Ex Parte Fagley et alDownload PDFPatent Trial and Appeal BoardSep 25, 201412358989 (P.T.A.B. Sep. 25, 2014) Copy Citation 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 3 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 6 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 kmm Copy with citationCopy as parenthetical citation