Ex Parte Faye et al

Board of Patent Appeals and Interferences

Jul 31, 2007

10367347 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IAN FAYE, FRANK BRENNER,
HANS-RUEDIGER WEISS,
THANH-HUNG NGUYEN-SCHAEFER,
RAINER SALIGER, and THOMAS HEBNER
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Appeal 2007-2553
Application 10/367,347
Technology Center 1700
____________

Decided: July 31, 2007
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

WALTZ, Administrative Patent Judge

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1-3 and 15. Claims 4-14 and
16 are the only other claims pending in this application and stand objected to
Appeal 2007-2553
Application 10/367,347

by the Examiner as allowable but depending on a rejected claim (Final
Office Action dated Nov. 18, 2005, unnumbered pages 3-4). We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
According to Appellants, the invention is directed to a fuel cell device
comprising a fuel cell, a conversion unit for converting material mixtures to
a hydrogen-containing fluid stream, a separation device for separating the
hydrogen-containing fluid stream into at least one hydrogen-enriched
material stream and a residual gas stream, where the separation device is
formed as a mass separation device (Br. 2-3). Independent claim 1 is
illustrative of the invention and is reproduced below:
1. A fuel cell device, comprising a fuel cell unit; a conversion unit for
converting material mixtures to a hydrogen-containing fluid stream
provided to the fuel cell unit; a separation device for separating the
hydrogen-containing fluid stream, into at least one hydrogen-enriched
material stream and a gaseous residual stream, said separation device
being formed as a mass separation device for separating different
masses.

The Examiner has relied upon the following reference as evidence of
unpatentability:
Muradov US 6,670,058 B2 Dec. 30, 2003
ISSUES ON APPEAL
Claims 1-3 and 15 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Muradov (Answer 3).
Appellants contend that the Examiner’s analysis overlooks that
Muradov produces a hydrogen fluid stream free of CO/CO2 which is
transferred to the fuel cell via a cyclone used for separating catalytic carbon
particles (Br. 4). Appellants further contend that Muradov fails to disclose
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use of the cyclone for separating one hydrogen-enriched material stream
from a gaseous residual stream (id.).
Appellants contend that separation device 2 disclosed by Muradov is
constructed as a cyclone for separating particulate matter, as it is commonly
known that particles are separated from a gaseous stream by mass
separation, but it is not possible to separate a hydrogen-enriched material
stream from a gaseous residual stream in a cyclone (Br. 4-5). Appellants
thus contend that Muradov does not describe each and every limitation of
the claims and fails to anticipate the claimed subject matter (Br. 5).
The Examiner contends that the cyclone 2 disclosed by Muradov is
clearly a mass separation device, and according to claim 14 and Figure 2 of
the reference, the hydrogen-containing gas from the reactor must be
separated in the cyclone into pure hydrogen, for introduction into the anode
of the fuel cell, and hydrogen depleted gas (HDG) (Answer 4-5). The
Examiner further contends that cyclone separators are well known for
separating gaseous streams of different density, and Muradov does not
disclose or suggest that carbon particles are separated in the cyclone
(Answer 5).
The Examiner also contends that the claims are directed to apparatus,
therefore the type of gases separated are not given patentable weight, and the
cyclone must merely be capable of separating a hydrogen containing fluid
stream into a hydrogen enriched material stream and a gaseous residual
stream (Answer 6).
Accordingly, the issues presented from the record in this appeal are as
follows: (1) is the cyclone disclosed by Muradov capable of separating
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gaseous streams? (2) does Muradov describe each and every limitation
found in the claims on appeal?
We determine that the Examiner has established a prima facie case of
anticipation in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Therefore we
AFFIRM the sole rejection on appeal essentially for the reasons stated in the
Answer, as well as those reasons set forth below.1
OPINION
We determine the following factual findings from the record in this
appeal:
(1) Muradov discloses the carbon dioxide-free production of hydrogen
and carbon by thermocatalytic decomposition of hydrocarbons
over carbon-based catalysts by combining a catalytic reactor with
a gas separation unit to produce high purity hydrogen that can be
introduced to a fuel cell (Abstract; col. 1, ll. 5-10; and col. 3, ll.
54-57, 65-67);
(2) Muradov discloses a process of thermocatalytic decomposition of
a hydrocarbon stream over a moving bed of carbon particulates ,
recovering a stream of hydrogen-containing gas (HCG), directing
this stream to a gas-separation unit (GSU) where pure hydrogen is
separated from said stream and hydrogen-depleted gas (HDG),
recovering pure hydrogen for use in combination with a fuel cell
(col. 4, ll. 1-17);

1 Since Appellants do not contest the patentability of any specific claim, we
limit our consideration in this appeal to independent claim 1.
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(3) Muradov discloses that, in addition to pure hydrogen for the fuel
cell, a very important byproduct is clean carbon (col. 4, ll. 65-67,
and col. 11, ll. 64-67);
(4) Muradov describes the process and apparatus needed for two
embodiments, one with a fuel cell (Figure 2) and one without a
fuel cell (Figure 1); the Figure 1 embodiment uses a GSU to
separate hydrogen with at least 99.0% purity, where the GSU may
be a gas separation membrane, a PSA system, cryogenic
absorption, or any other system capable of separating hydrogen
from hydrocarbons (col. 5, ll. 1-22);
(5) In both embodiments, Muradov discloses that the carbon product
is withdrawn from the bottom of the fluidized bed reactor 1 in the
form of carbon particulates (col. 5, ll. 41-43, and claim 7 in col.
12);
(6) In the Figure 2 embodiment, Muradov discloses that the HCG,
after reactor 1, a cyclone 2, and a heat exchanger 3, enters the
anode compartment 9 of fuel cell 7, with hydrogen being absorbed
by the fuel cell and unconverted hydrocarbons recycled to the
reactor (col. 6, ll. 31-33 and 43-51); and
(7) Muradov claims a process of decomposing hydrocarbons,
recovering a stream of HCG, directing this stream to a GSU where
pure hydrogen is separated and recovered, and introducing this
pure hydrogen into an anode of a fuel cell (col. 13-14, claim 14).
Under § 102, anticipation requires that the prior art reference
discloses, either expressly or under the principles of inherency, every
limitation of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ
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136, 138 (Fed. Cir. 1986). The absence of a disclosure relating to function
does not defeat a finding of anticipation. A patent applicant is free to recite
features of an apparatus either structurally or functionally. Yet, choosing to
define an element functionally, i.e., by what it does, carries with it a risk.
Where the Examiner has reason to believe that a functional limitation
asserted to be critical for establishing novelty may, in fact, be an inherent
characteristic of the prior art, the burden rests with applicant to prove that
the subject matter shown to be in the prior art does not possess this
characteristic. See In re Schreiber, 128 F.3d 1473, 1478-79, 44 USPQ2d
1429, 1432-33, quoting In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226,
228 (CCPA 1971).
Applying the preceding legal principles to the factual findings in this
record, we determine that the Examiner has established a prima facie case of
anticipation which case has not been adequately rebutted by Appellants’
arguments. As shown by factual findings (1) and (2) listed above, and not
contested by Appellants, Muradov discloses a fuel cell unit (FC 7), a
conversion unit capable of converting hydrocarbons to a hydrogen-
containing fluid stream provided to the fuel cell unit (reactor 1), and a
separation device (GSU 4). Appellants dispute the Examiner’s contention
that cyclone 2 also acts as a separation device (Br. 4-5). We determine that
the Examiner has established a prima facie case of anticipation for several
reasons. First, we determine that the embodiment of Figure 1 (see factual
findings (4) and (7) listed above), includes a fuel cell unit with pure
hydrogen introduced therein (i.e., 99 v.%), where the GSU acts to separate
the HCG from the HDG. Accordingly, every limitation of claim 1 on appeal
is disclosed by the reference if the GSU is a “mass separation device” as
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required by the claim. We determine that this term is not defined by
Appellants (Specification 5), and thus we give the broadest reasonable
meaning to this term in its general usage as it would be understood by one of
ordinary skill in the art. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997). We determine that the broadest reasonable
interpretation of this term in its general usage would be any device that
separates two streams based in some part on their different masses.
However, the gas separation devices taught by Muradov all use the different
masses of the gas streams, to some extent, to separate the gases even though
pressure or temperature may also be a factor (see col. 5, ll. 19-22, and
factual finding (4) listed above).
Second, we agree with the Examiner that the cyclone 2 disclosed by
Muradov is capable of separating gaseous streams.2 See In re Schreiber,
supra. Contrary to Appellants’ argument that the cyclone is used for
separating carbon particles from a gaseous stream (Br. 4-5), Muradov
specifically teaches that the carbon particulates are removed from the bottom
of reactor 1 and thus do not appear to enter the cyclone 2 (see factual
findings (3) and (5) listed above).3 Furthermore, Muradov teaches that the
gas entering the anode of the fuel cell unit should be “pure hydrogen” (i.e.,
99 v.%), and the only apparatus between the reactor 1 and the fuel cell unit 7
is the cyclone 2 and heat exchanger (see Figure 2 and factual findings (6)
and (7) listed above). Thus we determine that the Examiner has established

2 We note that Appellants have not disputed that the cyclone 2 taught by
Muradov is a “mass separation device” within the scope of this term in claim
1 on appeal.
3 We note that Muradov does show a stream exiting the bottom of cyclone 2
into the heater 6 but does not identify this stream (see Figures 1 and 2).
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a reasonable belief that the cyclone 2 must act as a gas separation device
since the gas exiting the reactor 1 has a hydrogen concentration of only
about 30-90% (col. 5, ll. 23-28). See In re Schreiber, supra; and In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
For the foregoing reasons and those stated in the Answer, we affirm
the rejection on appeal. The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

tlc/ls

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