Ex Parte Ren

Patent Trial and Appeal Board

Nov 16, 2018

13723389 (P.T.A.B. Nov. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/723,389 12/21/2012
21364 7590 11/19/2018
US ARMY RESEARCH LABORATORY
ATTN: RDRL-LOC-1
2800 POWDER MILL RD
ADELPHI, MD 20783-1138
FIRST NAMED INVENTOR
Xiaoming Ren
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.
ARL 12-06 4142
EXAMINER
CHMIELECKI, SCOTT J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
11/19/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOMING REN
Appeal2017-011043
Application 13/723 ,3 89 1
Technology Center 1700
Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejection of claims 1-17, 19, and 20. Br. 3.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellant is the Applicant, U.S. Army Research Laboratory. The real
party in interest is identified as the United States Government as represented
by the Secretary of the Army. Br. 3.
Appeal2017-011043
Application 13/723,389
BACKGROUND
The independent claims on appeal are directed to an apparatus for
generating hydrogen gas ( claim 1 ), and a wearable power unit containing
such apparatus (claim 20).
Claim 1 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief:
1. A hydrogen gas generating apparatus, comprising:
a first chamber;
a first mixture comprising a chemical hydride and a
catalyst disposed within the first chamber;
a second chamber coupled to the first chamber;
a connector;
a third chamber coupled by the connector to the second
chamber, wherein the third chamber is fluidly coupled to the
first chamber;
a sealing element coupled to at least one of the second
chamber or the third chamber;
an outlet fluidly coupled to the first chamber; and
a resilient member disposed within the third chamber and
configured to control the flow of water into the first chamber
via movement of the resilient member in response to hydrogen
gas pressure within the apparatus.
Br. 35-36.
REFERENCES
Redmond US 2004/0023087 Al Feb. 5,2004
Jorgensen US 2004/0071630 Al Apr. 15, 2004
Harding et al. US 2005/0095470 Al May 5, 2005
("Harding")
Marsh et al. US 2005/0158595 Al July 21, 2005
("Marsh")
Sarata et al. US 2006/0147776 Al July 6, 2006
("Sarata")
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Appeal2017-011043
Application 13/723,389
Withers-Kirby et al.
("Withers-Kirby")
Wall ace et al.
("Wallace '426")
Wall ace et al.
("Wallace '054")
Lin et al.
("Lin")
US 2007/0020172 A 1
US 2010/0247426 Al
US 2012/0115054 Al
US 2012/0171083 Al
REJECTIONS
The claims are rejected as follows:
Jan.25,2007
Sept. 30, 2010
May 10, 2012
July 5, 2012
I. Claims 1-5, 8-11, 13, 17, and 19 under 35 U.S.C. § I03(a) as
unpatentable over Lin in view of Withers-Kirby and Sarata;
II. Claims 6, 7, and 16 under 35 U.S.C. § I03(a) as unpatentable over
Lin in view of Withers-Kirby and Sarata, and further in view of
Marsh;
III. Claim 12 under 35 U.S.C. § I03(a) as unpatentable over Lin in
view of Withers-Kirby and Sarata, and further in view of Harding;
IV. Claim 14 under 35 U.S.C. § I03(a) as unpatentable over Lin in
view of Withers-Kirby and Sarata, and further in view of
Wallace '054;
V. Claim 15 under 35 U.S.C. § I03(a) as unpatentable over Lin in
view of Withers-Kirby and Sarata, and further in view of
Wallace '426;
VI. Claim 18 under 35 U.S.C. § I03(a) as unpatentable over Lin in
view of Withers-Kirby and Sarata, and further in view of
Jorgensen; and
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Application 13/723,389
VII. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Lin in
view of Withers-Kirby and Sarata, and further in view of
Redmond.
OPINION
We have considered Appellant's arguments for patentability (Br. 7-
33) and are unpersuaded that Appellant has identified reversible error in the
Examiner's rejections. In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011).
Therefore, we sustain the obviousness rejections of claims 1-17, 19, and 20
based on the findings of fact, conclusions of law, and rebuttals to arguments
well-expressed by the Examiner in the Final Action and in the Answer. We
add the following only for emphasis.
Several of Appellant's arguments are made against the individual
references cited by the Examiner, and do not address what the collective
teachings of the references would have suggested to the skilled artisan. Br.
7-11, 27-31. Such arguments, without more, do not identify error in the
rejection because it is well-settled that "[ n ]on-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ( citation omitted). Where Appellant does discuss the combination of
references, Appellant advances incomplete arguments that do not fully
address the Examiner's mapping as set forth in the rejection. For example,
Appellant alleges "neither [Withers nor Sarata] discloses a third chamber."
Br. 11. The Examiner, however, does not rely on the Withers and Sarata
references for a teaching of a third chamber, but rather relies on Li for this
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Application 13/723,389
finding. Final 3. See also Br. 28-31 (where Appellant alleges that the
principle of operation of Withers would be changed if combined with Lin
and Sarata for reasons that do not address the Examiner's sole reason for
relying on Withers, i.e., the use of Wither's catalyst to "promote hydrogen
formation" (Final 3--4)). Here, we agree with the Examiner (Ans. 34--35)
that "Withers is cited only for the use of [a] catalyst," and "[i]t is not
suggested, nor necessary that [Withers, Sarata, and Lin] be combined in their
entirety."
Also, Appellant advances several arguments for patentability based on
limitations that do not appear in the claims. See Br. 10 ("Lin ... fails to
teach or suggest a reusable and regulatable hydrogen generator."); see also
id. at 12 ("Appellant's disclosure teaches two chemical components of
hydrogen generation (water and chemical) that are mixed when hydrogen is
needed at the place of use."); id. at 13 (regarding Appellant's purported
disclosure of self-metered water collected at the point of use, orientation
independent operation, the compression pressure applied, and using the
remaining water level as an "automatic indicator of remaining hydrogen
reserve"). The predecessor to our reviewing court has held, however, that
such arguments "fail from the outset because ... they are not based on
limitations appearing in the claims." In re Self, 671 F.2d 1344, 1348 (CCPA
1982). See Ans. 19-20, 23-25.
Also, several of Appellant's arguments reflect a misunderstanding of
what is required to establish a prima facie case of obviousness. In particular,
the prior art relied upon need not suggest the desirability of the modification
as Appellant suggests. Br. 18, 19, 23, 25, 26, 32-33. Rather, the
"interrelated teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the background
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Appeal2017-011043
Application 13/723,389
knowledge possessed by a person having ordinary skill in the art, all [ can
provide] an apparent reason to combine the known elements in the fashion
claimed." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Also,
Appellant's repeated contention that "[o]bvious to try, however, is not the
standard by which obviousness is determined under 35 U.S.C. § 103" is a
misstatement of the law. Br. 21, 25, 32; see KSR, 550 U.S. at 421
( explaining that it is erroneous to conclude "that a patent claim cannot be
proved obvious merely by showing that the combination of elements was
' [ o ]bvious to try"').
Furthermore, Appellant's repeated conclusory assertions that the
Examiner employed impermissible hindsight in reaching various
obviousness determinations fall short of identifying reversible error. Br. 10,
15, 16, 19-25. On this record, we see no evidence of such alleged hindsight.
Rather, upon reviewing the Examiner's fact findings, the cited prior art, and
the obviousness rationales discussed in the Final Office Action and the
Answer, we determine that the Examiner complied with the requirements of
35 U.S.C. § 103(a) and applicable case law.
Here, we highlight one such unpersuasive allegation of hindsight
regarding the rejection of claim 2. Claim 2 depends from claim 1 and
additionally requires that the first chamber is detachable from the second
chamber. Br. 3 6. The Examiner reasoned that the skilled artisan would
have realized making the chambers detachable "would provide access to
both the solid reactant and filtering element, thus allowing these components
to be replaced or cleaned." Final Act. 5. Appellant argued that "[t]he
Examiner has not pointed to any teachings in the Appellant's disclosure that
refers to cleaning or reusing the first or second chambers." Br. 15-16
(emphasis added). As well-stated by the Examiner, however, "[t]he fact that
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Application 13/723,389
Appellant's disclosure lacks a teaching for cleaning or replacing components
indicates that this rationale is not hindsight." Ans. 25.
For these reasons, and those provided by the Examiner, we are of the
opinion that Appellant has failed to identify reversible error in the
Examiner's rejections of claims 1-17, 19 and 20. We, therefore, sustain the
Examiner's rejections of these claims.
DECISION
The Examiner's final decision to reject claims 1-17, 19, and 20 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).
AFFIRMED
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