DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 1-10 are each objected to because of the following issues which are related to grammar, punctuation, sentence structure, and formatting errors, along with a lack of concision or invocation of proper antecednet basis:
Claim 1 recites the following grammatically incorrect, run-on clause that needs correction:
“A method for operating a fuel cell system (100) comprising at least one stack (101) when starting the fuel cell system (100) under freezing conditions, in order to bring a short-circuit current (I) through the stack (101) to a desired target value (I1),”
Claim 9 incorporates the subject matter of claim 1 and is thus also objected to for the same reason
Claim 10 is rejected for the same issue above (see the grammatically incorrect, run-on clause of lines 1-6 that needs correction).
Claim 2: there is an extra space between “controlled” and the period at the end of the sentence
Claim 3: there is an extra space between “1” and the comma that should be deleted
Claim 4: “from above” in the final line should be deleted as it is not necessary, wherein claims are requried to be concise (Article 6).
Claims 4 and 5 each end in a comma that should be changed to respective periods
Claims 4 and 5 should add a colon after “wherein” given the two clauses that follow
Claims 4 and 5 should move the “and/or” to the end of the first clause and properly indent the two options recited in each. A suitable formatting example is shown below:
(Claim 4). The method acording to claim 2, wherein:
a rotational speed (N) of a compressor (12) is increased, it is checked whether the short-circuit current (I) has reached the desired target value (I1) from below, and/or
when a rotational speed of a compressor is reduced, it is checked whether the short-circuit current (I) has reached the desired target value (I1) from above.”
Claim 7: the long space between (I1), and “it is checked” should be removed
Claim 10, line 7 omits a colon after “by”
Claim 10 should correct “the latter” in line 3 to “the computer” in line 3 to invoke proper antecedent basis to the specific entity being referenced
Claims 2-8 each have formatting/spacing errors in terms of a large, unnecessary spaces after the preamble as well as the “wherein” clause in each instance. It is noted claims print exactly as they are provided by Applicant. Thus, as an example correction, claim 2 should be corrected such that it reads:
“The method according to claim 1, wherein the short-circuit current (I) is controlled.”
Claim 10: each of the four steps (i.e., the four steps beginning with “initating,” “short-circuiting,” “increasing,” and “reducing”) should be indented further to the right for clarity as is the case in claim 1.
Appropriate correction is required. Given the abundance of errors, Applicant is respectfully requested to thoroughly review the next claim set for grammar, punctuation, and formatting as well as any potential errors missed by the Examiner in the review of the current claim set.
Drawings
3. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “12” has been used to designate both the exhaust air line 12 and what apperas to be the compressor V.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “U” has been used to designate both the environment (U) (missing from drawings) and polarization curve (f(I, T) = U) – see Fig. 2.
The drawings are also objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: compressor V; bypass valve 16; and environement U.
It appears correction can be made by:
Deleting the U as a reference numeral for “the environement U” (at least P59 of the PGPUB- Applicant should review the entire disclosure for any corrections needed) as it is not necessary for understanding or labeling of the figures; or, replacing the “U” within the specification with a different reference numeral not already present and adding it to Fig. 1; and
The following corrections should be implemented:
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
4. Claims 9 and 10 relate to computer-implemented language that transforms the control unit (200) (claim 9) or computer (claim 10) into a special purpose computer that is structurally different than a general purpose computer. The case law regarding how programming, or code that is stored in a memory unit, and executed by a computing unit of a control unit (200) transforms the control unit (200) or computer (claim 10) into a special purpose computer:
An apparatus/system claim must have structural distinctions from corresponding components in the prior art; a control device "programmed to" carry out its recited limitations satisfies this requirement. This is because a "general purpose computer, or microprocessor, programmed to carry out an algorithm creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999).
In other words, "if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged." In re Bernhart, 417 F.2d 1395, 1399 - 1400 (CCPA 1969).
We have held that such programming creates a new machine, because a general purpose computer in
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effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman , 573 F.2d 1237, 1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549-50 n.29.
The comment is made for clarity of the record and interpretation of the claims.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Original claim 10 as filed is reproduced below:
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Claim 10 as amended by Applicant (the preamble) is below:
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Applicant cites no support for the amendments provided, and none of the language (e.g., “non-transitory,” “computer-readable,” and “storage medium”) exists in the written description.
Per Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007), this is sufficient to make such a rejection:
Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.")
Appropriate correction is required. Any future claim amendments (that are not related to formatting/punctuation/proper antecedent basis corrections) should be accompanied with comments that specifically point out support for any claim amendments. See MPEP 2163, section 3(b); MPEP § 714.02; and MPEP § 2163.06:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007)
"Applicant should ... specifically point out the support for any amendments made to the disclosure."
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 is highly indefinite given the underlined portions which either 1) fail to invoke proper antecedent basis or 2) are unclearly setting forth additional method steps:
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Additionally, the meaning of “from below” (boxed) is not clear and renders the claim indefinite.
Appropriate correction is required.
Allowable Subject Matter
9. Claims 1-3 and 5-9 are objected to for the issues outlined in the Claim Objections section, but would be allowable if rewritten to correct the issues outlined. Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to provide the necessary teaching, suggestion, and/or motivation to arrive at the method recited in claim 1, or a special purpose computer programmed to carry out the method (claim 9). The Examiner agrees with the finding of the ISA in terms of novelty and inventive step, and that Reiser (US 2010/0119884) is considered the closest prior art to the subject matter claimed. Reiser fails to teach that the short-circuit current is measured to a desired target value (i.e., “increasing a rotational speed (N) of a comprresor (12) in a cathode system (10) of a stack (101) until the short circuit current (I) has exceeded the desired target value (I1),” and the speed of the compressor is reduced until the desired target value (I1) of the short-circuit has been exceeded (i.e,. “reducing the rotational speed (N) of the compressor (12) until the short-circuit current (I) has reached the desired target value (I1), wherein during the reduction of the rotational speed (N) of the compressor (12), the excess of air mass flow (dm2/dt – dm1/dt) is reduced”).
No additional prior art was found by the instant Examiner that teaches these features presented.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula C Tavares-Crockett can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BILLIET/Primary Examiner, Art Unit 1729
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