The "structural difference" found by the Majority (Op. 6) is not, in my view, reflected in any limitation recited in the claims, and thus is not a basis on which the claimed fuel cell can be distinguished from what would have been obvious in view of the applied prior art. I conclude that Appellants have not shown harmful error in the Examiner's findings regarding Margiott. On the present record, I would affirm the rejection for obviousness, and I dissent, with respect. 11 Copy with citationCopy as parenthetical citation