Ex Parte Furusawa et al

Patent Trial and Appeal Board

Nov 18, 2016

12562590 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/562,590 09/18/2009 Koichiro FUR USA WA
959 7590 11/22/2016
NELSON MULLINS RILEY & SCARBOROUGH LLP
FLOOR 30, SUITE 3000
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BOSTON, MA 02109
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
TOW-279RCE 4542
EXAMINER
WANG, EUGENIA
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
11/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipbos ton.docketing@nelsonmullins.com
chris.schlauch@nelsonmullins.com
ipqualityassuranceboston@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOICHIRO FURUSA WA, KENT ARO NAGOSHI,
HIDEAKI KIKUCHI, SHUICHI TOGASA WA, and
Y ASUNORI KOTANI
Appeal2015-005908
Application 12/562,590
Technology Center 1700
Before LINDA M. GAUDETTE, ELIZABETH M. ROESEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3---6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion below we refer to the Final Action mailed April 25, 2014
("Final Act."); the Appeal Brief filed December 19, 2014 ("App. Br.); and
the Examiner's Answer mailed March 13, 2015 ("Ans.").
2 Appellants identify Honda Motor Co., Ltd. as the real party in interest.
App. Br. 2.
Appeal2015-005908
Application 12/562,590
The claims are directed to a fuel cell stack. Claim 1, reproduced
below with the disputed phrase highlighted, is illustrative of the claimed
subject matter:
1. A fuel cell stack, comprising
a stack body formed by stacking a plurality of power
generation cells, the power generation cells each comprising
one or more electrolyte electrode assemblies and a pair of
separators, the one or more electrolyte electrode assemblies
each including a pair of electrodes and an electrolyte interposed
between the pair of electrodes,
reactant gas flow fields being formed along electrode
surfaces of the power generation cells,
reactant gas passages being connected to the reactant gas
flow fields and extending through the power generation cells in
a stacking direction,
terminal plates, insulating plates, and end plates being
provided at opposite ends of the stack body in the stacking
direction, the end plates including a first end plate and a second
end plate provided at an opposite end of the stack body from
the first end plate,
reactant gas pipes being connected to the first end plate ,
the reactant gas pipes communicating with the reactant gas
passages, and
a coolant pipe connected to the second end plate, the
coolant pipe communicating with a coolant passage extending
through the power generation cells in the stacking direction,
wherein one or more dummy cells corresponding to the
power generation cells are provided at each end of the stack
body in the stacking direction, the dummy cells each including
a dummy electrode assembly having an electrically conductive
plate corresponding to the electrolyte, and dummy separators
sandwiching the dummy electrode assembly, the dummy
separators having a structure identical to the pair of separators,
wherein a number of the dummy cells provided near the first
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Appeal2015-005908
Application 12/562,590
end plate that is connected to the reactant gas pipes is larger
than the number of the dummy cells provided near the second
end plate at the opposite end of the stack body, and
wherein a plurality of dummy cells is provided near one
of the end plates and one of the plurality of dummy cells is
disposed adjacent to the stack body, and wherein a flow of a
coolant between the stack body and the one of the plurality of
dummy cells adjacent to the stack body is limited, and the
coolant flows between the remaining dummy cells of the
plurality of dummy cells.
App. Br. 27-28.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Asai et al., US 2003/0215693 Al Nov. 20, 2003
("Asai")
Nishiyama et al., US 2006/0110649 Al May 25, 2006
("Nishiyama")
Suzuki et al., US 2007 /0218332 Al Sept. 20, 2007
("Suzuki")
Jinba et al., US 2008/0187805 Al Aug. 7, 2008
(Jinba")
REJECTIONS
The claims are rejected as unpatentable under 35 U.S.C. § 103(a) over
Jinba in view of Suzuki, Nishiyama, and Asai.
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Appeal2015-005908
Application 12/562,590
OPfNION
Appellants argue claims 1 and 4---6 as a group. App. Br. 11. We
select independent claim 1 as representative of the group. Claims 4--6 will
stand or fall with claim 1. Appellants argue for the separate patentability of
claim 3. Id. at 9.
For the reasons discussed in the Final Action and the Answer,
Appellants have not persuaded us of reversible error. We add the following
primarily for emphasis.
Obviousness of claim 1
The Examiner finds that Jinba explicitly teaches most of the
limitations of claim 1, and acknowledges that Jinba does not teach that (a)
the coolant pipe connects to the opposite end from the reactant pipes; (b) the
number of dummy cells on each end of the fuel cell stack is different; and ( c)
the flow of coolant is limited between the stack body and an adjacent
dummy cell, but the coolant flows between the remaining dummy cells.
Final Act. 4.
The Examiner relies on Suzuki for teaching (a): reactant inlets (and
outlets) on the opposite end of the stack from the coolant inlet and outlet. Id.
For (b) above, the Examiner relies on Nishiyama for teaching that dummy
cells function as heat insulating layers because heat insulating spaces are
formed within a dummy cell as well as between dummy cells, and on Asai
for teaching providing more cells on the reactant inlet/ outlet end of a stack
than on the other end of the stack. Id. at 5---6.
Appellants do not dispute the above findings of the Examiner. App.
Br. 13. Instead, they argue that the Examiner had not provided sufficient
evidence or reasoning to support a finding that the ordinary artisan would
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Appeal2015-005908
Application 12/562,590
have further modified Jinba's structure to allow the flow of coolant between
the added dummy cells. Id. Appellants contend that none of the references
suggest a structure that would initially restrict coolant flow (between the end
power generation unit and the first dummy cell) and then allow flow to be
restored in the vicinity of subsequent dummy cells. Id. at 14. Appellants
further argue the Examiner fails to provide any rationale to support the
selective removal of only some elements from the proposed combination of
references while retaining other elements. Id. at 15-17. Specifically,
Appellants contend that if the Examiner were to simply multiply Jinba's
dummy cell, heat insulating layer ( 64) would also necessarily be copied,
providing a coolant flow field between adjacent dummy cells (unlike in the
instant claimed invention). Id. at 15. Appellants further suggest that, if it
would be obvious for one of ordinary skill in the art at the time of the
invention to remove the seal from heat insulating layer ( 64) in the second
dummy cell, for consistency, one would also remove the seal from the first
dummy cell, resulting in elimination of heat insulation layer (64). Id. at 15-
16.
The Examiner contends that, because Nishiyama teaches that heat
insulating spaces are created within a dummy cell as well as between
dummy cells, one of ordinary skill in the art would have found it obvious to
substitute multiple dummy cells (as taught by Asai) in place of multiple
insulation portions within a dummy cell (as disclosed by Nishiyama) with
the predictable result of providing heat insulation. Final Act. 5---6. The
combination of the disclosures of Nishiyama/ Asai and Jinba would result in
a structure having a coolant flow field between the addeddummy cells, as the
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Appeal2015-005908
Application 12/562,590
insulation space created by dummy cells can be substituted for the insulation
space created by limiting coolant flow. Id. at 7-8.
The Examiner argues that dummy cells and flow-restricted coolant
flow fields are both known to be heat insulators, thus the substitution of one
for another, even in a selective manner, is obvious. Ans. 10. The Examiner
argues that Jinba teaches multiple insulating regions, and the substitution of
dummy cells for insulating regions is not limited to being applied to all of
Jinba's insulating regions. Id. at 10-11. Therefore, the Examiner concludes
that the combination of references would retain the insulating region where
coolant is limited, as claimed, while other insulating regions would be
substituted with additional dummy cells which allow coolant flow.
The Examiner notes that, when considering obviousness of a
combination of known elements, the operative question is "whether the
improvement is more than the predictable use of prior art element according
to their established functions." Ans. 16 (quoting KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The Examiner determines that the selective
substitution of one heat insulator for another, even in a selective manner,
would yield the predictable result of providing heat insulation, making the
combination obvious. Ans. 15. "Since flow-restricted coolant flow fields
and dummy cells are equivalents for heat insulators, substitution of one,
some, or all of one structure for another would still yield an equivalent
structure and provide a predictable result." Id.
The Examiner thus provides a reason for one of ordinary skill in the
art at the time of the invention to combine the references and make the
proposed substitutions resulting in the claimed invention.
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Appeal2015-005908
Application 12/562,590
Appellants' other arguments address the references individually. See
App. Br. 17, 20-22. One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Each reference cited by the Examiner must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole. See id.
For the reasons above, we sustain the Examiner's rejection of claim 1.
The rejection of dependent claims 4--6 is likewise sustained.
Obviousness of claim 3
Appellants argue the separate patentability of claim 3, which depends
from claim 1. App. Br. 27.
Claim 3 recites:
[a] fuel cell stack according to claim 1, wherein each of the
dummy cells includes a plurality of reactant gas flow fields, and
wherein, in the dummy cells, a flow of an oxygen-containing
gas to one of the plurality of reactant gas flow fields is limited,
and a fuel gas is supplied to at least one other of the plurality of
reactant gas flow fields.
Id. at 28.
Claim 3 is rejected over Jinba in view of Suzuki, Nishiyama, and
Asai. Final Act. 2. With respect to claim 3, the Examiner finds that Jinba's
dummy cells include a plurality of reactant gas flow fields, and Jinba teaches
limiting flows in different manners to create insulating layers. Id. at 8
Appellants argue that none of the prior art references teach the
restriction of the oxygen-containing gas flow field or the fuel gas flow field.
Id. at 24.
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Appeal2015-005908
Application 12/562,590
The Examiner notes that Appellants recognize that both flowing and
limiting the flow of fuel and oxygen-containing gases to dummy cells are
known. Ans. 21. The Examiner finds that modifying the structure of the
prior art combination to limit the flow of one gas and not the other would
have achieved a desired, predictable result, namely to flow gas would result
in removing water, while not flowing gas would result in improved heat
insulation. Id. at 20-21. (citing Jinba i-fi-1 66, 68---69). In addition, the
Examiner finds that Appellants' arguments are not commensurate in scope
with claim 3. Id. at 21.
We agree with the Examiner that Appellants' arguments are not
persuasive of reversible error in the Examiner's conclusion of obviousness
as to claim 3 .
DECISION
For the above reasons, the Examiner's rejection of claims l and 3---6 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)(l)(iv) (2014).
AFFIRMED
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