Ex Parte Krebs et al

Patent Trial and Appeal Board

Apr 20, 2018

13954238 (P.T.A.B. Apr. 20, 2018)

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.
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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
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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").
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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
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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
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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
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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
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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
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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
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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
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