The Board Overturns Examiner’s Inherency Argument in Ex Parte Dewey

September 2, 2011 – Blog Post

Ex Parte Dewey (Appeal 2010-006525 in Application No. 10/864,716) is directed to a fuel cell system including a controller that monitors stack voltage and current flow through a heater, and controls the amount of power the heater draws from the stack based on the amount of power that is available from the stack.

The Examiner finally rejected the claims under 35 U.S.C. § 103 over U.S. Patent Pub. No. 2005/0129991 to Breault. There was no dispute that Breault failed to specifically describe a controller that monitors stack voltage and current flow, as described in the claims. However, the Examiner asserted that Breault discloses a controller that monitors power and rejected the claims stating that the same structure (a controller) was present and that in monitoring power, current and voltage flow were inherently monitored. As an alternative, the Examiner asserted that the claim language was directed to an intended use or functional language and was not distinguishing over the device of Breault.

In reaching its decision to reverse the Examiner, the Board considered the applicability of the decision in In re Schreiber, which held that where the Office has reason to believe that a functional limitation is inherent to the prior art, it has the authority to require the applicant to prove that the art does not posses the claimed characteristic.

The Board rejected the Examiner's inherency argument explaining that the controller of Breault may use, for example, an on/off switch based on a power regulator switched at a certain threshold power level. In other words, monitoring current and voltage does not necessarily flow from monitoring power. As this feature is not inherent to the controller of Breault, the burden did not shift to the Appellants.

The Examiner erred in determining that the controller of Breault and the claimed controller had the same structure. As explained by the Board, a controller programmed to perform a certain function is patentably distinct from a controller not programmed to perform that function.