DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2006049135. The reference is directed to a fuel cell power generation system comprising a first fuel cell module (2) supplied with a fuel gas, and a second fuel cell module (3) supplied with the exhaust fuel gas of the first fuel cell (Fig. 1). First and second fuel exhaust lines (8, 11) are immediately downstream of each fuel cell module. A first recirculation line (14) recirculates exhaust gas from the second exhaust line to the fuel-side electrode (3a) of the second fuel cell module (3) ([0012]-[0015]). Thus, claim 1 is anticipated.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006046135 in view of JP 2018081747.
JP ‘135 is applied to claim 1 for the reasons stated above. Further with regard to claim 5, JP ‘135 teaches a control device (43) ([0036]). However, the reference does not expressly teach that the controller controls the first and second modules based on a required system load, such that the controller variably controls an output of the first module according to the required system load, and controls an output of the second module to a preset constant target value regardless of the required system load as recited in claim 5.
JP ‘747 is directed to a fuel cell system that comprises two fuel cells (16, 18). In [0055], the reference teaches that the controller 24 performs control so that the system is operated with changing output such that the rated output is the upper limit according to the load power required, specifically, the second stack 18 has a constant output, and the output of the first stack 16 is controlled so that the output of the system follows the output of the load.
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007). As such, the artisan would have used the control scheme of JP ‘747 in the system of JP ‘135.
Claims 6-10 are rendered obvious for similar reasons, as being directed to obvious variations of the control scheme. For example, regarding claim 6, it would be obvious that the constant target value of the second module is a rated output of that module. Regarding claim 7, the rated outputs of the modules could be different according to the needs of the skilled artisan. Regarding claim 8, it would be obvious to control the first module to enter a no-load state if the system load is not greater than a rated output value of the second module (in other words, the second module would be able to meet all power needs of the load). Regarding claim 9, it would be obvious to maintain no load operation of the first module by performing recirculation such that the second module has adequate reactant supply. Finally, regarding claim 10, it would also be obvious to control the second module to generate minimum power necessary for the system as a whole to maintain a no load operation state (e.g., if the system is idle).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006046135 in view of JP 2011008990.
JP ‘135 is applied to claim 1 for the reasons stated above. The reference does not expressly teach that a supply line connects the second exhaust gas line with an oxidant supply line of the first module (claim 11) or second module (claim 12).
JP ‘990 is directed to a fuel cell system. In Figure 6 and [0067] et seq, the reference teaches that the fuel exhaust gas is recirculated to the oxidant supply line to keep the oxygen partial pressure in the supply line low.
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would be motivated to supply the second fuel exhaust to the first and/or second oxidant supply lines of JP ‘135. In [0004], JP ‘990 discloses that a large energization effect can be obtained even if a lower current is applied to the fuel cell during energization to realize an improvement in fuel consumption. As such, the artisan would be motivated to supply the second fuel exhaust to the first and/or second oxidant supply lines of JP ‘135.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12046779. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 8 of ‘779 anticipate instant claims 1, 11, and 12.
Claims 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12046779 in view of JP 2018081747. The JP ‘747 reference is applied for substantially the same reasons as described in item 6 above. Accordingly, instant claims 5-10 are obvious variants of the ‘779 patent claims.
Allowable Subject Matter
Claims 2-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 recites that a second recirculation line from the first exhaust fuel gas line to the fuel electrode of the first fuel cell module is present, and wherein the first recirculation line is connected so as to join the first fuel gas exhaust line upstream of a branch portion from the second recirculation line. JP ‘135 teaches first and second recirculation lines (14, 9 respectively) and teaches that the first line enters downstream of the branch point for the second line, but does not teach or fairly suggest that the first line is connected so as to enter upstream of the branch point as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Nicole Buie-Hatcher, can be reached at (571) 270-3879. The phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
November 1, 2025