Ex Parte Fagley et al

Patent Trial and Appeal Board

Sep 25, 2014

12358989 (P.T.A.B. Sep. 25, 2014)

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.
12/358,989 01/23/2009 JOHN C. FAGLEY P003169-FCA-CHE 3548
65798 7590 09/25/2014
MILLER IP GROUP, PLC
GENERAL MOTORS CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
WANG, EUGENIA
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
09/25/2014 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 JOHN C. FAGLEY and STEVEN R. FALTA
____________

Appeal 2013-000176
Application 12/358,989
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-000176
Application 12/358,989

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 15. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a fuel cell system. App. Br. 5-7.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. A fuel cell system comprising:
a fuel cell stack including a cathode side and an anode
side;
a compressor providing cathode air to the cathode side of
the fuel cell stack;
a water vapor transfer unit for humidifying the cathode
air from the compressor before it is sent to the fuel cell stack;
and
a controller that is configured to control the compressor
and the water vapor transfer unit during a fuel cell stack purge,
said fuel cell stack purge including a first stage purge and a
second stage purge, said controller further configured to control
the compressor to provide humidified cathode air through the
water vapor transfer unit during the first stage purge to the fuel
cell stack so that the stack hydration level drops to a known
hydration value based on the relative humidity of the cathode
inlet air during the first stage purge and then provides dry
cathode air to the fuel cell stack during the second stage purge
so that the stack hydration level drops from the known
hydration value at the end of the first stage purge to a desired
hydration level at the end of the second stage purge.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Appeal 2013-000176
Application 12/358,989

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Matsuoka US 2006/0115699 A1 Jun. 1, 2006
Wake US 2007/0092771 A1 Apr. 26, 2007

Appellants, App. Br. 7-8, request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 1-15 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.1
II. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wake and Matsuoka.

OPINION
Rejection under 35 U.S.C. § 112, 1st paragraph
The dispositive issue concerning this rejection is: Did the Examiner
err in determining that claims 1-15 fail to comply with the enablement
requirement of § 112, 1st paragraph?
We answer this question in the negative and AFFIRM.
The Examiner finds it would take undue experimentation by one
skilled in the art to configure the controller as claimed because there is no
disclosure that guides the skilled artisan on how to configure what appears to
be no more than a general purpose controller. Final Act. 4-7. The Examiner
explains the Specification does not provide any algorithms, or sufficiently

1 The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement, also included claim 16. Final
Act. 4; Ans. 4. However, the Examiner indicated claim 16 as part of a claim
grouping withdrawn from further consideration pursuant to 37 CFR
1.142(b), as being drawn to a nonelected invention in the non-final Office
Action of November 28, 2011. Non-final Office Action 2. Accordingly,
claim 16 is not before us on appeal.
Appeal 2013-000176
Application 12/358,989

4
specific parameters, criteria, or techniques, for performing the claimed steps
or functions. Final Act. 4-7; Ans. 18.
Appellants argue paragraphs 6, 9, 18 and 19 of the Specification
provide the guidance necessary for one skilled in the art to practice the
invention without undue experimentation. App. Br. 9.
We are unpersuaded by Appellants’ argument and agree with the
Examiner’s finding that undue experimentation is required to practice the
claimed invention. Ans. 17-19. As noted by the Examiner, nothing in the
disclosure as originally filed links the controller functions of the first and
second stage purges or provides an algorithm for the controller to determine
the desired hydration values for when to switch from the first stage to the
second stage, the known hydration value of the first stage, or a desired
hydration level to the controller. Id. at 18-19. Moreover, the portions of the
Specification relied on by Appellants merely disclose typical parameters
used to control hydration levels of the membranes (Spec. ¶ 6) or that models
can be employed to estimate the amount of water in a stack (Spec. ¶ 9).
Appellants do not direct us to disclosure of how the claimed controller can
be

configured to control the compressor and the water vapor
transfer unit during a fuel cell stack purge, said fuel cell stack
purge including a first stage purge and a second stage purge,
said controller further configured to control the compressor to
provide humidified cathode air through the water vapor transfer
unit during the first stage purge to the fuel cell stack so that the
stack hydration level drops to a known hydration value based
on the relative humidity of the cathode inlet air during the first
stage purge and then provides dry cathode air to the fuel cell
stack during the second stage purge so that the stack hydration
Appeal 2013-000176
Application 12/358,989

5
level drops from the known hydration value at the end of the
first stage purge to a desired hydration level at the end of the
second stage purge.

Claim 1.
Therefore, on this record, Appellants have failed to establish the
Specification, as originally filed, enables one skilled in the art to make or use
the subject matter described in independent claim 1 as well as of the subject
matter of claims 2-15.
Accordingly we affirm the Examiner’s rejection of claims 1-15 under
35 U.S.C. § 112, first paragraph for the reasons presented by the Examiner
and given above.
Prior Art Rejection
Having determined that undue experimentation is required to practice
the invention, we cannot conclude that it would have been obvious to one
skilled in the art to configure Wake’s controller as required by the subject
matter of independent claims 1 and 10. As discussed above, the
Specification as originally filed lacks sufficient information on how the
controller determines the desired hydration values for determining when to
switch from the first stage to the second stage. Consequently, the Examiner
can only speculate as to the modifications necessary to meet the claimed
invention. Thus, the Examiner has not adequately explained how the
combined teachings of Wake and Matsuoka would have suggested to one
skilled in the art a controller capable of performing the claimed function.
Further, the Examiner has not adequately explained how one skilled in the
art would have modified Wake’s controller to perform the claimed function.
Appeal 2013-000176
Application 12/358,989

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For the reasons stated above, we reverse the Examiner’s prior art
rejection of claims 1-15 under 35 U.S.C. § 103(a).

ORDER
The rejection of claims 1-15 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement is affirmed.
The rejection of claims 1-15 under 35 U.S.C. § 103(a) as unpatentable
over Wake and Matsuoka is reversed.

TIME PERIOD
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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