Ex Parte Matsumoto et al

Patent Trial and Appeal Board

Apr 19, 2016

12161605 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/161,605 07/21/2008
22511 7590 04/21/2016
OSHA LIANG LLP,
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Michihiko Matsumoto
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
17303/008001 2921
EXAMINER
MENON, KRISHNAN S
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
docketing@oshaliang.com
hathaway@oshaliang.com
dthomas@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHIHIKO MATSUMOTO and KEISUKE SUZUKI
Appeal2014-003541
Application 12/161,605 1
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the decision2 of the
Primary Examiner rejecting claims 1-10 and 21-23. Final Act. 2-8. We
have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was held on April
14, 2016. We reverse but enter a new ground of rejection.
OPINION
Appellants' invention "pertains to a type of fuel cell system that uses
an accessory to generate electric power from a fuel cell." Spec. ,-i 1.
1 Appellants identify the real party-in-interest as Nissan Motor Co., Ltd.
Appeal Br. 2.
2 Final Office Action, mailed June 11, 2013 ("Final Act.").
Appeal2014-003541
Application 12/161,605
Claim 1, reproduced below, is representative of the appealed subject
matter:
1. A fuel cell system of a type that uses an accessory to
supply fuel gas and oxidant gas to a fuel cell to generate electric
power, the fuel cell system comprising:
a load parameter detector that detects a load parameter of
the accessory,
an actual accessory power computing device that
computes the electric power actually consumed by the accessory
based on the detected load parameter,
a steady accessory power computing device that computes
a steady accessory electric power consumption by the accessory
that would be needed for supplying the fuel cell gas to generate
an amount of required electric power from the fuel cell system
based on the steady electric power consumption characteristics
of the accessory,
an accessory power correcting device that computes an
electric power correction quantity such that the electric power
correction quantity may be combined with the steady accessory
po,i:1er to approach the actual accessOf'J electric po,i:1er
consumption, and corrects the steady accessory electric power
consumption based on the electric power correction quantity, and
a power generation controller that controls the power
generation of the fuel cell system based upon a target net power,
excluding the accessory power, to be generated by the fuel cell
system and upon the computed steady accessory electric power
consumption corrected by the accessory power correcting
device.
Appeal Br. 18.
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Appeal2014-003541
Application 12/161,605
The Examiner rejected claims 1-10 and 21-23 under 35 U.S.C.
§ 103(a) as obvious over Suzuki. 3 Final Act. 3-8. In addition, the Examiner
objected to claims 21 and 23 "as being substantial duplicate[ s] of claims 1
and 22 respectively." Id. at 2-3.
Objection to Claims 21and23
Appellants appeal the objection to claims 21 and 23. Appeal Br. 6-8.
Review of the Examiner's "action[ s] or requirement[ s ]" may be either by
petition or by appeal to the Board, but any particular action can be reviewed
only in one way. 37 C.F.R. § l.18l(a)(l). Any "objection[] or
requirement[] not involved in the rejection of any claim" that is presented in
a final rejection is reviewable by petition. 37 C.F.R. § l. l 13(a). Here, the
Examiner objected to the duplicate claims rather than rejecting them, as
suggested in MPEP § 706.03(k). Accordingly, the objection to claims 21
and 23 is a petitionable matter that is outside of our jurisdiction.
Means-Plus-Function Claims
The Examiner found that the scope of claims 21 and 23 was identical
to the scope of claims 1 and 22 because neither set of claims could be
considered to be in the means-plus-function form authorized by 35 U.S.C.
§ 112, ,-i 6. Final Act. 2-3. The evidence of record does not support this
finding. To the contrary, all of Appellants' claims invoke the sixth
paragraph of§ 112.
When a claim uses the word "means," there is "a rebuttable
presumption that§ 112, para. 6 applies." Williamson v. Citrix Online, LLC,
3 Suzuki, US 2005/0244688 Al, published Nov. 3, 2005.
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Appeal2014-003541
Application 12/161,605
792 F.3d 1339, 1348 (Fed. Cir. 2015) (citing Personalized Media
Commc'ns, LLCv. Int'! Trade Comm'n, 161F.3d696, 703-04 (Fed. Cir.
1998)). When a claim does not use the word "means," this "does not
automatically prevent that element from being construed as a means-plus-
function element." Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed.
Cir. 1996). "What is important is ... that the term, as the name for
structure, has a reasonably well understood meaning in the art." Greenberg
v. Ethicon Endo-Surgery, Inc., 91F.3d1580, 1583 (Fed. Cir. 1996). The
sixth paragraph of§ 112 applies even in the absence of the word "means" if
"the claim term fails to 'recite sufficiently definite structure' or else recites
'function without reciting sufficient structure for performing that function."'
Williamson, 792 F.3d at 1349 (quoting Watts v. XL Systems, Inc., 232 F.3d
877, 880 (Fed. Cir. 2000)).
Here, there are two independent claims: claim 1 and claim 21. Appeal
Br. 18-21. These claims are identical except for claim l's use of "load
parameter detector," "computing device," "power correcting device," and
"controller" in place of claim 21 's "load parameter detecting means for
detecting," "computing means for computing," "power correcting means for
correcting," and "controlling means for controlling." Id. Claim 21 uses the
word "means" in each of these terms, and we have been directed to no
evidence of record that the presumption that§ 112, ,-i 6 applies has been
overcome, so claim 21 is a means-plus-function claim. In claim 1, the terms
"computing device," "power correcting device," and "controller" offer no
more structure than "computing means," "power correcting means," and
"controlling means," and, indeed, recite only their functions as further
limitations (e.g. "a power correcting device that computes a steady electric
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Appeal2014-003541
Application 12/161,605
power consumption ... "). Accordingly, claim 1 "fails to 'recite sufficiently
definite structure,"' Williamson, 792 F.3d at 1349 (quoting Watts, 232 F.3d
at 880), and, therefore, it also is a means-plus-function claim. All the other
claims on appeal depend from claims 1 and 21, Appeal Br. 18-21, so all
claims on appeal are means-plus-function claims.
Obviousness Rejection
Because the claims on appeal are means-plus-function claims, they
must "be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof." 35 U.S.C. § 112.
The Examiner has the burden in the first instance of interpreting the means-
plus-function clauses by determining the corresponding structure therefor in
the Specification and equivalents thereof in order to compare the thus
claimed invention with the prior art. See, e.g., In re Donaldson Co., 16 F.3d
1189, 1195 (Fed. Cir. 1994) (en bane) ("[T]he PTO was required by statute
to look to [the] specification and construe the 'means' language recited ...
as limited to the corresponding structure disclosed in the specification and
equivalents thereof."). The Examiner has not carried this burden in stating
the obviousness ground of rejection of Appellants' claims. Final Act. 3-7;
Answer 4-13. Given the incorrect claim construction, it would be error for
us to rely on the Examiner's obviousness findings. Tempo Lighting, Inc. v.
Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014).
Accordingly, we reverse the obviousness rejection.
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Appeal2014-003541
Application 12/161,605
New Ground ofRejection
Claims must "particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention." 35 U.S.C. § 112, ii 2.
As noted above, Appellants' claims are all means-plus-function claims that
"cover the corresponding structure, material, or acts described in the
specification and equivalents thereof." Id. ii 6; see Appeal Br. 18-21.
Accordingly, the claims must use means-plus-function terms that have a
properly described corresponding structure in Appellants' Specification.
As discussed above, Appellants' claims each include the terms "actual
accessory power computing device," "steady accessory power computing
device," and "power correcting device" (or "actual accessory power
computing means," "steady accessory power computing means," and "power
correcting means"). Appeal Br. 18-21. The function carried out by the
steady accessory power computing device (or means) is "comput[ ing] a
steady accessory electric power consumption by the accessory ... based on
the steady electric power consumption characteristics of the accessory." Id.
at 18. When a means-plus-function claim term recites a means for
computing a quantity, the structure described in the specification must
include an algorithm for performing the claimed function. Ergo Licensing
LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012).
Appellants' Specification describes the calculation of the steady accessory
power consumption as being "based on steady characteristics determined
either theoretically or empirically by testing the actual equipment
beforehand." Spec. ii 54. This is not an algorithm for performing the recited
calculation. Because all of Appellants' claims include the "steady accessory
power computing device" (or "steady accessory power computing means")
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Appeal2014-003541
Application 12/161,605
limitation, none of Appellants' claims satisfy the requirements of 35 U .S.C.
§ 112, ii 2.
The same is true for the "actual accessory power computing device"
(or means) limitation, the function of which is "comput[ ing] the electric
power actually consumed by the accessory based on the detected load
parameter." Appeal Br. 18. The computing device is claimed to
"compute[]" the power consumed rather than measuring the power
consumed, and no algorithm is given in Appellants' Specification for
carrying out this computation. For this additional reason, none of
Appellants' claims satisfy the requirements of 35 U.S.C. § 112, ii 2.
Likewise, the same is true for the "power correcting device" (or
"power correcting means") limitation. This means-plus-function term has
the function of "comput[ing] an electric power correction quantity." Appeal
Br. 18. An equation for calculating this quantity is given at paragraph 69 of
Appellants' Specification. The inputs to this equation, however, are
themselves quantities for which no calculation algorithm is provided. See
Spec. ii 70 (describing inputs "8(k - 1 )" and "E(k)" each as "represent[ing]
an item corresponding to" something else, but not explaining the
correspondence in either case). For this additional reason, none of
Appellants' claims satisfy the requirements of 35 U.S.C. § 112, ii 2.
ORDER
The Examiner's rejection of claims 1-10 and 21-23 under 35 U.S.C.
§ 103(a) as obvious over Suzuki is reversed. We enter a new ground of
rejection of claims 1-10 and 21-23 under 35 U.S.C. § 112, ii 2, as failing to
particularly point out and distinctly claim the subject matter Appellants
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Application 12/161,605
regard as their invention. We take no action on Appellants' appeal of the
Examiner's objection to claims 21 and 23.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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" and that Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new grounds 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 ....
REVERSED: NEW GROlH'IJD OF REJECTION
37 C.F.R. § 41.50(B)
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