Ex Parte Abd Elhamid et al

Patent Trial and Appeal Board

Sep 17, 2012

11286603 (P.T.A.B. Sep. 17, 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.
11/286,603 11/23/2005 Mahmoud H. Abd Elhamid GP-306481 2332
65798 7590 09/17/2012
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 200
BLOOMFIELD HILLS, MI 48304
EXAMINER
BARROW, AMANDA J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
09/17/2012 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MAHMOUD H. ABD ELHAMID,
Gayatri Vyas, and Youssef M. Mikhail
________________

Appeal 2011-002558
Application 11/286,603
Technology Center 1700
________________

Before BEVERLY A. FRANKLIN, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/286,603

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A. Introduction1
Appellants Mahmoud H. Abd Elhamid, Gayatri Vyas, and
Youssef M. Mikhail (“Elhamid”) timely appeal under 35 U.S.C. § 134(a)
from the rejection2 of claims 1-14, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, but enter a new
ground of rejection for dependent claims 5 and 14.
The subject matter on appeal relates to a fuel cell system. A fuel cell
is a device that converts the chemical energy from a fuel (e.g., hydrogen)
into electricity through a chemical reaction with an oxidant (e.g., oxygen).
There are many types of fuel cells (e.g., the proton exchange membrane fuel
cell used by Elhamid), but each contains an anode, a cathode, and an
electrolyte (e.g., a solid polymer or an aqueous solution) that allows charges
to move between the two sides of the fuel cell.

1 Application 11/286,603; filed 23 November 2005. The specification is
referred to as the “603 Specification” and is cited as “Spec.” The real party
in interest is General Motors Corporation. (Appeal Brief, filed 24 June 2010
(“Br.”), 3).
2 Office action mailed 14 April 2010 (“Office Action”; cited as “OA”).
Each claim on appeal has been twice-rejected.
We note that claims 5 and 14 stand objected for containing
trademarks. Examiner’s Answer, mailed 14 September 2010 (“Ans.”).
Elhamid submitted a petition on 23 June 2010 to challenge the objection to
claims 5 and 14. (Br. 4.) Petitions submitted under 37 C.F.R. § 1.181(a)(1)
are decided by a Technology Center Director. On 1 September 2010, a
Director of Technology Center 1700 dismissed Elhamid’s petition.
We have no jurisdiction over the Examiner’s objection to claims 5
and 14. See, however, the new ground of rejection.
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Proton exchange membrane fuel cells (PEMFC) are popular fuel cells
for vehicles. (Spec. 1.) A PEMFC uses hydrogen gas as fuel. (Id.) The
hydrogen fuel is fed continuously to the anode where it is decomposed into
positive ions (protons) and negative ions (electrons). (Id. at 2.) A PEMFC
contains a solid polymer electrolyte membrane that permits only the protons
to flow from the anode to the cathode, whereas the membrane acts as an
insulator for electrons. (Id.) Oxygen air is fed continuously to the cathode
and reacts with the positive ions produced by the anode, resulting in the
production of water and heat. (Id.)
The membranes within a PEMFC require a certain relative humidity
so that the ionic resistance across the membrane is low enough to conduct
protons effectively. (Id. at 3.) Humidifiers may be used to humidify the air
flowing to the cathode and the hydrogen fuel flowing to the anode.
(Id. at 4-5.) During the operation of a PEMFC, moisture from the reaction
and the humidifiers may enter the anode and cathode flow channels and if
enough water accumulates then droplets form. (Id. at 3.) If the droplets
grow too large they can block the flow of hydrogen fuel and the PEMFC
will no longer generate electricity. (Id. at 4.)
When a surface active agent (e.g., ethanol) is added to a PEMFC
system, the surface tension of the water is reduced. (Id. at 6-7.) This
permits any droplets of water to be wicked away with less force than is
needed to purge an untreated system of droplets with a high flow of
hydrogen gas. (Id. at 4.) Alternatively, the humidification may be reduced.
However, below some relative humidity in the system, a PEMFC may
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Application 11/286,603

4
develop ionic resistance and its membrane’s life and durability are
diminished. (Id.)
The claimed invention is drawn to fuel cell system that utilizes a
surface active agent, such as ethanol or a detergent, which is mixed with
water inside of the cathode side humidifier and inside the anode side
humidifier.
Representative claim 1 reads:
1. A fuel cell system comprising:
a fuel cell stack including a cathode side and an anode side;
a compressor providing a compressed airflow to the cathode
side of the fuel cell stack;
a cathode side humidifier receiving the airflow from the
compressor,
said cathode side humidifier humidifying the cathode
airflow; and
a source of a surface active agent for providing the surface
active agent to the cathode side humidifier,
said surface active agent being mixed with water in the
cathode side humidifier so that the surface active agent
reduces the surface tension of water within flow field
channels on the cathode side of the stack.
(Claims Appx., Br. 21, paragraphing, indentation, and emphasis added.)
The Examiner maintains the following grounds of rejection:
A. Claims 1, 3, 7, 9, and 11 stand rejected under 35 U.S.C. § 102
over Masayoshi.3
B. Claims 2 and 10 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Masayoshi and Curzon.4

3 JP 2001-135338 (18 May 2001) (Ans. at 4-7).
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Application 11/286,603

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C. Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Masayoshi and Yeadon.5
D. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Masayoshi and Putt.6
E. Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Masayoshi, Tada7 and
Tanaka.8
F. Claim 8 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Masayoshi and Hasei.9
G. Claims 4 and 13 stand rejected under 35 U.S.C. §112, ¶ 2 for
indefiniteness of the phrase “polymer based hyper-branched
surface active agent.”10
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejections A-F, anticipation and obviousness in view of Masayoshi
A reference is anticipatory under 35 U.S.C. § 102 if it discloses each
and every element of the claimed invention, either explicitly or inherently,

4 US 2004/0173783 A1 (9 September 2004) (Ans. at 8).
5 US 2005/0250730 A1 (10 November 2005) (Ans. at 8-9).
6 US 6,443,258 B1 (3 September 2002) (Ans. at 9-10).
7 US 2004/0219420 A1 (4 November 2004) (Ans. at 10-11).
8 US 2005/0189035 A1 (1 September 2005) (Ans. at 10-11).
9 US 2005/0175784 A1 (11 August 2005) (Ans. at 11).
10 Ans. at 4.
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Application 11/286,603

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source 82 will deliver a surface active agent to the humidifier 78. Inside
humidifier 78, the surface active agent is mixed with water and the resulting
mixture acts to humidify the hydrogen gas before it flows out of the
humidifier 78 via flow channel 76 to the anode side of the fuel cell stack 62.
(Id. at 5-6.)
Regarding claim 1, the Examiner finds that Masayoshi discloses a fuel
cell system that includes the required four claim elements (a fuel cell stack, a
compressor, a cathode side humidifier, and a source of surface active agent).
(Ans. 4-6.) Masayoshi discloses the fuel cell system 15, which contains the
fuel cell stack 10, the compressed air blower 41, the cathode side
humidifier 43, and the “addition part” 45, which comprises a source of
surface active agent 94 and an injector 92. (Id. at 4-5.) The fuel cell
system 15 also contains the hydrogen gas source 40, the anode side
humidifier 42, and the “addition part” 42, which comprises a source of
surface active agent 93 and an injector 91. (Id.)
The Examiner finds that ethanol is a surface active agent within the
scope of representative claim 1. (Id. at 5.)
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Application 11/286,603

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The fuel cell system described in Masayoshi is exemplified in
Figure 1 (reproduced below).11

{Masayoshi Fig. 1 shows a fuel cell with humidifiers}
As shown in Figure 1, Masayoshi’s fuel cell system delivers oxygen
(air) from the blower 41 to the cathode side humidifier 43 and hydrogen gas
from the source 95 to the anode side humidifier 42. During operation, the
air is humidified inside of the cathode side humidifier 43 and then travels via
flow channel line 47 to the cathode side of the fuel cell stack 10. The
hydrogen gas is humidified inside the anode side humidifier 42 and travels
via flow channel line 46 to the anode side of the fuel cell stack 10.

11 The fuel cell stack is labeled 10 in Figure 1 and 12 in Figure 2.
(Masayoshi 12.) The Examiner refers to the fuel cell stack 12 (e.g., Ans. 4.)
We refer only to fuel cell stack 10.
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Figure 1 also illustrates that the addition part 45, which contains the
ethanol reservoir 94 and the injector 92, will permit a system operator to mix
ethanol into the humidified air flowing through channel 47. Corresponding
addition part 44, which contains the ethanol reservoir 93 and the injector 91,
will permit a system operator to mix ethanol into the humidified hydrogen
gas flowing through channel 46.
Finally, and most relevant to the rejection of claim 1, the Examiner
finds that
the “humidifier” includes the humidifier 43, the injector 92
and the piping in between these units and the cathode . . . .
As all of the above components perform [the humidifying]
function, they are considered to be the cathode side
humidifier and thus, the surface active agent is mixed with
water in the cathode side humidifier.
(Ans. 5 (emphasis added).)
Further, the Examiner finds that
the “humidifier” includes the humidifier 42, the injector 91
and the piping in between these units and the anode . . . . As
all of the above components perform [the humidifying]
function, they are considered to be the anode side humidifier
and thus, the surface active agent is mixed with water in the
anode side humidifier.
(Ans. 6 (emphasis added).)
Elhamid does not dispute that Masayoshi discloses each of the four
claim elements. The critical issue is whether the prior art elements are
arranged in the same manner as they are in claim 1.
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Elhamid responds that Masayoshi discloses a fuel cell system that
includes the humidifier 43, which receives compressed air from the
blower 41, and the addition part 45, which adds ethanol to the humidified air
downstream from the humidifier 43. (Br. 11.) Elhamid argues that because
the humidifier 43 and the addition part 45 are separate and distinct
components of the fuel cell system, Masayoshi cannot anticipate claim 1.
(Id.)
The weight of the evidence favors Elhamid’s argument. Claim 1
requires “a source of a surface active agent for providing the surface active
agent to the cathode side humidifier.” Masayoshi does not describe a fuel
cell system that delivers a surface active agent to the cathode side
humidifier 43. Instead, ethanol 94 is injected via the injector 92 into the
flow channel 47 rather than into the cathode side humidifier 43. The flow
channel 47 is downstream from the cathode side humidifier 43 and the two
components are separate and distinct.
The Examiner appears to acknowledge this deficiency. To
compensate, the Examiner interprets the claim limitation “humidifier” in
instant claim 1 in a manner that is broad enough to include the
humidifier 43, the injector 92, and the piping between those components and
the cathode 23 in the prior art Figure 1. However, the Examiner’s
interpretation is inconsistent with the plain reading of the nomenclature
expressly used in the 603 Specification. The Examiner has not directed our
attention to any credible evidence that the Specification uses the term
“humidifier” in a way that is broader than the ordinary meaning of the term.
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Moreover, the Examiner’s interpretation is inconsistent with the way
Masayoshi uses the term “humidifier.”
We conclude that Masayoshi does not disclose the required claim
elements in the same manner as they are arranged in representative claim 1.
Accordingly, we REVERSE the anticipation rejection of claims 1, 3, 7, 9,
and 11.
The Examiner does not rely on the secondary references to establish
that a different arrangement of the four elements is obvious. Thus,
obviousness rejections B-F fall with the anticipation rejection.
Rejection G, indefiniteness
The second paragraph of 35 U.S.C. § 112 requires a claim to
“particularly point[ ] out and distinctly claim[ ] the subject matter which the
application regards as his invention.” The purpose of claims is not to
explain the technology or how it works, but to state the legal boundaries of
the patent grant. If the metes and bounds of the claimed invention would be
clear to a person having ordinary skill in the art, then the claim is indefinite
and should be rejected. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
However, if the scope of the subject matter in a claim is clear and applicant
has not otherwise indicated that he intends the claim to be of a different
scope, then the claim is considered definite. In re Borkowski, 422 F.2d
904, 909 (CCPA 1970).
Whether a claim is indefinite under § 112, ¶ 2 requires an objective
determination of whether a person of ordinary skill in the art would have
understood the subject matter of the claimed invention as it is described in
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the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
When making such a determination, an examiner or reviewing panel must
not confuse the scope of a claim with indefiniteness. In re Miller, 441 F.2d
689, 693 (CCPA 1971) (“breadth is not to be equated with indefiniteness”).
Words of degree may lack precision, but they do not in themselves render a
claim indefinite. Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc.,
731 F.2d 818, 826 (Fed. Cir. 1984) (A term of degree is definite if the
specification “provides some standard for measuring that degree. . . . that is,
whether one of ordinary skill in the art would understand what is claimed
when the claim is read in light of the specification.”).
In this case, the Examiner rejects claims 4 and 13 because “[i]t is
unclear to the Examiner what qualifies as a ‘polymer based hyper-branched
surface active agent’ as there is no definition or examples given in the
specification.” (OA 3; Ans. 4.)
Elhamid responds that the phrase “polymer based hyper-branched
surface active agent” is a descriptive term for a surface active agent and that
a person having ordinary skill in the art at the time of invention would
understand the meaning of claims 4 and 13. (Br. 9.) More particularly,
Elhamid argues that the term “polymer-based” means that the surface active
agent is made up of, at least in part, a polymer, and that the term “hyper-
branched” means a surface active agent that has a chemical structure with
many branched groups. (Id.)
The plain reading of the disputed phrase favors Elhamid’s argument.
While it is true that the scopes of claims 4 and 13 are broad, as it includes
any polymer based hyper-branched surface active agents, the record
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indicates that a person having ordinary skill in the art would have
understood the subject matter encompassed in the claims. The Specification
explains that a “polymer based hyper-branched surface active agent” is one
type of many kinds of wetting agents that are capable of reducing the surface
tension of water in a fuel cell environment.12
The relative nature of the term “hyper-branched” is not fatal. We note
that the ordinary meaning of the prefix “hyper” is comparable to
“extremely.” Thus, a “hyper-branched” polymer is not merely a branched
polymer, but an extremely branched polymer.
The Examiner has not directed our attention to credible evidence of
record that indicates that the phrase “polymer based hyper-branched surface
active agent” would have been an ambiguous term of art for a person having
ordinary skill in the art. Accordingly, we REVERSE the rejection of
claims 4 and 13.
New Ground of Rejection - indefiniteness
The primary purpose of the definiteness requirement of 35 U.S.C.
§ 112, ¶ 2 is to notify the public of the scope of a patentee’s right to exclude.
Honeywell Int’l Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1338 (Fed.
Cir. 2003) (en banc). If the metes and bounds of the claimed invention are

12 “These materials include . . . detergents, polymer based hyper-branched
wetting agents, other non-foaming agents such as CoatOSil, surfactant,
EnviroGem AD01, Photomer 8127, Flexitane CA 6000 . . .” (Spec. 6,
Paragraph [0019]).
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not clear, then the claim is indefinite and should be rejected. Zletz, 893 F.2d
at 321-22.
A trademark is a mark by which the goods (or service) of the
trademark owner may be distinguished from the goods of others.
15 U.S.C. § 1052. The proper function of a trademark is to identify the
source of the goods displaying a trademark. Hanover Star Milling Co. v.
Metcalf, 240 U.S. 403, 412 (1916) (“The primary and proper function of a
trademark is to identify the origin or ownership of the article to which it is
affixed.”).
When a trademark (or a name used in trade) becomes synonymous
with the goods themselves, it is said to be generic.13, 14 A generic
“trademark” no longer fulfills the role of identifying the source of the goods,
and hence cannot function as a proper trademark. Therefore, when a generic
trademark or a generic name used in trade is recited in a patent claim, a
person having ordinary skill in the art would understand the scope of the
goods referred to.
However, when a trademark that has not become generic is recited in
a claim, the interested public is without proper notice of the scope of the

13 See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9
(2d Cir. 1976) (Friendly, J.) (“A generic term is one that refers, or has come
to be understood as referring, to the genus of which the particular product is
a species.”).
14 15 U.S.C. § 1064 (3) (“The primary significance of the registered mark to
the relevant public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic name of
goods or services on or in connection with which it has been used.”).
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claim because the mark directs the viewer to the source of the goods rather
than to the goods themselves. That is, the interested public will not know
precisely what it is excluded from making, using, or selling. See, e.g.,
Ex parte Casey (BPAI 2008) (informative).15
In this case, the Examiner objects to the use of particular trademarks
(CoatOSil, EnviroGem, Photomer, and Flexitane) in claims 5 and 14 because
there is no accompanying generic terminology; i.e., chemical formulae.
(Ans. 2.) Elhamid responds that trademarks are permitted in a claim if their
meanings are established by an accompanying definition which is
sufficiently precise and definite to be made a part of a claim, or their
meanings are well-known and satisfactorily defined in the literature. (Br. 4.)
Elhamid argues that the trademarks listed in claims 5 and 14 are surface
active agents and their meanings are well-known because they are available
on the Internet. (Id.)
Elhamid has not directed our attention to any evidence of record
indicating a precise and definite definition of CoatOSil, EnviroGem,
Photomer, and Flexitane. Nor has Elhamid directed our attention to relevant
prior art that establishes a well-known and satisfactorily defined meaning for
the recited CoatOSil, EnviroGem, Photomer, and Flexitane materials. On
the present record, the weight of the evidence indicates that the marks are
not generic. As a result, we conclude that it would not be possible for the
interested public, or a person having ordinary skill in the art, to determine
what claims 5 and 14 seek to exclude the public from making, using, and

15 http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd074317.pdf
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selling. Accordingly, the metes and bounds of the claimed invention are not
clear and we REJECT claims 5 and 14 as indefinite.

C. Order
We REVERSE all appealed rejections over prior art.
We REVERSE the rejection of claims 4 and 13 under
35 U.S.C. §112, ¶2.
We REJECT, as a new ground of rejection, claims 5 and 14 under
35 U.S.C. §112, ¶2.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
bar