Ex Parte Janarthanam et al

Patent Trials and Appeals Board

Sep 27, 2017

12899156 - (D) (P.T.A.B. Sep. 27, 2017)

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.
12/899,156 10/06/2010 Suriyaprakash Ayyangar Janarthanam 83151199 5201
28395 7590 09/29/2017
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER LEONG, JONATHAN G
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
docketing @brookskushman. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURIYAPRAKASH AYYANGAR JANARTHANAM and
VICTOR DOBRIN
Appeal 2016-005382
Application 12/899,156
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision rejecting claims 1, 8—10, 21—23, 28, 30, 33, 35, 39, and
43—50. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Our decision refers to the Specification (Spec.) filed October 6, 2010, the
Examiner’s Final Office Action dated January 20, 2015, Appellants’ Appeal
Brief (Appeal Br.) filed September 21, 2015, the Examiner’s Answer (Ans.)
dated February 26, 2016, and Appellants’ Reply Brief (Reply Br.) filed April
26, 2016.
2 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. Appeal Br. 3.
Appeal 2016-005382
Application 12/899,156
We AFFIRM but designate our affirmance a NEW GROUND OF
REJECTION.
STATEMENT OF THE CASE
The invention relates to a fuel cell system including a fuel cell having
a cathode and an anode, a pair of valves connected to a cathode inlet and a
cathode outlet, respectively, and a controller configured to control the valves
during transitions between operation and non-operation, and vice versa.
Spec. 2:6—19. Appellants disclose that during a soak time period between
shutdown and restart of normal operation, some or all of the remaining
unreacted hydrogen on the fuel cell’s anode side migrates through the
membrane and reacts with the oxygen on the cathode side. Id. at 1:23—27.
According to Appellants, this process depletes hydrogen on the anode side,
allowing oxygen or air from the cathode side to migrate to the anode side,
thereby increasing an anode half cell potential. Id. at 1:27—31. As a result,
Appellants disclose that this oxygen may cause carbon corrosion and
ruthenium migration from an anode catalyst layer to a cathode catalyst layer,
which may reduce fuel cell stack life. Id. at 1:31—34.
To address this issue, Appellants disclose that, at the beginning of the
soak time period, the controller is configured to close both valves to
minimize the amount of oxygen in the fuel cell while non-operational. Id. at
3:10-17.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
in each of the rejections are italicized.
1. A fuel cell comprising:
a cathode and an anode, each having an inlet and outlet;
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Application 12/899,156
a first and second valve connected to the cathode inlet
and outlet, respectively, by first and second conduits,
respectively; and
a controller programmed to control the valves during a
soak time between a shutdown of normal operations and a
restart of normal operations by closing the first and second
valves at shutdown and maintaining the closed position to close
flow through the valves during the soak time while minimizing
retained oxygen in the cathode, the anode outlet depleting
hydrogen in the anode through the anode outlet during the soak
time.
Independent claims 23 and 28 similarly recite fuel cell systems with a
controller programmed to control valves connected to a cathode inlet and a
cathode outlet. Each of these claims further recites “a cathode and an anode,
each having an inlet and outlet” and “the anode outlet depleting an amount
of hydrogen in the anode through the anode outlet to prevent carbon
corrosion of the anode during the soak time.”
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
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Application 12/899,156
1. Claims 1, 8—10, 21—23, 28, 30, 33, 35, 39, and 43—50 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement;
2. Claims 1, 8—10, 21—23, 28, 30, 33, 35, 39, and 43—50 under 35
U.S.C. § 112, second paragraph, as indefinite;
3. Claims 1 and 43 under 35 U.S.C. § 102(b) as anticipated by
Joos;3 and
4. Claims 8—10, 21—23, 28, 30, 33, 35, 39, and 44—50 under 35
U.S.C. § 103(a) as unpatentable over Joos alone or in view of various
combinations of secondary prior art.4
ANALYSIS
Rejection 2: § 112, second paragraph
The Examiner determines that the claims are indefinite because of the
recitation, “the anode outlet depleting hydrogen in the anode through the
anode outlet during the soak time,” in claim 1, and the similar recitations in
claims 23 and 28. Ans. 4—5. The Examiner construes these claims as
requiring the controller to be programmed to perform the recited function,
because the recitation is not separated by a semi-colon nor indented from the
rest of the controller clause, as would be consistent with the remainder of the
claim if it were a separate and distinct limitation. Id.', see also id. at 18. On
3 Joos, US 2005/0026022 Al, pub. Feb. 3, 2005.
4 Appellants do not separately argue any of the rejections under 35 U.S.C. §
103(a) except the rejection of claims 23, 28, 30, 33, 35, and 44—50 as
unpatentable over Joos in view of Suh (US 6,809,060 B2, issued Oct. 26,
2004). However, Appellants only substantively argue Joos for substantially
the same reasons as raised against Joos in the anticipation rejection under 35
U.S.C. § 102(b). Accordingly, we need not further address these rejections.
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Application 12/899,156
the other hand, Appellants urge that the recitation represents a separate and
distinct limitation from the controller clause. Appeal Br. 6.
In order to properly consider the issues in this case, it is necessary to
begin by considering the intertwined issues of claim interpretation and claim
indefiniteness. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1567 (Fed. Cir. 1987) (“Analysis begins with a key legal question—what is
the invention claimed?”); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)
(stating in the context of a review of rejections under both the first and
second paragraph of § 112 that “[a]ny analysis in this regard should begin
with the determination of whether the claims satisfy the requirements of the
second paragraph.”); Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d
1374, 1379 (Fed. Cir. 1999) (“an analysis under § 112,12 is inextricably
intertwined with claim construction.”).
Here, claim 1 recites an anode inlet and an anode outlet, and further
recites that the anode outlet depletes hydrogen through the outlet during
soak. Claim 1 makes no further mention of the anode outlet nor does it
include explicit language indicating whether hydrogen depletes through the
anode outlet during soak only or whether this depletion occurs at all times
during operation and non-operation of the fuel cell. Further, while the
hydrogen depletion recitation is part of the controller clause and thus leads
the Examiner to determine that claim 1 requires the anode outlet to somehow
be under the control of the controller, Appellants contend that the controller
does not control the anode outlet or the hydrogen depletion therethrough.
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Given these circumstances, the language of claim 1 is ambiguous as to the
anode outlet and its functioning.
It is appropriate, in situations like this, to look to Appellants’
Specification for guidance in interpreting a claim to resolve ambiguities
therein. See United States v. Adams, 383 U.S. 39, 49 (1966) (“[I]t is
fundamental that claims are to be construed in the light of the specifications
and both are to be read with a view to ascertaining the invention.”). In this
case, Appellants’ Specification fails to describe any anode inlet or anode
outlet so as to guide our interpretation of the claims. Instead, Appellants
merely disclose a cathode inlet and a cathode outlet. Spec. 2:8. Appellants
further disclose that input and output valves may be connected to respective
conduits at the cathode for controlling the flow of air and/or oxygen into the
cathode and the flow of gas exiting the cathode. Id. at 6:26—31; Fig. 2,
cathode inlet conduit 38 and cathode outlet conduit 40. Appellants do not
direct our attention to any disclosure of an anode inlet or an anode outlet
comparable to the disclosed cathode inlet and outlet, nor do we find any.
Appellants also disclose that during the soak time period in a fuel cell,
some or all of the remaining unreacted hydrogen on the anode side migrates
through the membrane and reacts with oxygen on the cathode side, thereby
depleting hydrogen in the anode side. Spec. 1:27—28. However, Appellants
fail to direct our attention to any disclosure of how an anode outlet depletes
hydrogen through the anode outlet, nor do we find any. Moreover, because
of the lack of any description of an anode outlet or its function, we are
unable to find any disclosure that causes depletion of hydrogen through the
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anode outlet during soak to be under the control of the controller, or that
such occurs upon the closure of the cathode inlet and outlet valves.
Accordingly, Appellants’ claims are indefinite because, as the
Examiner notes, the only disclosed mechanism for hydrogen depletion is the
membrane, yet the membrane is not described as an inlet or outlet, especially
when viewed in light of Appellants’ disclosure of cathode inlet and outlet.
We are unable to determine what the anode outlet is, especially whether it is
or is not the membrane, or how it performs the hydrogen depletion function
during soak. Because our findings and reasoning differ from that of the
Examiner, we sustain, but designate this rejection as a new ground.
Rejection 1: § 112, first paragraph, written description
The Examiner finds the recitation in claim 1, “the anode outlet
depleting hydrogen in the anode through the anode outlet during the soak
time,” and similar limitations in claims 23 and 28, is new matter that lacks
adequate written descriptive support in the original disclosure. Ans. 2.
Appellants assert that the Specification’s statement on page 5, lines 21 and
22 that “[o]ver time, depending upon the length of the soak, hydrogen
depletes in the anode side,” supports this recitation. Appeal Br. 6.
To satisfy the written description requirement of 35 U.S.C. § 112,11,
the specification must describe the invention in sufficient detail so “that one
skilled in the art can clearly conclude that the inventor[s] invented the
claimed invention as of the filing date sought.” Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). As we indicated above, we are
unable to find any description of an anode inlet or an anode outlet, much less
a description of depleting hydrogen through the anode outlet rather than via
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migration through the membrane during the soak. Appellants do not direct
our attention to any original written description of an anode outlet, much less
a description that hydrogen depletes through an anode outlet. The statement
Appellants refer to in the Specification on page 5 discusses the depletion of
hydrogen, not through any anode outlet, but by migration of hydrogen to the
cathode side and subsequent reaction with oxygen. See Spec. 5:17—21
(“During a soak time period . . . some or all of the remaining unreacted
hydrogen on the anode side migrates through the membrane and chemically
reacts with the oxygen in the cathode side.”).
Appellants disclose a cathode inlet and a cathode outlet, and provide
input and output valves connected to respective conduits at the cathode for
controlling the flow of air and/or oxygen into the cathode and the flow of
gas exiting the cathode. Spec. 2:8 and 6:26—31; Fig. 2, cathode inlet conduit
38 and cathode outlet conduit 40. Because Appellants use the terms “inlet”
and “outlet” in a manner distinct from the flow of gas through the
membrane, interpreting the anode outlet as encompassing a membrane
would not be “consistent with the specification,” In re Smith Int’l, Inc., No.
2016-2303, slip op. at 13 (Fed. Cir. Sept. 26, 2017). Given that Appellants
do not describe any anode outlet, it follows that there is also no description
for how an anode outlet depletes hydrogen during the soak.
Appellants’ disclosure fails to demonstrate possession of an anode
inlet and an anode outlet, where the anode outlet depletes hydrogen through
the anode outlet during the soak apart from the membrane. Accordingly, we
will sustain the Examiner’s written description rejection. However, because
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our findings and reasoning differ from that of the Examiner, we designate
this rejection as a new ground.
Rejection 3: §102 anticipation by Joos
Speculative assumptions would be required to determine the scope of
the claims and to evaluate the 35 U.S.C. §§ 102 and 103 rejections. In such
a situation, it is not appropriate to sustain prior art rejections. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962). Therefore, we procedurally reverse
the Examiner’s rejections over Joos alone or further in view of the secondary
prior art. In doing so, it is important to be clear that we have not reached the
merits of any of these prior art rejections and, therefore, do not preclude
their application in the future depending on the resolution of the above
rejections under 35 U.S.C. § 112.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner’s Answer,
the rejection of claims 1, 8—10, 21—23, 28, 30, 33, 35, 39, and 43—50
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is affirmed, but designated as a new ground;
the rejection of claims 1, 8—10, 21—23, 28, 30, 33, 35, 39, and 43—50
under 35 U.S.C. § 112, second paragraph, as indefinite is affirmed, but
designated as a new ground;
the rejection of claims 1 and 43 under 35 U.S.C. § 102(b) as
anticipated by Joos is procedurally reversed', and
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the rejections of claims 8—10, 21—23, 28, 30, 33, 35, 39, and 44—50
under 35 U.S.C. § 103(a) as unpatentable over Joos alone or in view of
various combinations of secondary prior art are procedurally reversed.
DECISION
The decision of the Examiner rejecting claims 1, 8—10, 21—23, 28, 30,
33, 35, 39, and 43—50 is affirmed, but designated as containing NEW
GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b) (effective
September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides “[a] new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2010).
AFFIRMED
NEW GROUND OF REJECTION
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