Ex Parte Brandon

Patent Trial and Appeal Board

Sep 28, 2012

12123513 (P.T.A.B. Sep. 28, 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.
12/123,513 05/20/2008 Michael J. Brandon II SP-2113.1 US 1924
20875 7590 09/28/2012
MICHAEL C. POPHAL
EVEREADY BATTERY COMPANY INC
25225 DETROIT ROAD
P O BOX 450777
WESTLAKE, OH 44145
EXAMINER
DOUYETTE, KENNETH J
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
09/28/2012 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 MICHAEL J. BRANDON II
________________

Appeal 2011-009180
Application 12/123,513
Technology Center 1700
________________

Before FRED E. MCKELVEY, CATHERINE Q. TIMM, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1-11, 23-29, 31, and 32 of
Application 12/123,513 under 35 U.S.C. § 103(a) as obvious.1 Appellant
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART and enter a
NEW GROUND OF REJECTION under 35 U.S.C. § 112(b).

1 Claim 30 was cancelled by the Appellant in an amendment after entry of
the final rejection. Amendment After Final 6 (Dec. 15, 2010). Accordingly,
we need not consider the Appeal Brief’s references to claim 30.
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Application 12/123,513

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BACKGROUND
The ’513 application generally relates to methods for controlling the
rate of entry of fluids into batteries and cells with fluid consuming
electrodes. Spec. ¶ [0001].
Certain types of electrochemical batteries, including air-depolarized
and air-assisted batteries, as well as fuel cells, use a fluid from outside the
cell as an active material. Id. at ¶ [0002]. In some of these cells, oxygen
from the air serves as the active material in the cell or is used to partially
regenerate active material within the cell. Id. at ¶ [0005]. As a result, these
types of batteries are said to have a high energy density. Id. The maximum
discharge rate of such cells, however, is said to be limited by the rate at
which oxygen can enter the oxygen reduction electrode. Id. at ¶¶ [0006]-
[0007].
The ’513 application describes methods for controlling the fluid
supplied to a fluid consuming battery. In these methods, a valve is used to
regulate the rate of passage of a fluid in to a fluid consuming electrode of a
battery. Id. at ¶¶ [0011]-[0012]. The methods also include steps of
monitoring the rate of change of the battery’s electrical output and
comparing that rate of change to a threshold. Id. When the observed rate of
change exceeds the threshold, an actuator opens the valve. Id.
Claim 1 of the ’513 application is representative and is reproduced
below:
1. A method of controlling fluid supplied to a fluid
consuming battery, said method comprising the steps of:
providing a fluid regulating system that comprises a valve for
adjusting rate of passage of fluid into a fluid consuming
electrode of a battery and an actuator for operating the valve;
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monitoring a rate of change in battery electrical output with
respect to time;
comparing the monitored rate of change in battery electrical
output to a rate of change threshold; and
opening the valve when the monitored rate of change in battery
electrical output exceeds the rate of change threshold.
App. Br. Claims App’x 1.

REJECTIONS
1. The Examiner finally rejected claims 1-7, 9-11, 24-27, 31, and
32 under 35 U.S.C. § 103(a) as obvious over U.S. Patent Application
Publication No. 2003/0186099 A1 (“Liu,” Oct. 2, 2003) in view of U.S.
Patent Application Publication No. 2004/0121204 A1 (“Adelman,” June 24,
2004) and further in view of U.S. Patent No. 5,560,999 (“Pedicini,” issued
Oct. 1, 1996).
2. The Examiner finally rejected claim 8 under 35 U.S.C. § 103(a)
as obvious over Liu in view of Adelman and Pedicini and further in view of
JP 2006-252928 (“Akita,” Sept. 21, 2006).2
3. The Examiner finally rejected claim 23 under 35 U.S.C.
§ 103(a) as obvious over Liu in view of Adelman and Pedicini and further in
view of U.S. Patent No. 3,711,333 (“Kohlmuller,” issued Jan. 16, 1973).
4. The Examiner finally rejected claim 29 under 35 U.S.C.
§ 103(a) as obvious over Liu in view of Adelman and Pedicini and further in
view of U.S. Patent Application Publication No. 2005/0112427 A1
(“Bailey,” May 26, 2005).

2 A translation of Akita’s Abstract is in the record of this case.
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DISCUSSION
For purposes of this appeal, Appellant has grouped the claims as
follows:
1) Claims 1-6 and 11
2) Claim 7
3) Claim 8
4) Claim 9
5) Claim 10
6) Claim 23
7) Claim 29
8) Claims 24-27, 31, and 32
App. Br. 6.

Rejection 1. The Examiner finally rejected claims 1-7, 9-11, 24-27,
31, and 32 as obvious over Liu in view of Adelman, and further in view of
Pedicini.

Claims 1-6 and 11. Appellant has stipulated that this group of claims
stands or falls with claim 1. App. Br. 6. Appellant argues that the
Examiner’s rejection is improper because the combination of Liu, Adelman,
and Pedicini does not teach or suggest the following limitations of claim 1:
(1) “monitoring a rate of change in battery electrical output with respect to
time,” (2) “comparing the monitored rate of change in battery electrical
output to a rate of change threshold,” and (3) “opening the valve when the
monitored rate of change in battery electrical output exceeds the rate of
change threshold.” Id. at 10.
The Examiner found that Adelman describes a redox battery that
includes a logic means that receives measured rates of voltage change in the
battery. Ans. 4 (citing Adelman ¶ [0025]). The Examiner further found that
the logic means controls fluid flow to the battery as a result of monitoring
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the measured rate of voltage change by way of control schemes well-known
in the art. Id. Thus, the Examiner reasoned that “when the measured rate of
voltage change crosses a threshold, the fluid flow is altered accordingly.” Id.
Appellant argues that the specific teaching in Adelman concerning the
use of rate of change in voltage output measurements is to determine
whether a particular cell exists or is functioning properly. App. Br. 11 (citing
Adelman ¶ [0042]). This argument, however, is unpersuasive. The
Examiner’s finding that Adelman teaches the claim limitations is supported
by a preponderance of the evidence. Specifically, Adelman states:
FTCs connected electrically in series provide the additional
option of being able to utilize valves to regulate the individual
cell flow and/or voltages . . . . Generally, voltages, amperages,
and rates of change of volts and amps may be measured for
individual cells and input into a logic means, such as an
alogorithm, [sic] that is used to regulate the individual cell
voltages according to the present invention. This logic means
may be a computer program or electrical circuit that utilizes, for
example, control schemes, theories, or circuits as published and
known to those skilled in the art (see, e.g., Process Control
Instrumentation Technology, Fourth Edition, by Curtis Johnson,
Published by Prentice Hall Career & Technology, Englewood
Cliffs, N.J. 07632, 1993).
Adelman ¶ [0025].
Adelman’s description of a limited use of the rate of change in voltage
output as a function of time in a specific embodiment does not negate this
broad teaching. We affirm the Examiner’s rejection of claims 1-6 and 11 of
the ’513 application.
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Claim 7. Claim 7 depends from claim 1 and is reproduced below:
7. The method as defined in claim 1, wherein the step of
opening the valve comprises opening the valve for at least a
minimum time period.
App. Br. Claims App’x 2.
Appellant argues that the rejection of this claim is erroneous for all of
the reasons asserted in connection with claim 1 and because the combination
of Liu, Adelman, and Pedicini does not teach the step of keeping the valve
open for a minimum amount of time. App. Br. 12. As discussed above, we
do not find the arguments asserted against the combination of Liu, Adelman,
and Pedicini in connection with claim 1 to be persuasive.
The Examiner found that Pedicini describes the step of keeping a
valve that controls the flow of fluid in a metal-air cell open for a minimum
time periods. Ans. 8 (citing Pedicini col. 11, ll. 8-16).
This finding is not adequately supported by the record evidence. The
passage cited by the Examiner actually describes a method for opening the
fuel valve past its “optimum setting” when necessary to deliver the current
required for a particular load. Pedicini col. 10, l. 66-col. 11, l. 20 (describing
content of flowchart in Fig. 4). Such a situation might occur, for example,
when the amount of oxygen in the supplied air is low. Id. In such situations,
a timing loop is used to return the valve to its optimum position at the
expiration of a preset time. Id. This avoids a situation in which the valve
unnecessarily remains set past its optimum position. Id.
Thus, we reverse the Examiner’s rejection of claim 7.

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Claim 9. Claim 9 depends from claim 1 and is reproduced below:
9. The method as defined in claim 1 further comprising the
steps of sensing an operating condition of the fluid regulating
system and adjusting the rate of change threshold based on the
sensed operating condition.
App. Br. Claims App’x 2.
Appellant argues that the rejection of this claim is erroneous for all of
the reasons asserted in connection with claim 1 and because the combination
of Liu, Adelman, and Pedicini do not teach the steps of sensing an operating
condition of the fluid regulating system and adjusting the rate of change
threshold based on the sensed operating condition. App. Br. 12.
The Examiner found that Pedicini describes a fluid control system that
monitors the level of current in a cell, allowing the fluid flow level to be
modified in cases of insufficient air flow. Ans. 9 (citing Pedicini col. 5, ll.
18-24). The Examiner also found that the system also monitors and responds
to the humidity level of the fluid flow. Id. (citing Pedicini col. 5, ll. 23-28).
Thus, the Examiner found that Pedicini teaches or suggests the limitations
present in claim 9.
This finding is not supported by a preponderance of the evidence. The
cited passage of Pedicini merely states that properly adjusting the amount of
air supplied to the metal-air cell “helps to provide further humidity control.”
Pedicini col. 5, l. 25. To be sure, Pedicini does describe the optional
incorporation of a humidifier and a humidity monitor to adjust the humidity
of the recirculated reactant air. Id. at col. 5, ll. 51-58. This system, however
does not adjust the rate of change threshold used to control the opening and
closing of a valve that regulates the supply of fuel to the fuel-consuming
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electrode in the metal-air cell. Id. Thus, Pedicini does not teach or suggest
this limitation in the claimed process.
Therefore, we reverse the Examiner’s rejection of claim 9 as obvious
over the combination of Liu, Adelman, and Pedicini.

Claim 10. Claim 10 depends from claim 9 and is reproduced below:
10. The method as defined in claim 9, wherein the operating
condition is at least one member of the group consisting of a
temperature, humidity and a wear parameter.
App. Br. Claims App’x 2.
Because we have already concluded that the Examiner erred in
rejecting claim 9, we also reverse the Examiner’s rejection of claim 10 of the
’513 application.

Claims 24-27, 31, and 32. Appellant has stipulated that this group of
claims stands or falls with claim 24. App. Br. 6. Claim 24 is the independent
claim in this group and is reproduced below:
24. A method of controlling fluid supplied to a fluid
consuming battery, said method comprising the steps of:
providing a fluid regulating system that comprises a
valve for adjusting rate of passage of fluid into a fluid
consuming electrode of a battery and an actuator for operating
the valve;
monitoring a battery electrical output;
monitoring a rate of change in battery electrical output
with respect to time;
comparing the monitored battery electrical output to an
electrical output threshold;
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comparing the monitored rate of change in battery
electrical output to a rate of change threshold; and
opening the valve when either the monitored electrical
output value is below the electrical output threshold or the
monitored electrical output value is below the electrical output
threshold and the monitored rate of change in battery electrical
output exceeds the rate of change threshold.
App. Br. Claims App’x 2-3.
Appellant argues that the rejection of claim 24 is erroneous for the
same reasons advanced against the rejection of claim 1. See App. Br. 13-15.
As discussed above, the Examiner found that Adelman described or
suggested the steps of monitoring the rate of change in the battery’s
electrical output and adjusting the fluid flow to the battery when the
measured rate of change crosses a threshold. Ans. 6.
For the reasons set forth above, we conclude that the Examiner did not
err in finding that Adelman described or suggested the steps of monitoring
the rate of change of the electrical output of the battery and opening the
valve to increase fluid supply to the battery if the rate of change exceeded a
threshold value.
Therefore, we sustain the Examiner’s rejection of claims 24-29, 31,
and 32 of the ’513 application as obvious over the combination of Liu,
Adelman, and Pedicini.

Rejection 2. The Examiner finally rejected claim 8 as obvious over
the combination of Liu, Adelman, and Pedicini further in view of Akita.
Claim 8 depends from claim 1 and further requires the steps of providing a
position sensor and sensing the valve’s position. App. Br. Claims App’x 2.
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Appellant argues that this rejection is erroneous for the same reasons
advanced against Rejection 1 and the combination of Liu, Adelman, and
Pedicini. App. Br. 15. Therefore, we sustain affirm this rejection for the
reasons set forth in our discussion of Rejection 1.

Rejection 3. The Examiner finally rejected claim 23 as obvious over
the combination of Liu, Adelman, and Pedicini further in view of
Kohlmuller. Claim 23 depends from claim 9. As discussed above, Claim 9
depends from claim 1 and adds the steps of sensing an operating condition of
the fuel system and adjusting the rate of change threshold based on the
sensed operating condition to claim 1’s method. Claim 23 is reproduced
below:
23. The method as defined in claim 9, wherein the wear
parameter is at least one member of the group consisting of a
time required to operate the valve and an energy required to
operate the valve.
App. Br. Claims App’x 2 (emphasis added).
Claim 23 includes the claim term “the wear parameter,” which lacks
antecedent basis in either claim 9 or claim 1. Claim 23, therefore, is
indefinite. Pursuant to 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF
REJECTION under 35 U.S.C. § 112(b). Appellant may seek to overcome
this rejection by submitting an amendment and reopening prosecution
pursuant to 37 C.F.R. § 41.50(b)(1).3

3 We note that the antecedent basis for the term “the wear parameter” might
be found in claim 10. It is possible that claim 23 was intended to depend
from claim 10 rather than claim 9. However, it would be improper for us to
review the rejection based upon this possibility because it is based upon
speculation.
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Because we have rejected claim 23 as indefinite, we cannot review the
Examiner’s rejection of the claim under 35 U.S.C. § 103(a) as obvious over
the combination of Liu, Adelman, Pedicini, and Kohlmuller on its merits.
We are unable to answer this question because the claim is indefinite;
therefore, discerning its proper scope would require undue and improper
speculation. In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not
think a rejection under 35 U.S.C. § 103 should be based on such
speculations and assumptions).
Accordingly, we reject claim 23 under 35 U.S.C. § 112(b) as
indefinite and express no opinion on the merits of the Examiner’s rejection
under 35 U.S.C. § 103(a).

Rejection 4. The Examiner finally rejected claim 29 as obvious over
the combination of Liu, Adelman, and Pedicini further in view of Bailey.
Claim 29 depends from claim 24 and further specifies that the cell is an air-
depolarized cell and the fluid consuming electrode comprises an air
electrode. App. Br. Claims App’x 3.
The Examiner found that Bailey describes an air-depolarized battery,
including an air electrode. Ans. 12 (citing Bailey ¶ [0046]). The Examiner
concluded that it would have been obvious to a person of ordinary skill in
the art to substitute Bailey’s air depolarized cell for the metal-air battery—
which also includes an air electrode—described by Liu. Id.
Appellant argues that this rejection is erroneous for the same reasons
advanced against Rejection 1 and the combination of Liu, Adelman, and
Pedicini. App. Br. 16. We affirm this rejection for the reasons set forth in
our discussion of Rejection 1.
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CONCLUSION
As discussed above, we affirm the Examiner’s rejection of claims 1-6,
8, 11, 24-29, 31, and 32. However, we reverse the rejection of claims 7, 9,
and 10. Furthermore, we reject claim 23 under 35 U.S.C. § 112(b) as
indefinite. This is a new ground of rejection. Because we have rejected claim
23 as indefinite, we are not able to review the merits of the Examiner’s
rejection of that claim under 35 U.S.C. § 103(a).

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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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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-IN-PART, NEW GROUND OF REJECTION ENTERED
UNDER 37 C.F.R. § 41.50(b)

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