Ex Parte Krebs et alDownload PDFPatent Trial and Appeal BoardApr 20, 201813954238 (P.T.A.B. Apr. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/954,238 07 /30/2013 35811 7590 04/24/2018 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 4900 PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Martin Krebs UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. PCG-13-1258 7640 EXAMINER MENDEZ, ZULMARIAM ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 04/24/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): pto. phil@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN KREBS, ROBERT HAHN, and MICHAEL SCHMALZ Appeal2017-007466 Application 13/954,238 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request our review under 35 U.S.C. § 134(a) of the Examiner's decision to finally reject claims 1, 5, 8-14, 16, and 17. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. STATEMENT OF THE CASE Appellants claim a hydrogen evolution cell which, on passage of an electric current, liberates an amount of hydrogen proportional to an amount 1 Appellants identify VARTA MICROBATTERY GMBH as the real party in interest. Appeal Brief filed October 5, 2016 ("App. Br."), 1. Appeal2017-007466 Application 13/954,238 of current flowing through the cell. App. Br. 2-3. Claims 1 and 17 illustrate the subject matter on appeal and are reproduced below with contested limitations italicized: 1. A hydrogen evolution cell which on passage of an electric current liberates an amount of hydrogen proportional to an amount of current flowing through, comprising an electrochemically oxidizable anode, a hydrogen cathode, an electrolyte and a casing surrounding the same, wherein the hydrogen cathode is associated structure of at least one pocket defining a hollow space or defines a hollow space in the presence of hydrogen overpressure or wherein the cathode forms such a pocket, wherein the hydrogen cathode is in the form of at least one cathode composite forming a hollow body, the at least one cathode composite is formed by two cathode bodies, the two cathode bodies are coated in each case on one side with a microporous and hydrophobic foil, the two cathode bodies connect to one another such that the foils line the internal face of the hollow body formed by the at least one cathode composite, the cathode composite is separated from the oxidizable anode by a separator on an external face of the cathode composite, and the anode is zinc or contains zinc. 17. A hydrogen evolution cell which on passage of an electric current liberates an amount of hydrogen proportional to an amount of current flowing through, comprising an electrochemically oxidizable anode, a hydrogen cathode, an electrolyte and a casing surrounding the same, wherein the hydrogen cathode is associated structure of at least one pocket defining a hollow space or defines a hollow space in the presence of hydrogen overpressure or wherein the cathode forms such a pocket, wherein the casing has an outlet opening for hydrogen generated during cell operation, the outlet opening is at an end of a hydrogen removal conduit projecting from the at least one pocket, and 2 Appeal2017-007466 Application 13/954,238 the hydrogen cathode is separated from the anode by a separator. App. Br. 10-11 (Claims Appendix) (emphasis and spacing added). The Examiner sets forth the following rejections in the Final Office Action entered June 30, 2016 ("Final Act."), and maintains the rejections in the Examiner's Answer entered February 16, 2017 ("Ans."): I. Claims 1, 5, 8-11, 14, and 16 under 35 U.S.C. § 103(a) as unpatentable over Gil 2 in view of Sauer, 3 Sullivan, 4 Oldani, 5 and Thompsett6; II. Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over Gil in view of Sauer, Sullivan, Oldani, Thompsett, and Swalla7; and III. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Gil in view of Sullivan. DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants' contentions, we reverse the Examiner's rejections of claims 1, 5, 8-14, and 16 under 35 U.S.C. § 103(a) (Rejections I and II) for the reasons set forth below, and affirm the Examiner's rejection of claim 17 2 Gil et al., US 2008/0169188 Al, published July 17, 2008 (hereinafter "Gil"). 3 Sauer, US 2004/0048153 Al, published March 11, 2004. 4 Sullivan, US 6,890,410 B2, issued May 10, 2005. 5 Oldani et al., US 2010/0096275 Al, published April, 22, 2010 (hereinafter "Oldani"). 6 Thompsett et al., US 2013/0330651 Al, published December 12, 2013 (hereinafter "Thompsett"). 7 Swalla et al., US 2008/0083614 Al, published April 10, 2008 (hereinafter "Swalla"). 3 Appeal2017-007466 Application 13/954,238 under 35 U.S.C. § 103(a) (Rejection III) for the reasons set forth in the Final Action, the Answer, and below. Rejections I and II We need consider only independent claim 1 because the remaining claims subject to these grounds of rejection depend from claim 1. Claim 1 recites a hydrogen evolution cell comprising, inter alia, an electrochemically oxidizable zinc anode and a hydrogen cathode. Claim 1 requires the hydrogen cathode to be in the form of a cathode composite separated from the anode by a separator on an external face of the cathode composite. The Examiner finds that Gil discloses a hydrogen evolution cell comprising an electrochemically oxidizable magnesium anode and a hydrogen cathode. Final Act. 3 (citing Gil Abstract; i-fi-f 13-17, 55, 68, 72, 77, 83). The Examiner relies on Sauer' s disclosure of a hydrogen gas generating cell comprising a zinc anode. Final Act. 3--4 (citing Sauer Abstract; i-fi-12, 22). The Examiner determines that one of ordinary skill in the art would have been led at the time of Appellants' invention to replace the magnesium anode in the hydrogen evolution cell disclosed in Gil with the zinc anode disclosed in Sauer because "magnesium and zinc exhibit similar oxidation properties (i.e. they are two of the most easily oxidized metals) and zinc anodes are well known in the art to be effective for the production of hydrogen gas by electrolysis." Final Act. 3--4. The Examiner finds that Gil also fails to disclose that the hydrogen evolution cell described in the reference includes a cathode separated from an oxidizable anode by a separator on an external face of the cathode, and the Examiner relies on Sullivan to address this feature. Final Act. 3-5. The Examiner finds that Sullivan discloses an apparatus for electrolytic 4 Appeal2017-007466 Application 13/954,238 conversion of water into hydrogen and oxygen that comprises a flexible pocket/envelope disposed in an electrolytic bath that encapsulates and separates individual electrodes. Final Act. 4 (citing Sullivan Abstract; Figures 2, 10, 11, 15; col. 8, 11. 28--49; col. 9, 11. 58---67; col. 10, 1. 61---col. 11, 1. 20). The Examiner finds that Sullivan discloses that the encapsulating flexible pocket/envelope enhances the energy efficiency of the electrolysis system by reducing the voltage required to pass current between the electrodes. Final Act. 4 (citing Sullivan col. 8, 11. 28-31 ). The Examiner determines that one of ordinary skill in the art would have been led at the time of Appellants' invention to utilize the flexible pocket/envelope disclosed in Sullivan to encapsulate the individual electrodes in Gil's hydrogen evolution cell as modified by Sauer to enhance the energy efficiency of electrolytic decomposition of water by reducing the voltage required to pass current between the electrodes, as disclosed in Sullivan. Final Act. 4--5. However, as Appellants correctly argue, the Examiner does not establish that one of ordinary skill in the art would have had an apparent reason to encapsulate the electrodes of Gil's modified hydrogen evolution cell. App. Br. 4--5; Reply Br. 2-3. Sauer discloses a hydrogen generating cell having a zinc anode, a cathode consisting of PTFE-bound metal and/or a carbon powder layer placed into a metallic network, and an alkaline electrolyte. Sauer i-f 2. Sauer explains that a current flow is generated in the cell by closing an exterior circuit, resulting in the production of hydrogen inside the cell. Id. Sauer's hydrogen-generating cell thus does not require the application of an external voltage to generate hydrogen. In contrast, Gil discloses an apparatus for generating hydrogen from water by electrolysis 5 Appeal2017-007466 Application 13/954,238 that includes a magnesium anode and an iron cathode, and requires application of an external voltage to generate hydrogen. i-fi-f 13, 72. If one of ordinary skill in the art would have replaced Gil's magnesium anode with the zinc anode disclosed in Sauer as proposed by the Examiner, and appropriately modified Gil's hydrogen evolution cell as necessary to accommodate this anode substitution, application of an external voltage would no longer be required to generate hydrogen from Gil's modified cell, as indicated by Sauer. Consequently, the Examiner does not does provide a reasoned explanation supported by objective evidence for why one of ordinary skill in the art reasonably would have expected that encapsulating the individual electrodes of Gil's hydrogen evolution cell modified in this manner would reduce the external voltage required to pass current between the electrodes, when application of external voltage would no longer be required to generate hydrogen. Accordingly, the Examiner does not establish that a combination of the relied-upon disclosures of Gil, Sauer, and Sullivan would have suggested encapsulating the electrodes of Gil's hydrogen evolution cell modified to have a zinc anode, as recited in claim 1. Therefore, consistent with Appellants' arguments, we do not sustain the Examiner's rejections of claims 1, 5, 8-14, and 16 under 35 U.S.C. § 103(a). Rejection III Appellants do not dispute the Examiner's finding that Gil discloses all of the features of claim 1 7 except separating the hydrogen cathode from the magnesium anode by a separator. Compare Final Act. 8-9, with App. Br. 9. As with Rejections I and II, the Examiner relies on Sullivan to address this 6 Appeal2017-007466 Application 13/954,238 feature missing from Gil's disclosures, and concludes that one of ordinary skill in the art would have been led at the time of Appellants' invention to utilize the flexible pocket/envelope disclosed in Sullivan to separate/encapsulate the individual electrodes in Gil's hydrogen evolution cell to prevent arcing between the electrodes, and to enhance the energy efficiency of electrolytic decomposition of water into oxygen and hydrogen by reducing the voltage required to pass current between the electrodes, as disclosed in Sullivan. Final Act. 9-10. Appellants argue that one of ordinary skill in the art would not have combined the teachings of Gil and Sullivan to arrive at the hydrogen evolution cell of claim 17 for at least the reasons that Appellants provide for claim 1. App. Br. 9. However, most of Appellants' arguments for claim 1 are directed to limitations that do not appear in claim 17, and we therefore only address the arguments that are relevant to the subject matter of claim 17. App. Br. 3-9. Appellants argue that "the processes described by Sullivan and Gil differ significantly, and, as a result, the teachings of Sullivan are inapplicable to Gil." App. Br. 4. Appellants contend that Gil discloses generating hydrogen using an anode electrode formed of magnesium that dissolves during formation of hydrogen. Id (citing Gil i-fi-f 13, 14). Appellants assert that in contrast, Sullivan discloses an electrolysis process in which the anode and cathode are made of stainless steel or nickel and are not chemically transformed. App. Br. 4--5 (citing Sullivan col. 6, 11. 3-8). Appellants argue that "[i]t is well known that decomposition of water into hydrogen and oxygen as described by Sullivan is not favorable in thermodynamic terms," but in contrast, "decomposition of magnesium in 7 Appeal2017-007466 Application 13/954,238 water and the corresponding reaction to magnesium hydroxide and hydrogen, as disclosed by Gil, is highly favorable in thermodynamic terms." App. Br. 5. Appellants argue that this "means that the process described by Sullivan would need to be conducted at a voltage different from the process described by Gil." Id. However, Appellants' arguments do not adequately address the Examiner's rationale for encapsulating Gil's electrodes with a flexible pocket/envelope as disclosed in Sullivan---enhancing the energy efficiency of Gil's hydrogen evolution cell by reducing the voltage required to pass current between the electrodes, and preventing arcing between the electrodes. Although Sullivan's process may utilize an electrode that is not electrochemically transformed, and may need to be conducted at a different voltage than Gil's process as Appellants assert, Appellants' arguments do not explain why these differences would have discouraged or prohibited one of ordinary skill in the art seeking to enhance the energy efficiency of a hydrogen evolution cell as disclosed in Gil, and prevent electrode arcing, from encapsulating individual electrodes in the cell with a flexible pocket/envelope as disclosed in Sullivan. Nor do Appellants' arguments explain how and why the articulated differences between Sullivan and Gil's apparatuses would negate the benefits of encapsulating the individual electrodes in Gil's hydrogen evolution cell with a flexible pocket/envelope as disclosed in Sullivan. Accordingly, Appellants' arguments do not identify reversible error in the Examiner's proposed combination of the relied-upon disclosures of Gil and Sullivan. Appellants further argue in their Reply Brief that Sullivan's goal is to provide a novel encapsulation system for electrodes that allows oppositely 8 Appeal2017-007466 Application 13/954,238 charged electrodes to be placed into in intimate contiguous relationship with each other. Reply Br. 5 (citing Sullivan col. 2, 11. 16-22). Appellants contend that such an intimate contiguous relationship may be useful for electrodes formed of stainless steel or nickel as disclosed in Sullivan, which are permanent, are not consumed during operation, and do not need to be replaced regularly. Reply Br. 5. Appellants assert that "there are no teachings that such an intimate contiguous relationship is also useful for consumable electrodes in a system as taught by Gil which have to be replaced when they have dissolved." Id. However, Appellants' arguments do not take into consideration Sullivan's disclosure that encapsulating individual electrodes with a flexible pocket/envelope enhances the energy efficiency of electrolytic decomposition of water by reducing the voltage required to pass current between the electrodes. Based on this disclosure, one of ordinary skill in the art would have been led to encapsulate the electrodes of Gil's apparatus as disclosed in Sullivan to enhance the energy efficiency of Gil's system. Appellants' arguments regarding whether an intimate contiguous relationship between electrodes would be useful for Gil's consumable electrodes do not explain why the benefit of enhanced energy efficiency would not result from the proposed combination of Gil and Sullivan. Appellants' arguments are therefore unpersuasive of reversible error in the Examiner's proposed combination of the relied-upon disclosures of Gil and Sullivan. Accordingly, considering the totality of the evidence relied upon in this appeal, the preponderance of the evidence weighs in favor of the 9 Appeal2017-007466 Application 13/954,238 Examiner's conclusion of obviousness. We therefore sustain the Examiner's rejection of claim 17 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner's rejections of claims 1, 5, 8-14, and 16 under 35 U.S.C. § 103(a), and affirm the Examiner's rejection of claim 17 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation