Ex Parte Nielsen et al

Patent Trial and Appeal Board

Sep 17, 2012

11486060 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/486,060 07/14/2006 Jens Ulrick Nielsen T5875.0001/P001 3634
24998 7590 09/17/2012
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
LEWIS, BEN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
09/17/2012 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
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JENS ULRICK NIELSEN, CHRISTIAN OLSEN,
NIELS ERIKSTRUP, and JESPER NORSK
________________

Appeal 2011-007275
Application 11/486,060
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1-10 of Application 11/486,060
as anticipated under 35 U.S.C. § 102(b) and/or as obvious under 35 U.S.C.
§ 103(a). Appellants seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the procedural reasons set forth below, we cannot sustain and
therefore REVERSE the Examiner’s rejections. However, we have added
NEW GROUNDS OF REJECTION as to each of the claims of the ’060
application.
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Application 11/486,060

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BACKGROUND
The ’060 application describes a compression system useful in a high
temperature fuel cell stack such as a solid oxide fuel cell stack. Spec. 1. In a
metal oxide fuel cell, a gaseous fuel such as hydrogen, is oxidized at an
anode and oxygen is reduced at a cathode to produce an electric current and
heat. Id. Multiple fuel cells can be assembled in series to create a solid oxide
fuel cell stack that can meet the electric generation demands for a particular
use. Id. at 1-2.
The high operating temperature of a metal oxide fuel cell causes the
components of the fuel cell stack to expand. Id. at 2. Because temperature
gradients can occur in the fuel cell stack, this expansion can be unevenly
distributed, possibly leading to a reduction in the electric contact between
the different layers in the fuel cell stack. Id.
The ’060 application purports to address this problem by providing a
compression assembly that provides different compression pressures to
different parts of the fuel cell stack. Id. at 3.
Figure 1 of the ’060 application is reproduced below:
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Figure 1 is a perspective view of an embodiment of the claimed invention,
showing the various components of the compression assembly. Id. at 5. To
compress the fuel cell stack, external compression is applied to force
transmitting plate 1, which transmits the force to the force distributing layer
comprised of frame 2 and one or more resilient elements 3. Id. at 10.
Resilient elements 3 are positioned above the electrochemically active area
of solid oxide fuel cell 5. Id. End plate 6 and spacer-interconnect assembly 7
are positioned between the force distributing layer and the solid oxide fuel
cell 5. Id.
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Claim 1 is the only independent claim and is reproduced below, with
the limitations that are of particular concern emphasized:
1. Compression assembly for distributing an external
compression force to a solid oxide fuel cell stack, the external
compression force being exerted on both ends of the solid oxide
fuel cell stack, the solid oxide fuel cell stack comprising:
a plurality of solid oxide fuel cells in electrical series,
each end of the solid oxide fuel cell stack being placed adjacent
to an end plate surface, wherein the surface of at least one of
the end plates opposite to the surface facing the solid oxide fuel
cells, [sic] is provided with a force distributing layer comprising
a rigid frame extending above the region of the sealing area of
the solid oxide fuel cell stack and one or more resilient
elements placed inside the space enclosed by the frame and
positioned above the electrochemically active area of the solid
oxide fuel cell stack, and placed on the force distributing layer a
force transmitting plate on which the external compression
force is exerted, wherein the rigid frame and the one or more
resilient elements are sandwiched between the end plate
surface and the electrochemically active area of the solid oxide
fuel cell stack.
App. Br. 15.

REJECTIONS
1. The Examiner rejected claims 1, 2, 5, 6, and 8-10 under 35 U.S.C.
§ 102(b) as anticipated by U.S. Patent No. 6,696,185 B1
(“Okamoto,” issued Feb. 24, 2004).
2. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
obvious over Okamoto in view of U.S. Patent Application
Publication 2005/0194720 A1 (“Kelly,” Sept. 8, 2005).
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3. The Examiner rejected claims 4 and 7 under 35 U.S.C. § 103(a) as
obvious over Okamoto in view of U.S. Patent No. 5,407,758
(“Greiner,” issued Apr. 18, 1995).

DISCUSSION
The issues presented for our review by Appellants and the Examiner
are whether the Examiner’s anticipation and obviousness rejections are
proper. We are unable to answer these questions because the claims are
indefinite. See NEW GROUNDS OF REJECTION, infra. Therefore,
discerning the claims’ proper scope would require undue and improper
speculation. See In re Aoyama, 656 F.3d 1293, 1298-99 (Fed. Cir. 2011)
(explaining that a claim cannot be both indefinite and anticipated and
refusing to review an anticipation rejection); In re Steele, 305 F.2d 859, 862
(CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should
be based on such speculations and assumptions.”).
We, therefore, procedurally reverse the Examiner’s anticipation and
obviousness rejections of all of the ’060 application’s claims. We emphasize
that this is a technical reversal of these rejections and not a reversal based on
their merits.

NEW GROUNDS OF REJECTION
New Matter. Claim 1 concludes with the following limitation:
“wherein the rigid frame and the one or more resilient elements are
sandwiched between the end plate surface and the electrochemically active
area of the solid oxide fuel cell stack.” Claim 1 (emphasis added). This
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Application 11/486,060

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language was added to the claim in an April 30, 2009 Amendment and was
not part of the ’060 application as originally filed.
As shown in Figure 1, the’060 application describes the resilient
elements as sandwiched between force distributing plate 1 and end plate 6,
and positioned above the electrochemically active area of the solid oxide
fuel cell stack. Spec. 10; see also id. at 6-7. Frame 2 also is sandwiched
between the force distributing plate and the end plate. Id. at 10. Furthermore,
in the disclosed embodiments, the frame is sized and positioned so that it is
above the sealing area of the metal oxide fuel cell stack, and not above the
electrochemically active area. Id.at 6-7. We can find no support in the
Specification for claim language that was added by amendment.
The quoted claim language is not supported by the ’060 application’s
written description. We therefore reject claims 1-10 for failure to comply
with 35 U.S.C. § 112, ¶ 1.
Indefiniteness. Claim 1 concludes with the following limitation:
“wherein the rigid frame and the one or more resilient elements are
sandwiched between the end plate surface and the electrochemically active
area of the solid oxide fuel cell stack.” Claim 1 (emphasis added). This claim
language is inconsistent with the rest of the claim, which specifies a different
location for the frame and resilient elements. As noted above, the quoted
claim language locates the frame and resilient elements between a surface of
the end plate and the electroactive area of the fuel cell. Other portions of the
claim specify that “the surface of at least one of the end plates opposite to
the surface facing the solid oxide fuel cells[] is provided with a force
distributing layer comprising a rigid frame . . . and one or more resilient
elements placed inside the space enclosed by the frame.” Claim 1 (emphasis
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added). Thus, the claim specifies that the frame and resilient elements are
both on the side of the end plate opposite the solid oxide fuel cells and
between the end plate and the solid oxide fuel cells. This claim language
requires that the frame and resilient elements be in two places
simultaneously, a seeming physical impossibility. Therefore, we reject
claims 1-10 under 35 U.S.C. § 112, ¶ 2 as indefinite.

CONCLUSION
Claims 1-10 are not supported by the ’060 application’s written
description. Thus we have added a new ground of rejection under 35 U.S.C.
§ 112, ¶ 1. Furthermore, claims 1-10 also are internally inconsistent and
therefore indefinite. Thus, we have added a new ground of rejection under
35 U.S.C. § 112, ¶ 2.
Because the claims are indefinite, we cannot sustain the Examiner’s
rejections under §§ 102 and 103 for procedural rather than for substantive
reasons.

This decision contains 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:
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(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).

REVERSED, NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b)

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