Ex Parte Vinton et al

Patent Trial and Appeal Board

Jan 15, 2019

13823084 (P.T.A.B. Jan. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/823,084 05/21/2013 Melvin Frederick Vinton
76831 7590 01/17/2019
Squire Patton Boggs (PAL Office)
275 Battery Street
Suite 2600
San Francisco, CA 94111
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.
113550.00015 8642
EXAMINER
CHUNG, HO-SUNG
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
01/17/2019 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):
sfripdocket@squirepb.com
frank. bernstein@ squirepb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEL VIN FREDERICK VINTON and DEREK JOHN FRAY
Appeal 2017-011392
Application 13/823,084 1
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner's rejection of claims 1-16 and 18-31. App. Br. 11-34.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellants identify Inotec AMD Limited as the real party in interest. App.
Br. 3.
Appeal 2017-011392
Application 13/823,084
BACKGROUND
The claimed subject matter on appeal is directed to an oxygen
concentrator apparatus ( claim 1 ).
Figure 1 illustrates the claimed subject matter of sole independent
claim 1 and is copied below from Appellants' Drawings:
/ 2..
,K
Figure 1 depicts "an exploded view of an oxygen concentrator."
Spec. 16:31.
Sole independent claim 1 is illustrative of the appealed subject matter,
and is copied below from the Claims Appendix to the Appeal Brief, with
emphasis added to relevant limitations at issue in this appeal and brackets
added to identify certain structural features appearing in Figure 1:
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Application 13/823,084
1. An oxygen concentrator [2] comprising:
a proton-conducting membrane [12];
a cathode [24] contacting a first side of the membrane;
an anode [26] contacting a second side of the membrane;
a catalytic apparatus comprising a catalyst [30] and a
diffusion layer [28], the diffusion layer spacing the catalyst
from the cathode; and
a housing [ 4, 6] defining a cathode chamber, the catalytic
apparatus being contained within the cathode chamber and the
housing defining one or more vents enabling air to flow to the
catalyst, the housing being configured so as not to contain a
water reservoir for the proton-conducting membrane;
absence of the water reservoir for the proton-conducting
membrane requiring the oxygen concentrator to continue to
operate, after beginning its operation, using water sourced
solely from recycling, at the catalyst, of cathode-generated
hydrogen by reaction with atmospheric oxygen.
App. Br. A-36.
REJECTIONS
I. Claims 1-16 and 18-31 are rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with both the written
description and enablement requirements (Final 2--4); and
II. Claims 1-16 and 18-31 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Fray (WO 2006/092612 A2, published
Sept. 8, 2006) in view of Maruyama (US 2004/0253494 Al,
published Dec. 16, 2004), either with or without additional
prior art (Final 4--27).
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Application 13/823,084
OPINION
The Rejections under 35 USC§ 112,first paragraph
i. Written description
The Examiner finds that the Specification lacks sufficient written
description support to reasonably convey that the inventors had possession
of an oxygen concentrator that, "after beginning its operation, us[ es] water
sourced solely from recycling" as recited in claim 1. Final 3.
In arguing this rejection, Appellants present arguments only directed
to independent claim 1. We, therefore, select this claim as representative
and decide the propriety of this rejection on the basis of claim 1 alone.
37 C.F.R. § 4I.37(c)(l)(iv). Specifically, Appellants allege that the
Examiner's finding is erroneous because, in the passages of the Specification
that discuss "continued operation" of the oxygen concentrator apparatus,
there is "no mention of atmospheric humidity being used." App. Br. 14; see
also id. at 13 ("the passage says nothing about atmospheric humidity playing
a role in continuing the operation of the oxygen concentrator"). Appellants
further contend that "the Examiner looks selectively at one portion of the
specification, and ignores other portions of the specification." Id. at 14.
The dispositive issue, then, is whether a preponderance of the
evidence supports the Examiner's finding that, at the time of the invention,
Appellants did not possess an oxygen concentrator that "after beginning its
operation, us[ es] water sourced solely from recycling" as recited in claim 1.
(emphasis added). We answer this question in the affirmative and sustain
the rejection.
Adequate written description means that, in the specification, the
applicant must "convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or she was in
possession of the [claimed] invention." Vas-Cath, Inc. v.
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Application 13/823,084
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). When no
such description can be found in the specification, the only thing
the PTO can reasonably be expected to do is to point out its
nonexistence.
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).
This is precisely what the Examiner does here. Final 3. The
Examiner also refers to several locations in the Specification to support the
finding that atmospheric humidity is in fact required to operate the recited
oxygen concentrator - "after beginning its operation" - in order to avoid
inducing failure. Id. at 28 ( citing Spec. 11: 14--29); Ans. 3; see also id. at 4
(citing Spec. 6:4--8 (explaining how "the combination of ambient humidity
entering the cathode chamber and the efficient recycling of water by the
catalytic apparatus are sufficient to enable continuous oxygen generation at a
very wide range of ambient humidity," and how "[t]he concentrator may not
be able to operate at extremely low ambient humidity." (emphasis added)));
id. at 5 ( citing Spec. 3: 19--23 ( noting how "the oxygen concentrator can
operate continuously[,] with no water supply other than atmospheric
humidity," and how the "concentrator advantageously does not need a water
reservoir and can electrolyse water derived only from humidity in the air and
from the catalyst." ( emphasis added))). The Examiner's citation to page 11
of the Specification (Final 28; Ans. 3) is particularly noteworthy because it
discusses the oxygen concentrator's function after operation has begun,
which is the point in time that claim 1 recites, i.e., "requiring the oxygen
concentrator to continue to operate, after beginning its operation."
( emphasis added). This portion of the Specification expressly states that "a
failure mode of the cell may be if the ambient atmosphere is of extremely
low humidity" because "the water content of the proton-conducting
membrane may progressively reduce and the resistance of the cell may rise."
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Spec. 11:26-29. Appellants' argument (App. Br. 14--15) that this particular
disclosure "focuses on operation of the oxygen concentrator based on water
recycling from the catalyst to the proton-conducting membrane" does not
sufficiently explain how the referenced disclosure fails to apply to operation
of the oxygen concentrator "after beginning its operation" as recited in
claim 1.
Furthermore, Appellants' arguments (Reply Br. 2--4) that the
Examiner somehow selected portions of the Specification dealing with
alternative embodiments not covered by the appealed claims lack persuasive
merit. Appellants point to no portion of the Specification that delineates
between embodiments that use ambient humidity and those that do not.
Therefore, on this record, the preponderance of the evidence supports
the Examiner's finding that the recitation "water sourced solely from
recycling" is new matter.
ii. Enablement
The Examiner also determines that the Specification does not enable
the skilled artisan to make and/ or use the claimed oxygen concentrator
"[b ]ecause the person having ordinary skill in the art would not be able to
discern from Applicants' specification how to make the concentrator stop
using the air's water." Final 3.
Appellants again focus their arguments on claim 1 (App. Br. 15-19),
which we again select as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Specifically, Appellants argue that the Examiner "misapprehended the role
of atmospheric humidity in the" oxygen concentrator's operation because
"[a]s long as the proton conducting membrane has enough water to operate
at the beginning," the oxygen concentration process continues, resulting in
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Application 13/823,084
"no need for any external atmospheric water (humidity) to be required for
the device to continue to operate." App. Br. 17. According to Appellants,
the continued electrolysis "constitutes the mechanism by which atmospheric
humidity is stopped from being used or even needed." Id.
This line of argument does not reveal error in the rejection. "[T]o be
enabling, the specification of a patent must teach those skilled in the art how
to make and use the full scope of the claimed invention without 'undue
experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
Furthermore,
[ w ]hen rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
Wright, 999 F.2d at 1561-2.
Here, the Examiner satisfies this burden, and Appellants have not
provided sufficient evidence in rebuttal that demonstrates enablement.
Ans. 8-12. Upon review of the appeal record before us, we agree with the
Examiner (id. at 10) that Appellants have failed to point to any disclosure
regarding "how to exclude the humidity in the air."
Thus, for the reasons set forth by the Examiner in the Final Action and
the Answer, we sustain the rejection of claims 1-16 and 18-31 as failing to
comply with the enablement requirement of 35 U.S.C. § 112, first paragraph.
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The Rejections under 35 USC§ 103
Claims 1, 7-12, 15, 16, and 18-31
In arguing the obviousness rejections of these claims, Appellants
present arguments only directed to independent claim 1. App. Br. 19-30.
Again, we select this claim as representative. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Relevant to the appeal of this rejection, the Examiner finds, and
Appellants do not dispute, that Fray discloses an oxygen concentrator
comprising the structural components recited in claim 1, except that Fray's
concentrator contains a water reservoir. Final 4---6. 2 The Examiner
addresses this difference in several ways.
First, the Examiner finds that Maruyama teaches the use of air
moisture as a water source for a water electrolysis reaction, and that such use
was known to reduce needed maintenance. Id. at 6 ( citing Maruyama
,r,r 157-165; Fig. 14). Based on this finding, the Examiner determines that
the skilled artisan would have "recognize[ d] that air humidity would be a
suitable substitute for a water reservoir as a water source for a water
electrolysis." Id. The Examiner also determines that it would have been
obvious to have substituted Fray's water reservoir with Maruyama's
teaching of using humidity as a water source for the purpose of reducing
needed maintenance. Id.
2 The Examiner additionally finds that Fray does not expressly teach the
limitation regarding "using water sourced solely from recycling." Final 6-7.
Because this limitation lacks written descriptive support, and is not enabled
under 35 U.S.C. § 112, first paragraph, however, we need not address the
Examiner's findings or Appellants' arguments regarding this limitation for
purposes of deciding the propriety of the Examiner's obviousness rejections.
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Additionally, the Examiner finds that Fray's water reservoir 125 is not
the only possible source of water. Ans. 14--19. Namely, the Examiner finds
that Fray's inlet holes 106 serve as a water source because Fray teaches that
air is fed through such inlets, and that the skilled artisan would have
understood that a "water source" as referred to in Fray's Abstract is a broad
term which encompasses not only water reservoirs, but also other types of
water supplies. Id. at 14--16. The Examiner determines that "[b ]ecause
Maruyama teaches that both a reservoir and air humidity are both suitable
water sources for feeding a water electrolysis reaction, a person having
ordinary skill in the art would [have] recognize[ d] that both are suitable
substitutes for each other." Id. at 17. The Examiner also points to Fray's
Figure 4 to support the finding that humidity in the air would reach catalyst
30. Id. at 18.
We have considered Appellants' arguments in support of patentability
(App. Br. 19--30; Reply Br. 4--8) and are unpersuaded that Appellants have
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, 7-12, 15, 16, and 18-31 based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Action and in the Answer. We add the following.
Appellants focus their arguments on the premise that Fray requires a
water reservoir. Such arguments, however, fail to address, much less reveal
error in, the Examiner's findings regarding Fray's additional water
source 106. Ans. 14--19. On this record, it is undisputed that Fray's
inlet 106 acts as a water source by virtue of allowing the water present in air
(i.e., humidity) to travel into Fray's membrane electrode assembly and to be
utilized therein. Id. at 15-19. Such incomplete arguments that focus on
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only one of three water sources identified by the Examiner fail to identify
reversible error in the rejection.
It follows that we sustain the obviousness rejections of these claims.
Claims 2-6, 13, and 14
Appellants' arguments regarding these claims largely focus on the
same premise as those for claim 1, i.e., that Fray requires a water reservoir
for operation. App. Br. 30-33. We find such arguments unpersuasive
because they do not address the full scope of the Examiner's findings
regarding Fray's water sources. Ans. 14--19. As to Appellants' other
arguments regarding the size and shape of the vents and ventilation
parameters, we find such arguments unpersuasive for the well-stated reasons
given by the Examiner. Ans. 36-45.
We, therefore, sustain the Examiner's rejection of these claims.
DECISION
The Examiner's final decision to reject claims 1-16 and 18-31 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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