General Motors takes a tumble in Ex parte MAIER
The issues in Ex parte MAIER
Appealed claims 1-21 stand rejected under 35 U.S.C. § 112, first paragraph, enablement requirement. Claims 14-21 also stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claim 10 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Kudou. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kudou in view of Bains, and claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kudou in view of Bains and Johnson, Jr.
We have thoroughly reviewed each of Appellants' arguments for patentability. However, we find that the Examiner's rejections are free of reversible error.
As to enablement
The Examiner further explains that "[w]ithout any such description and without any definition of the variable a1, a2, or a3, one having ordinary skill in the art would not be able to make/use the equation, and, consequently, would not be able to make/use the claimed 'determine a desired pump speed based on the delivery head value and a predetermined volume flow set-point value of the fluid'" (Id.). Hence, the Examiner takes the reasonable position that without prior knowledge of a1, a2, and a3, "the specification does not give clear guidance on how the claimed process is to be carried out" (Ans. 17, first para.).
The appellants did not do well on enablement:
Accordingly, it is our view that the Examiner has effectively shifted the burden to Appellants to demonstrate that one of ordinary skill in the art would be able to practice the claimed invention of determining a desired pump speed based on the delivery head value and a predetermined volume flow set-point value of the fluid. Appellants, however, have not shouldered their burden but offer only the following conclusory remarks:
In the present case, one of ordinary skill in the art knows and understands how to evaluate a quadratic polynomial, and if necessary, how to solve for the constant coefficients, which as also understood by one of ordinary skill in the art, are application specific. Appellants respectfully submit that solving for constant coefficients is a basic skill that is well within the capabilities for a person of ordinary skill in the art without any undue experimentation.
(Reply Br. 3, penultimate para.).
Turning to the § 101 rejection of claims 14-21, we note that Appellants have not presented any substantive argument against the Examiner's rejection. Rather, Appellants argue that their amendment after final rejection should have been entered by the Examiner in order to place the claimed invention in statutory form. However, the Examiner's decision to not enter the amendment is a petitionable matter that is not properly before us for review. Accordingly, we will sustain the Examiner's § 101 rejection, pro forma.
We will also sustain the Examiner's §102 rejection of claim 10. Kudou, like Appellants, discloses a control system for a fuel cell system comprising a fuel cell stack wherein the controller is configured to determine a desired speed of a pump which controls the volume flow of a cooling fluid which controls the temperature of the stack.
General Motors strikes out:
In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed.
The decision of the Examiner is affirmed.