Ex Parte Furukawa et al

Patent Trial and Appeal Board

Mar 9, 2017

12645605 (P.T.A.B. Mar. 9, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/645,605 12/23/2009 Kazuyoshi FURUKAWA 90606.75 l/ta 8574
54071 7590 03/13/2017
YAMAHA
EXAMINER
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1723
NOTIFICATION DATE DELIVERY MODE
03/13/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUYOSHI FURUKAWA and YASUYUKI MURAMATSU
Appeal 2015-004524
Application 12/645,6051
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
1 The Appellants state that the real party in interest is “Yamaha Hatsudoki
Kabushiki Kaisha” (Appeal Brief filed on October 15, 2014, hereinafter
“Appeal Br.,” 2).
Appeal 2015-004524
Application 12/645,605
The Applicants (hereinafter the “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1, 2,
and 5—1232 3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
The subject matter on appeal relates to a fuel cell system and to a
transportation equipment including such a fuel cell system (Specification,
hereinafter “Spec.,” 11). According to the Appellants, the invention
“prevents] and minimize[s] leakages of aqueous fuel solution to the cathode
of a fuel cell while reducing catalyst deterioration in the fuel cell” (Appeal
Br. 3—4) (citing Spec. 2—10, 146—148).
Representative claim 1 is reproduced from page 10 of the Appeal
Brief (Claims Appendix; emphasis added), as follows:
1. A fuel cell system comprising:
a fuel cell including an anode and a cathode;
an aqueous solution supply arranged to supply the anode
with aqueous fuel solution;
a gas supply arranged to supply the cathode with a gas
containing an oxidizer;
a cell temperature detector arranged to detect a
temperature of the fuel cell; and
a controller programmed to stop an operation of the
aqueous solution supply, and thereafter to stop an operation of
the gas supply when the temperature of the fuel cell detected by
2 Appeal Br. 1, 3—8; Reply Brief filed on March 12, 2015, hereinafter “Reply
Br.,” 2—3; Final Office Action (notice emailed on May 15, 2015), hereinafter
“Final Act.,” 2—7; Advisory Action (notice emailed on November 10, 2014)
2 (entering amendment to cancel claim 13); Examiner’s Answer (notice
emailed on January 15, 2015), hereinafter “Ans.,” 2—8.
3 Claim 3 is also pending but has been indicated as “allowable if rewritten to
include all of the limitations of the base claim and any intervening claims”
(Final Act. 2).
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Application 12/645,605
the cell temperature detector has reached a temperature not
higher than a predetermined value at a time of stopping power
generation; wherein
the controller is programmed to drive the gas supply and
thereafter to drive the aqueous solution supply at a time of
starting the fuel cell system.
REJECTIONS ON APPEAL
The Examiner rejected the claims under pre-AIA 35 U.S.C. § 103(a)
as follows:
I. Claims 1, 2, 5, and 8 as unpatentable over Tung et al.4
(hereinafter “Tung”) and Mund;5
II. Claim 6 as unpatentable over Tung, Mund, and the
Appellants’ Admitted Prior Art;
III. Claims 7, 11, and 12 as unpatentable over Tung, Mund,
and Muramatsu;6
IV. Claim 9 as unpatentable over Tung, Mund, and either
Yumita et al.7 or Masunishi et al.8; and
V. Claim 10 as unpatentable over Tung, Mund, Muramatsu,
and Inai et al.9
(Final Act. 3—9; Ans. 2—8.10)
4 US 2007/0259224 Al, published November 8, 2007.
5 US 2002/0076585 Al, published June 20, 2002.
6 US 2008/0124595 Al, published May 29, 2008.
7 US 2006/0029847 Al, published February 9, 2006.
8 US 2007/0072029 Al, published March 29, 2007.
9 US 2007/0087238 Al, published April 19, 2007.
10 In the Answer (Ans. 9—11), the Examiner states that claim 13 also stands
rejected. Claim 13, however, was canceled by an Amendment entered for
purposes of appeal on November 10, 2014 (Advisory Action 2).
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DISCUSSION
The Appellants do not argue the rejections separately (Appeal Br. 3—
8). Nor do they present any argument in support of the separate patentability
of any particular claim (id.). Rather, they rely solely on arguments made in
support of independent claim 1 for all other claims on appeal—namely,
dependent claims 2, 3, and 5—12 (id. at 8). Accordingly, all rejections rise or
fall with the rejection of claim 1, which we select as a representative claim
pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Tung describes a fuel cell system including
every limitation recited in claim 1 except: (1) “Tung does not expressly
characterize the value for initiating the stopping [of the gas supply] as a
predetermined value” (Final Act. 3); and (2) “Tung does not expressly teach
the controller being programmed to drive the gas supply and thereafter to
drive the aqueous solution supply at a time of the starting of the fuel cell
system” (id. at 4).11 With respect to difference (1), the Examiner finds that
Tung teaches stopping the gas supply when a detected temperature in the
fuel cell reaches a value not higher than a determined value and that this
determined value is a measured ambient temperature outside the fuel cell
plus a constant (id. at 3). Specifically, the Examiner states (id. at 4):
Since the ambient temperature outside the fuel cell would
be a constant for some applications, such as stationary plants or
any fuel cell in a controlled environment, it would have been
obvious to a person having ordinary skill in the art at the time of
invention to replace the measured ambient temperature with a
constant value, such as 22° C or another value accepted as room
temperature. In this case, the determined value of item 240 [in
11 With respect to difference (2), the Examiner relied on Mund (Final Act. 4—
5). The Appellants do not contest this aspect of the Examiner’s obviousness
analysis (Appeal Br. 3—8).
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Application 12/645,605
Figure 2] would become a predetermined value, thereby reading
on the comparison with a determined value requirement.
Moreover, the Examiner finds that “there is no evidence of record to
indicate that the plain meaning of ‘predetermined value’ would exclude non­
constant values” and, from this finding, concludes that the “[t]he plain
meaning of predetermined value is a value which has previously been
determined” (Ans. 12). According to the Examiner, “the broadest
reasonable interpretation that a skilled artisan at the time of invention may
apply includes embodiments wherein the predetermined value is a non­
constant value, such as an ambient value plus a constant [as in Tung]” and
that interpretation is consistent with the current Specification (id. at 13—
14).12
The Appellants, on the other hand, contend (Appeal Br. 4—5)
(emphasis added):
Since the fuel cell system of Tung et al. is configured to
detect ambient temperatures, the fuel cell system of Tung et al.
is clearly intended and configured to be used in environments
having different ambient temperatures, and is not intended to
be used in temperature controlled environments because, if it
were, there would have been no reason to incur the additional
costs and parts required to include the temperature detection and
feedback control system provided in Tung et al.
According to the Appellants (id. at 4—5), the Examiner’s proposed
modification would render the prior art invention being modified
12 The Examiner refers to Suzuki (US 2004/0115497 Al, pub. June 17,
2004) as evidence (Ans. 13). As the Appellants point out (Reply Br. 2),
Suzuki is not included in the statement of the rejection and, therefore, we do
not consider it. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (“Where
a reference is relied on to support a rejection, whether or not in a ‘minor
capacity, ’ there would appear to be no excuse for not positively including
the reference in the statement of rejection.”).
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unsatisfactory for its intended purpose because it would result in short
circuits as suggested in Tung’s paragraphs 3 and 5. The Appellants argue
further that the Examiner’s statement that the ambient temperature in some
applications would be constant is pure speculation and “this allegation
ignores the clear teachings of Tung et al. that the fuel cell system disclosed
therein is intended to be used in environments in which the temperature
varies” {id. at 5—6). In addition, the Appellants contend that “the Examiner
has essentially admitted that he is unable to point to any evidence in the
record or any improved function of the fuel cell system of Tung et al. that
would result from the Examiner’s proposed modification” {id. at 6). Lastly,
the Appellants argue that the Examiner’s claim construction that
“predetermined value” need not be a constant value is unreasonable in view
of the Specification {id. at 7; see also Reply Br. 2—3).
The Appellants’ arguments fail to identity a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We start with the Appellants’ last argument concerning the proper
claim interpretation for “predetermined value” because, in our view, it raises
an issue that is dispositive to this appeal. “[Djuring patent prosecution when
claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.” In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). “Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”
Id. at 322. “[A]s applicants may amend claims to narrow their scope, a
broad construction during prosecution creates no unfairness to the applicant
or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007).
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Contrary to the Appellants’ position (Appeal Br. 7) (relying on Spec.
1145), the Specification does not limit “predetermined value” to a constant
value. As the Examiner points out (Ans. 13—14), the Specification (| 145)
merely describes an exemplary or preferred threshold value (“preferably
about 50 -C”). The Appellants fail to direct us to any description in the cited
paragraph (or any other description in the Specification) indicating that a
“predetermined value,” as recited in claim 1, must necessarily be constant
for all environments and situations. Absent any special or scope-limiting
definition in the Specification for the disputed terms, the Examiner correctly
applied the broadest reasonable interpretation to include predetermined
values that take account of pre-identified factors including those that may be
variable (e.g., ambient temperatures). ICON Health, 496 F.3d at 1379 (“[W]e
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”).13
Giving the disputed claim terms their broadest reasonable
interpretation consistent with the Specification, we discern no reversible
error in the Examiner’s finding that Tung describes a “predetermined value”
as required by claim 1. Specifically, Tung describes a shut-down procedure
for a fuel cell in which a control unit stops a pump supplying a fuel solution
to the anode but allows a fan to dissipate heat and supply oxygen to the
cathode until “the temperature difference between the inside and the outside
13 The Appellants allege that “the Examiner’s incorrect and inconsistent
interpretation of Appellants’] claimed features is clearly improper,
especially at this late stage of prosecution” (Appeal Br. 7). To the extent
that the Appellants are arguing that they did not have a fair opportunity to
react to the Examiner’s rejection (In re Kronig, 539 F.2d 1300, 1302 (CCPA
1976)), such an argument should have been raised by a timely-filed petition
pursuant to 37 C.F.R. § 1.181. See MPEP § 706.07(c).
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Application 12/645,605
of the fuel cell is lower than a specified value” flflf 8, 17). Thus, although
Tung’s “temperature difference” depends partly on the temperature outside
the fuel cell (i.e., ambient temperature, which may or may not be constant
depending on the fuel cell’s specific location), Tung’s “specified value” is in
fact “predetermined” to the extent that the determining factors—whether
fixed or variable—are identified and programmed into the control unit
before the shutdown procedure is initiated.
The Appellants’ contention (based on Spec. Tflf 2—10, 146—148) that
the invention prevents and minimizes leakages of aqueous fuel solution to
the cathode while reducing catalyst deterioration is insufficient as secondary
indicia of nonobviousness because it is not based on objective evidence such
as a declaration including comparative test results between the invention as
broadly recited in claim 1 and the closest prior art. In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.”).
For these reasons, we uphold the Examiner’s rejection as applied
against claim 1.
Our discussion above concerning the proper interpretation of
“predetermined value” is dispositive. Nevertheless, we briefly address some
of the Appellants’ other arguments below.
First, we find nothing in Tung’s paragraphs 3 and 5 that would
support the Appellants’ argument (Appeal Br. 4—5) that Tung’s fuel cell
would not be operable under constant or stable ambient temperature
conditions due to mist that may be generated, thus causing a short circuit.
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Application 12/645,605
To the extent that such mist is in fact created and a short circuit does occur,
the Appellants’ claimed fuel cell would also be subject to the same problem.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Second, contrary to the Appellants’ position (Appeal Br. 5), we do not
consider the Examiner’s finding that certain environments for Tung’s fuel
cell would include constant or substantially constant ambient temperatures
(e.g., indoor use in a controlled environment) to be based on pure
speculation or unreasonable. A person having ordinary skill in the art would
have known that certain indoor environments would be maintained at
constant or substantially constant temperatures. In this regard, our
reviewing court has previously explained that an obviousness analysis “may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc. 587
F.3d 1324, 1329 (Fed. Cir. 2009).
Third, the Appellants’ argument (Appeal Br. 6) that the Examiner’s
proposed modification of Tung would not result in any improved function is
also unpersuasive. This is so because obviousness does not require that the
prior art disclose or suggest the claimed combination to be the most
desirable combination. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
Rather, “when a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v.
Ag. Pro, Inc., 425 U.S. 273, 282 (1976)).
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For these reasons and those well-stated by the Examiner, we affirm
the Examiner’s rejections.
SUMMARY
Rejections I—V are affirmed. Therefore, the Examiner’s final decision
to reject claims 1, 2, and 5—12 is affirmed.
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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