Ex Parte Roberge et al

Patent Trial and Appeal Board

Jul 25, 2016

10568721 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/568,721 0912612006 Guillaume Roberge
40582 7590 07/27/2016
American Air Liquide, Inc,
Intellectual Property Department
9811 Katy Freeway
Suite 100
Houston, TX 77024
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.
Serie 6338 4862
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
IP-USOffice@airliquide.com
Neva.Dare-c@airliquide.com
J us tin.Murray@airliquide.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUILLAUME ROBERGE,
PIERRE CHARLAT, and THIERRY NOVET
Appeal2014-009233
Application 10/568,721
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 15 and 17-27. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Representative claim 15 is reproduced below from the Claims Appendix of
the Appeal Brief dated March 10, 2014 ("App. Br."). The limitations at issue are
italicized.
15. A device for transferring water and heat between a first air flow
and a second air flow, comprising a stack of at least two transfer
Appeal2014-009233
Application 10/568,721
subassemblies having a lamellar configuration, each of said transfer
subassemblies comprising:
a first structure comprising channels for distributing the first air
flow·
'
a second structure comprising channels for distributing the
second air flow;
one macroporous hydrophilic layer; and
two microporous hydrophilic layers, wherein said one
macroporous hydrophilic layer is sandwiched between said two
microporous hydrophilic layers to form a three-layer structure and
said three-layer structure is sandwiched between said first and second
structures.
App. Br. 13 (emphasis added).
The claims on appeal stand rejected as follows:
(1) claims 15, 17, 18, 20-25, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Grasso et al. 1 in view of Mossman;2
(2) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Grasso in
view of Mossman, and further in view of Goebel; 3 and
(3) claim 26 under 35 U.S.C. § 103(a) as unpatentable over Grasso in
view of Mossman, and further in view of Richardson et al. 4
B. DISCUSSION
Claim 15 recites "[a] device for transferring water and heat between a first
air flow and a second air flow, comprising a stack of at least two transfer
subassemblies having a lamellar configuration .... " App. Br. 13 (emphasis
added).
1 US 2001/0004500 Al, published June 21, 2001 ("Grasso").
2 US 2001/0046616 Al, published November 29, 2001 ("Mossman").
3 US 2004/0170878 Al, published September 2, 2004 ("Goebel").
4 US 2004/0265673 Al, published December 30, 2004 ("Richardson").
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Appeal2014-009233
Application 10/568,721
The Examiner finds Grasso discloses a fine pore enthalpy exchange barrier
12 for use in a fuel cell and finds the fine pore enthalpy exchange barrier
corresponds to the claimed transfer subassembly. Final 2. 5 The Examiner does not
find that Grasso discloses at least two transfer subassemblies as recited in claim
15.6 Nonetheless, we find Grasso expressly discloses that "a plurality of stacked
fine pore enthalpy exchange barriers 12" may be used "as is common in the heat
exchanger art, in order to enhance the efficiency of the [mass and heat transfer]
device 92 depending upon performance characteristics and water recovery
requirements of [fuel cell power] plant 10." Grasso i-f 42; see also Grasso i-f 51.
Claim 15 also recites that each of the transfer subassemblies comprises, inter
alia, "one macroporous hydrophilic layer; and two microporous hydrophilic layers,
wherein said one macroporous hydrophilic layer is sandwiched between said two
microporous hydrophilic layers to form a three-layer structure." App. Br. 13.
The Examiner finds the fine pore enthalpy exchange barrier disclosed in
Grasso is a support matrix that is hydrophilic and macroporous but finds Grasso
does not disclose that the exchange barrier is sandwiched between two
microporous layers as recited in claim 15. Final 2. Nonetheless, the Examiner
finds Mossman discloses a microporous membrane for use in a fuel cell system.
The Examiner finds the microporous membrane "prevent[ s] a substantial transfer
5 Final Office Action dated September 5, 2013.
6 The preamble of claim 15 recites "[a] device for transferring water and heat
between a first air flow and a second air flow." App. Br. 13. The Examiner
reasons that "there would need to be a third and forth [sic, fourth] airflow
pertaining to the second transfer subassembly, elements which are not claimed ....
Applicant is encouraged to positively recite structural limitations that are pertinent
to the invention in a manner which narrows the scope of the device." Final 6. If
the Examiner is of the opinion that claim 15 is indefinite, we note the Examiner
has not entered a rejection under 35 U.S.C. § 112, second paragraph.
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Appeal2014-009233
Application 10/568,721
of oxygen depleted air as well as ... conserve[s] energy." Final 2 (citing
Mossman i-f 33). Based on this finding, the Examiner concludes that adding the
microporous membrane disclosed in Mossman to both sides of Grasso' s
macroporous layer would have been obvious to one of ordinary skill in the art.
Final 2-3 (citing Mossman i-f 33).
The Appellants argue that "[t]he Examiner has pointed to no portion of
Mossman or Grasso that discloses modification of top and bottom surfaces of a
macroporous layer to provide such layers with a microporous morphology." App.
Br. 9. In particular, the Appellants argue that Mossman discloses a single layer of
microporous membrane material and "does not disclose any difference in porosity
between the surfaces (bottom and top) and the middle." App. Br. 9. Therefore, the
Appellants argue that Mossman does not suggest the modification proposed by the
Examiner. App. Br. 9; see also App. Br. 10 (questioning why one of ordinary skill
in the art would not have simply substituted the Grasso membrane with the single
layer ivfossman membrane).
In response, the Examiner finds that "[ t ]he prior art teaches creating multiple
layers wherein a layer is defined by a portion of the assembly which has different
properties from an adjoining region." Ans. 3.7 The Examiner does not direct us to
any disclosure in Grasso or Mossman to support that finding. Notably, we find the
only embodiment in Grasso expressly describing "a multi-layer, dual pore-size
configuration" is a fine pore enthalpy exchange barrier comprising "a central layer
... surrounded by opposed exterior layers and the exterior layers define pores
having a larger pore-size range than pores defined by the central layer."8 Grasso
7 Examiner's Answer dated June 19, 2014.
8 We find this embodiment corresponds to the second embodiment described in
Grasso paragraph 43.
4
Appeal2014-009233
Application 10/568,721
i-f 16 (emphasis added). This disclosure is in direct contrast to claim 15 reciting
that "said one macroporous hydrophilic layer is sandwiched between said two
microporous hydrophilic layers." App. Br. 13 (emphasis added).
On this record, there would have been no reason to modify the fine pore
enthalpy exchange barrier of Grasso with Mossman's microporous membrane, as
proposed by the Examiner, absent the Appellants' disclosure. The Examiner's
reliance on Goebel and Richardson in the§ 103(a) rejections of claims 19 and 26,
respectively, does not cure this deficiency. Therefore, the§ 103(a) rejections of
claims 15 and 17-27 are not sustained.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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