Ex Parte Herrmann

Patent Trial and Appeal BoardNov 7, 2012

11735253 (P.T.A.B. Nov. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/735,253 04/13/2007 Manfred Herrmann GP-305622-FCA-CHE 1600 65798 7590 11/08/2012 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD AVENUE SUITE 200 BLOOMFIELD HILLS, MI 48304 EXAMINER CULLEN, SEAN P ART UNIT PAPER NUMBER 1725 MAIL DATE DELIVERY MODE 11/08/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GM GLOBAL TECHNOLOGY OPERATIONS LLC (Application 11/735,253) ____________ Appeal 2011-011746 Application 11/735,253 from Technology Center 1700 Sean P. Cullen, Examiner ____________ Before RICHARD TORCZON, GRACE KARAFFA OBERMANN and DONNA M. PRAISS, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The appellant (GM) seeks relief 35 U.S.C. 134(a) from the final rejection of claims 1, 3-5, 7, 8, 10, 11, 13, 16 and 18, all of the pending claims. We AFFIRM final rejection of claims 5, 13, 16 and 18, but REVERSE final rejection of the remaining claims. OPINION OVERVIEW GM discloses an invention that "relates generally to a closed coolant loop for a fuel cell stack in a fuel cell system and, more particularly, to a closed coolant Appeal 2011-011746 Application 11/735,253 2 loop for a fuel cell stack in a fuel cell system, where the system includes an expansion device having a flexible membrane."1 REJECTIONS On appeal, the examiner maintains the following final rejections: Claims 5, 13, 16 and 18 are rejected for lack of written description under the statutory provision now codified at 35 U.S.C. 112(a).2 Claim 8 is rejected as having been anticipated, 35 U.S.C. 102(b),3 by a patent to Cipollini.4 Claims 1, 4 and 7 are rejected as having been obvious, 35 U.S.C. 103,5 from the combined disclosures of a patent to Meyer et al. (Meyer)6 and the Cipollini patent. Claim 3 is rejected as having been obvious from the combined disclosures of the Meyer and Cipollini patents, as well as published applications of Shiraishi et al. (Shiraishi)7 and of Bai et al. (Bai).8 Claim 10 is rejected as having been obvious from the combined disclosures of Cipollini, Shiraishi and Bai. 1 Spec. Â¶0001. 2 Ans. 4. 3 Id. at 6. 4 N.E. Cipollini, Inerting a fuel cell with a wettable substrate, US 6,379,827 B1 (issued 30 April 2002). 5 Ans. at 6. 6 A.P. Meyer, G.W. Scheffler & P.R. Margiott, Water management system for solid polymer electrolyte fuel cell power plants, U.S. Pat. 5,503,944 (issued 2 April 1996). 7 K. Shiraishi, M. Ando & M. Horiguchi, Fuel cell stack, US 2003/0162066 A1 (pub'd 28 August 2003). 8 D. Bai, J.-G. Couinard & D. Elkaim, Integrated fuel cell power module, US 2006/0068250 A1 (pub'd 30 March 2006). Appeal 2011-011746 Application 11/735,253 3 Claims 11 and 15 are rejected as having been obvious from the combined disclosures of Meyer and of a patent to Grasso and others (Grasso).9 WRITTEN DESCRIPTION Claim 5 depends from claim 4, which depends from claim 1.10 Claim 13 depends from claim 12.11 Claim 16 is independent. Claim 18 depends from claim 16. In claims 5 and 13, the examiner identifies the phrase "to prevent a pressure differential from occurring between cathode flow channels and cooling fluid flow channels in the stack" as lacking adequate written description.12 In claim 16, he identifies the phrase "such that a pressure differential between cathode flow channels and cooling fluid flow channels within the stack is prevented" as lacking adequate written description.13 The nub of the disagreement lies with the word "prevent[ed]". In each case, the examiner contends that prevention is inconsistent with the specification, which expressly teaches that "a pressure differential is created".14 According to the examiner:15 A skilled artisan would recognize that as the pressure on the cathode side of the stack increases or decreases in response to the stack load a pressure differential is created is between the air input line and the coolant loop. The membrane then allows the pressure within the air input line and the coolant loop to reach equilibrium and remove the pressure differential between the air input line and the coolant loop. 9 A.P. Grasso, R.D. Breault & L.L. Van Dine, Coolant treatment system for a direct antifreeze cooled fuel cell assembly, US 6,428,916 B1 (6 August 2002). 10 All claim language is taken from the claims appendix to GM's appeal brief. Br. 27-30, noted without objection at Ans. 4. 11 There is no pending claim 12, which means that claim 13 is facially indefinite for improper dependency. 35 U.S.C. 112(b) & (d). See page 6, infra. 12 Final Rej. 4. 13 Id. 5. This language is necessarily incorporated into dependent claim 18. 35 U.S.C. 112(d). 14 Final Rej. 4. 15 Id. 5. Appeal G referenc plan vie expansi coolant coolant support appears its speci c s th b st re st c 6 lin d c th o is in e c 16 Spec. 17 Br. 9- highligh 2011-0117 M's respo e to GM F w of a fue on device reservoir 4 loop 14.16 for the "pr in paragra fication:17 [0024 ompressor ide of the s e compres etween one ack 12. As sponse to ack 12 bet hannels. Ac 8 is couple e 72 so th ecreases fr ooling fluid [0025 e pump 16 n the stack provided b creased pr xpansion d oolant loop Â¶Â¶0012 & 10 (under t the langu 46 nse can be igure 2 (ri l cell syste 56, a comp 4 and a cl GM cont event" lim phs 0024 ] In one e 68 that pro tack 12. De sor 68 will and four b the pressu the stack lo ween the c cording to d to the air at as the a om the com within the ] Further, could dam 12 goes u y an increa essure from evice 56 as 14 will incr 0019-23. lining adde age on wh st be unde ght), whic m 40 with letely fille osed ends that itation and 0025 o mbodiment vides com pending o deliver com ar, which c re on the c ad, a pres athode flow this embod side 60 of ir pressure pressor 6 coolant loo cavitation a age comp p, the cooli sed speed the comp the stack ease, whic d in the b ich the ex 4 rstood wit h is a sche an d f , the syste pressed air n the dema pressed a hanges th athode sid sure differe channels iment of th the expans applied to 8, this pres p 14 throug s a result onents with ng fluid spe of the pum ressor 68 load goes h will reduc rief; doubl aminer rel h matic m 40 includ on line 70 nded load ir to the sta e pressure e of the sta ntial is cre and the co e invention ion device the stack 1 sure is tran h the mem of operatio in the syst ed needs p 16. By p to the air s up, the pre e the cavi e underlin ies). Applicati es an air to the cath on the stac ck 12 typic within the ck 12 incre ated within oling fluid f , the comp 56 on an a 2 increase sferred to brane 58. n of the imp em 40. As to increase roviding an ide 60 of th ssure withi tation. ing added on 11/735 ode k 12, ally ases in the low ressor ir input s or the eller of the load , which e n the in opinion ,253 to Appeal 2011-011746 Application 11/735,253 5 GM explains that "the expansion device enables pressure changes to transfer from the air side to the cooling fluid side such that a difference in pressure is minimized."18 GM argues that the teaching of "minimize" adequately supports "prevent" because it demonstrates possession of the claimed invention and, in any case, the difference between the apparently acceptable "minimize" and the unacceptable "prevent" is "insignificant".19 During examination, a claim must be given its broadest reasonable interpretation in view of the specification.20 The question is what would one of skill in the art understand "prevent" to mean in this context. We have neither testimony nor objective evidence to guide us,21 only the specification. The written description requirement serves a teaching function as a quid pro quo in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.22 The specification shows that the compressor, which creates pressure on the air side, also drives the membrane, which translates the pressure to the coolant loop. The pressure translation is essentially instantaneous and unmediated (for example, by sensors and control logic). The problem is that the specification itself expressly teaches that a pressure differential is created and, thus, as the examiner reasons, the pressure differential is not prevented, but rather addressed as it arises. "Prevent" is inherently a narrow term. A determination that "prevent" might include nearly instantaneous remediation within its reasonable scope is foreclosed to us by the express language GM used in its disclosure. 18 Id. 10. 19 Id. 10-12; Reply 2. 20 In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). 21 See Evidence Appendix, Br. 31 ("There is no evidence pursuant to [37 C.F.R.] Â§1.130, Â§1.131 or Â§1.132."). 22 In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008). Appeal 2011-011746 Application 11/735,253 6 The difference between "minimize" and "prevent" is not insignificant, as immediately becomes clear when one contemplates designing around or, alternatively, enforcing either "minimize" or "prevent". To the extent, GM contends that one skilled in the art would have understood "prevent" to mean "minimize" or vice versa, the contention presents a question of fact for which GM has not provided evidence.23 Argument of counsel is not probative. We must decide the question on the basis of the plain language of the specification and the claims, which is substantively inconsistent. While we have discretion to prescribe an amendment under Board Rule 50(c), in the present case we decline to do so. GM has not shown that it had exhausted its remedies with the examiner before filing its appeal brief.24 Moreover, it is unclear precisely how GM would amend its claims.25 This opinion, however, should not be read to preclude an examiner from entering appropriate amendments during any further examination. PRIOR ART REJECTIONS Anticipation by Cipollini The examiner finds that Cipollini anticipates claim 8. Claim 8 defines the invention as:26 A fuel cell system comprising: a fuel cell stack; 23 See Evidence Appendix, Br. 31 ("There is no evidence pursuant to [37 C.F.R.] Â§1.130, Â§1.131 or Â§1.132."). 24 For example, while we take notice that GM filed an after-final amendment, 37 C.F.R. Â§1.116(b), the amendment of record does not appear to address this issue. 25 In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997) (explaining that an applicant must either show that the examiner's position is unreasonable or amend the claim to better capture what was invented and so avoid the rejection). 26 Claims appendix, Br. 28 (emphasis added for contested limitations). Appeal lo fl se v c Cipollin controls T because imposin Ex parte 27 Cipol 28 Id. 6: 29 Final 30 164 U 31 Id. at 2011-0117 a coo a coo op, said c uid, said c nses the l ents accum ooling flui i Figure 1 the openi he examin it is direc g an actua Thibault lini 3:39-4 67-7:5. Rej. 2. SPQ 666 667. 46 lant loop f lant reserv oolant res oolant rese evel of the ulated ga d in the co (below) is ng and clo er contend ted to the m l limitation .30 In Thib 1. (Bd. App. or providi oir in fluid ervoir bein rvoir inclu cooling fl s from the olant rese a schema sing of the s that the anner of on the cl ault, the b 1969). 7 ng a coolin commun g complet ding a lev uid within coolant re rvoir decr tic diagram drain valv contested operating aimed app oard expla g fluid to ication wi ely filled w el sensing the coolan servoir if eases. of a poly c sy cir via c a T e 74.28 language i the fuel ce aratus,29 c ined that3 Applicati the stack; th the cool ith the co device th t reservoi the level of mer electr membran ell power stem 10.27 culates thr a line 64. onnects to accumula drain line valve 74, nd a level he level se s not entitl ll system r iting 1 on 11/735 and ant oling at r and the olyte e (PEM) f plant Coolant ough the c The line 6 a water tor 70 with 72, a drain a vent line sensor 76 nsor 76 ed to weig ather than ,253 uel ell 4 a 75 . ht Appeal 2011-011746 Application 11/735,253 8 If the apparatus as claimed is not fully described in [the prior art], it differs so little therefrom as to be obvious to the designer of apparatus. The purpose to which the apparatus is to be put and the numerous expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Thibault does not reproduce the apparatus claim in question, but expressly finds that it is very closely the same as the prior art. Thibault, thus, does not create a per se rule that contents and mode of operation never count, but rather simply holds that when disclosed structures are essentially the same and the contents and use would have been obvious from the prior-art structure, the lack of an express teaching of content and use will not prevent anticipation. In short, Thibault's holding cannot be abstracted from its context. Today, we might say that the prior- art apparatus was capable of containing and operating as claimed. In the present case, the assumptions in Thibault have not been demonstrated. In particular, the examiner has not demonstrated that one of skill in the art would understand that Cipollini would vent accumulated gas from the coolant reservoir whenever the coolant level decreased. Indeed, the examiner has not demonstrated that Cipollini is capable of meeting this condition. According to the examiner, Cipollini's vent is open to the atmosphere and, consequently, vents whatever the level of the cooling fluid may be.32 The examiner does not explain where this teaching may be found in Cipollini, either expressly or inherently. Cipollini does not appear to describe the operation of the reservoir vent, but describes control of the reservoir fluid level using the sensor-controlled drain.33 The examiner bolsters the argument that GM's content and use limitations cannot be limiting by noting a possible discrepancy between a coolant reservoir 32 Final Rej. 17. 33 Cipollini 7:64-67. Appeal 2011-011746 Application 11/735,253 9 completely filled with cooling fluid and one that also has accumulated gas, as required for the venting function.34 This discrepancy is moot, however, because we have no indefiniteness rejection before us. In sum, Cipollini does not anticipate the apparatus of claim 8 when the contested claim language is given appropriate weight. Obviousness over the combined teachings of Cipollini and others Claims 1, 3, 4, 7 and 10 are rejected as having been obvious from the combined disclosures Cipollini and various combinations of Meyer, Shiraishi and Bai. Claim 10 depends from claim 8. Claims 3, 4 and 7 depend from claim 1. Claim 1 includes the completely filled coolant reservoir and venting of accumulated gas limitations of claim 8. Meyer relates to a polymer electrolyte power plant.35 The examiner finds that Meyer does not disclose a coolant reservoir completely filled with cooling fluid or venting of accumulated gas from the reservoir if the level of cooling fluid decreases.36 Shiraishi discloses a fuel cell stack that facilitates startup under freezing conditions.37 The examiner finds that Shiraishi discloses a sensing device that opens a ventilation port of a reservoir in response to vehicle speed to control fuel cell stack temperature.38 The examiner does not rely on Shiraishi to show a coolant reservoir completely filled with cooling fluid or venting of accumulated gas from the reservoir if the level of cooling fluid decreases. 34 Final Rej. 7. 35 Meyer 1:7-15. 36 Final Rej. 9. 37 Shiraishi Â¶0001. 38 Final Rej. 11. Appeal 2011-011746 Application 11/735,253 10 Bai discloses a fuel cell power system.39 The examiner finds that Bai teaches a level-sensing switch for determining the cooling fluid level in the coolant reservoir.40 The examiner does not rely on Bai to show a coolant reservoir completely filled with cooling fluid or venting of accumulated gas from the reservoir if the level of cooling fluid decreases. It is not clear from the rejection how the combination of teachings would have made obvious GM's claimed fuel cell system with a coolant reservoir completely filled with cooling fluid or venting of accumulated gas from the reservoir if the level of cooling fluid decreases. Obviousness over the combined teachings of Meyer and Grasso Claims 11 and 15 are rejected as having been obvious from the combined disclosures of Meyer and Grasso. Claim 15, which is not separately argued, depends from claim 11. Claim 11 defines the invention as: A fuel cell system comprising: a coolant loop providing a cooling fluid to the stack; a coolant loop pump for pumping the cooling fluid through the coolant loop and the fuel cell stack; an expansion device including a membrane, an air side on one side of the membrane and a cooling fluid side on an opposite side of the membrane, said cooling fluid side being in fluid communication with the coolant loop, wherein the membrane flexes in response to pressure changes of the cooling fluid within the coolant loop; a compressor for providing air to a cathode side of the fuel cell stack, wherein the compressor also provides compressed air to the air side of the expansion device, such that the pressure transfers from the air side of the expansion device to the cooling fluid side of the expansion device; and 39 Bai, abstract. 40 Final Rej. 11-12. Appeal e d M membra membra assembl circulat through loop. A line 78 t coolant chambe referenc vessel 6 station 5 supplies pressuri oxidant referenc diaphra on the c such tha separato 41 Meye 2011-0117 a valv xpansion d evice to be eyer Figu ne.41 A co ne electro y 50. A p es the cool the coolan branch akes to one r 66 of a e 0. A 2 zed to the fuel e vessel 6 gm, separa oolant sid t some, bu r 62 to the r 3:66-4:2 46 e position evice, said connecte re 1 (below olant loop lyte ump 76 ant t cell assem 0 via a bra tes the cha e to counte t not all, o coolant lo . ed within valve all d to an ext , right) sh 68 provid bly 50 via nch line 5 mbers 64 ract some f the press op 68. 11 a line betw owing the ernal line. ows a fue es coolan a line 54 8. A separ , 66. A bia of the pre ure on the een the c air side of l cell syste t via a line and to the ator 62, w s spring 8 ssure A fro oxidant s Applicati ompressor the expan m with an 70 to an i other cha hich may 0 increase m the oxi ide is trans on 11/735 and the sion ion-excha on-exchan mber 64 o be a s the force dant side, lated via t ,253 nge ge f the B he Appeal G system an antif view of apparatu cell asse sufficien may be: a b 42 Grass 43 Id. 4: 44 Id. 10 45 Id. 11 2011-0117 rasso relat 100, partic reeze cool a coolant asse s 145, wit mbly 11. t to degas 45 ny known etween a l o 1:6-10. 66-5:2 :28-11:6. :7-11. 46 es to a fue ularly a co ant solutio system 10 mbly 11.4 h the majo Grasso ex the coola mass trans iquid strea l cell asse olant treat n.42 Grass 0 incorpor 3 An oxid rity of the plains that nt to an ac fer device m and a ga 12 mbly 11 w ment syst o Figure 2 ating a dir ant source speed blo reactant o 3%-7% o ceptable le capable o s stream. ith a coola em in dire (below, le ect antifre apparatus wer-pump b fue cont the am that is fed xidant go f the oxida vel.44 The f effecting Examples Applicati nt treatme ct commun ft) shows eze-cooled 147, typic , provides oxidant, ty the fuel assem dega appar treats re efore feed l cell asse rol valve ount of rea to the deg ing directl nt flow is degasifyi mass tran of such m on 11/735 nt ication w a schemat fuel cell ally a vari reactant pically ai cell bly 11. A sifying atus 145 actant oxi ing it to th mbly 11. 165 regula ctant oxid asifying y to the fu typically ng appara sfer ass ,253 ith ic able r, to dant e A tes ant el tus Appeal 2011-011746 Application 11/735,253 13 transfer devices are packed beds, wetted films, spray towers, or the like. GM argues that the Grasso degasifying apparatus 151 fed by the valve 165 is not an expansion device that flexes a membrane in response to pressure changes as claimed.46 In its reply, GM also urges that Meyer's use of a bias spring, an extra element, is an indicium that the claimed invention is not obviousness.47 Claim 11 does not exclude the use of a bias spring in the expansion device or require that all of the pressure be transferred from the air side to the coolant side. Consequently, if the claim is given its broadest reasonable interpretation, Meyer's use of a bias spring does not have any effect on the obviousness of claim 11. The difference between a degasifying apparatus and an expansion device is more problematic, however. The examiner proposes to modify Meyer with a valve between Meyer's two oxidant lines 54, 58 based on Grasso's teachings. Grasso's teachings, however, are specific to its degasifying apparatus. It is not clear from the rejection why one would add Grasso's valve to Meyer's system, which does not have a degasifying apparatus.48 INDEFINITENESS Claim 13 purports to depend from claim 12, but GM does not have a claim 12 pending in the application on appeal. The dependency for claim 13 is facially improper and its scope cannot be determined.49 Neither GM nor the 46 Br. 24-25. 47 Reply 3, citing Br. 19-21. 48 Use of a valve might substitute for the use of a bias spring by reducing the oxidant pressure in the expansion device. This rationale was not developed during examination, however, and the record does not provide sufficient basis for pursuing it now. 49 35 U.S.C. 112(b) & (d). Appeal 2011-011746 Application 11/735,253 14 Examiner has explained the discrepancy.50 Because we affirm a separate rejection of claim 13, we need not enter a new ground of rejection at this time, but the discrepancy should be resolved in any subsequent examination. HOLDING Final rejection of claims 5, 13, 16 and 18 is affirmed. Final rejection of the other pending claims is reversed. In sum, the final rejection isâ€” AFFIRMED-IN-PART For the appellant: JOHN A. MILLER and TAMARA A. CLARK, Miller IP Group, PLC, of Bloomfield Hills, Michigan. tc 50 E.g., Ans. 4, item (7): "The Examiner has no comment on the copy of the appealed claims contained in the Appendix to the Appellant's brief."