Ex Parte Andreas-Schott et al

Patent Trial and Appeal Board

Jul 14, 2016

12713824 (P.T.A.B. Jul. 14, 2016)

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.
12/713,824 02/26/2010 Benno Andreas-Schott P002491-FCA-CHE 5462
104102 7590 07/14/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
07/14/2016 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 BENNO ANDREAS-SCHOTT and THOMAS P. MIGLIORE1
____________

Appeal 2014-007931
Application 12/713,824
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 3‒19, 22, and 23.2 We have jurisdiction
pursuant to 35 U.S.C. § 6.
We REVERSE.

1 Appellants identify General Motors LLC as the real party in interest.
Appeal Br. 6.
2 Appellants contend the Examiner improperly set forth a new ground of
rejection of claim 7 in the Examiner’s Answer in withdrawing an earlier
indication of allowable subject matter. Reply Br. 4. The issue is waived,
however, as relief is by way of petition under 37 C.F.R. § 1.181 and failure
to timely file such petition—before the filing of any reply brief—constitutes
waiver of any arguments that the rejection must be designated as a new
ground. 37 C.F.R. § 41.40(a).
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Application 12/713,824

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BACKGROUND
Appellants’ invention relates to a fuel cell stack with a flexible
enclosure. Spec. Abstract.
Independent claims 1, 16, and 23 reproduced below with added
emphasis highlighting critical limitations are illustrative:
1. 1. A fuel cell device comprising:
a fuel cell stack comprising:
a lower end plate;
an upper end plate;
a lower insulator plate and an upper insulator plate
disposed vertically adjacent to the lower and upper end plates;
a lower current collector plate and an upper current
collector plate disposed vertically adjacent to the lower
insulator plate and an upper insulator plate;
a stack of fuel cells disposed between the current
collector plates; and
at least one flexible enclosure in sealing contact with the
end plates and enclosing the fuel cell stack.

16. A fuel cell system comprising:
an upper end unit including:
a lower end plate;
an upper end plate;
lower insulator plate and an upper insulator plate
disposed vertically adjacent to the lower and upper end plates;
a lower current collector plate and an upper current
collector plate disposed vertically adjacent to the lower
insulator plate and an upper insulator plate;
a stack of fuel cells disposed between the current
collector plates;
a cell voltage monitoring device disposed between the
end plates; and
a unitary flexible wrap in sealing contact with the end
plates and enclosing the stack and the cell voltage monitoring
device to resist ingress of environmental elements into the stack
an [sic] cell voltage monitoring device;
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a lower end unit disposed beneath the upper end unit; and
a multiple piece rigid case spaced from the stack and
crimped together to enclose the upper and lower end units to
limit at least one of transfer of heat or transfer of
electromagnetic interference therethrough.

23. A fuel cell device comprising:
a fuel cell stack comprising:
a first end plate;
a second end plate;
a stack of fuel cells disposed between the first end plate
and second end plate plates;
a cell voltage monitoring device disposed between the
end plates;
at least one flexible enclosure in sealing contact with the
end plates and enclosing the fuel cell stack; and
a rigid enclosure spaced from the stack of fuel cells, the
rigid enclosure comprising a first layer comprising a metal foil,
and a second layer comprising an insulating material.
Appeal Br. (Claims Appendix) 38, 40‒42.
Claims 9 and 22 further recite “an interface extending through at least
one of the upper or lower end plates and not extending through the flexible
wrap.”
THE REJECTIONS
The Examiner maintains rejections under 35 U.S.C. § 103 of:
I. Claims 1, 3, and 4 over Forlino3 and Fly4 (Ans. 2);
II. Claim 5 over Forlino, Fly, Boulton,5 and Cirillo6 (Ans. 4);

3 US 2004/0146777 A1, published July 29, 2004.
4 US 2002/0114990 A1, published August 22, 2002.
5 US 2005/0208381 A1, published September 22, 2005.
6 US 7,204,183 B2, issued April 17, 2007.
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III. Claims 6 and 7 over Forlino, Fly, and Hope7 (Ans. 5);
IV. Claims 8, 10, 11, 13‒16, 18, and 23 over Forlino, Fly, Tanaka,8
and Agnello9 (Ans. 6);
V. Claim 9 over Forlino, Fly, and Rouillard10 or Sonozaki11
(Ans. 8);
VI. Claims 12 and 19 over Forlino, Fly, Tanaka, Agnello, Bastick,12
and Kobayashi13 (Ans. 9);
VII. Claim 17 over Forlino, Fly, Tanaka, Agnello, and Hope
(Ans. 10); and
VIII. Claim 22 over Forlino, Fly, Tanaka, Agnello, and Rouillard or
Sonozaki (Ans. 10).
DISCUSSION
Upon consideration of the evidence and opposing contentions of
Appellants and the Examiner, we are persuaded of reversible error in the
Examiner’s factual findings and conclusions central to the rejection of all
claims. It follows we cannot sustain the rejections. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“[T]he Examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.”).

7 US 5,057,385, issued October 15, 1991.
8 WO 2007/046490 A1, published April 26, 2007 (US 2009/0130530 A1,
published May 21, 2009, is relied on as an English language translation).
9 US 2007/0137154 A1, published June 21, 2007.
10 US 6,797,018 B2, issued September 28, 2004.
11 US 6,106,973, issued August 22, 2000.
12 US 5,890,843, issued April 6, 1999.
13 US 2008/0217078 A1, published September 11, 2008.
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Each of the independent claims require that the flexible enclosure or
wrap be in sealing contact with the end plates. Claims 1, 16, 23.
The Examiner finds that Forlino teaches a fuel cell device comprising
a fuel cell stack enclosed in a flexible enclosure in sealing contact with the
stack and that providing the enclosure inhibits external contaminants from
disturbing the fuel cell. Ans. 2 (citing Forlino Fig. 3A, ¶¶ 5, 44, 46).
The Examiner finds Fly teaches a fuel cell stack with a separate
collector plate, end plate, and insulator plate and that end plates can be used
to ensure proper compression between stack elements while maintaining
proper electrical pathways. Ans. 3 (citing Fly ¶¶ 42, 72‒73).
As to independent claim 1, the Examiner concludes that there is a
prima facie case of obviousness based on the combination of the flexible
enclosure of Forlino and end plate structure of Fly because the combined
components provide their normal function (Ans. 3) and, alternatively,
because it would have been obvious to one of ordinary skill in the art at the
time of the invention “to include a flexible enclosure . . . [to] inhibit
contaminants as taught by Forlino and “to include the end plate structure of
Fly . . . [to] provide a more sturdy stack with proper electrical pathways and
electrical insulation in the end plate structure” (Ans. 3‒4).
On this record, we do not find the Examiner has established a prima
facie case. Critically, the Examiner fails to set forth any rationale or
reasoning for the flexible enclosure (or wrap) to be in sealing contact with
the end plates. Generally, Final Act.; Ans.
As to the rationale for obviousness grounded on the combined
components providing their normal function, Forlino’s flexible enclosure
does not function by forming a sealing contact with the end plates, but by
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enclosing the entirety of the fuel cell and, thus, is insufficient to support a
prima facie case. For this same reason, the proffered rationales “to include a
flexible enclosure . . . [to] inhibit contaminants as taught by Forlino and “to
include the end plate structure of Fly . . . [to] provide a more sturdy stack
with proper electrical pathways and electrical insulation in the end plate
structure” (Ans. 3‒4) fall short because the references fail to teach or suggest
that the flexible enclosure (or wrap) forms sealing contact between the
flexible enclosure (or wrap) and the first and second (or upper and lower)
end plates as required by the claims (claims 1, 16, 23).
The Examiner similarly relies on Forlino and Fly as to the rejection of
independent claims 16 and 23 and to the dependent claims. Ans. 4‒10.
As to claims 9 and 22, the Examiner further relies on Rouillard or
Sonozaki as suggesting that leaving the side of a stack uncovered would be
understood as an alternative where Rouillard teaches an additional plate with
electrical contacts (Rouillard Fig. 1) and where Sonozaki teaches a structure
95A for receiving an electrochemical device having electrical interface
elements that extend out of a portion of the structure left open for receiving
the device 97 with terminals 96 (Sonozaki Fig. 11). Ans. 8, 10. The
Examiner determines modification of Forlino to have electrical interfaces
extending through “an open side of the enclosure via an end plate, rather
than extending through the enclosure itself, would merely require the
substitution of one known sealing structure for another and yield the same
predictable result.” Ans. 9. 10.
On this record, we do not find the Examiner’s reasoning or rationale
sufficient to sustain the rejection of claim 9 (Rejection V) or claim 22
(Rejection VIII). While axiomatic that where “a patent claims a structure
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already known in the prior art that is altered by the substitution of one
element for another known in the field, the combination must do more than
yield a predictable result” (KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007)), the Examiner sets forth no reasonable basis for how Forlino’s
sealing structure and that of either Rouillard or Sonozaki can simply be
substituted for each other, particularly in such manner that the flexible
structure is in sealing contact with the end plates (Ans. 8‒10). Further,
having relied on Forlino and Fly in combination for the recited flexible
structure being in sealing contact with the end plates (Ans. 2‒4, 6), the
Examiner fails to set forth an adequate basis for both the upper and lower
end plates to be left uncovered (Ans. 8‒10), particularly where the cited
structures of both Rouillard—Figure 1—and Sonozaki—Figure 11—include
only a single uncovered side.
For these reasons, we find the Examiner has failed to provide
sufficient reasoning or explanation why one of ordinary skill in the art at the
time of the invention would have combined the cited prior art as required to
provide the fuel cell device or system according to the claims. See, e.g.,
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“obviousness concerns whether a skilled artisan not only could have made
but would have been motivated to make the combinations or modifications of
prior art to arrive at the claimed invention”) (emphasis in original). We will
not turn to impermissible speculation or unfounded assumptions or
rationales to cure the deficiencies in the rejections before us. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
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CONCLUSION
The rejection of claims 1, 3‒19, 22, and 23 is REVERSED.