Ex Parte Zappi et al

Patent Trial and Appeal Board

Jan 16, 2015

12136331 (P.T.A.B. Jan. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUILLERMO DANIEL ZAPPI, KENNETH PAUL ZARNOCH,
CHRISTIAN ANDREW HUNTLEY, and DANA RAY SWALLA
____________

Appeal 2013-003703
Application 12/136,331
Technology Center 1700
____________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–24, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
Appellants’ invention relates to a method for in situ electroplating of
electrodes in electrochemical devices, such as electrolyzers. Spec. ¶ 2.

1 Appellants identify General Electric Company as the real party in interest.
App. Br. 2.
Appeal 2013-003703
Application 12/136,331

2
Claim 1 is representative of the claims on appeal, and is reproduced below
from the Claims Appendix to the Appeal Brief:
1. A method for in situ processing of electrodes,
comprising:
assembling a plurality of cells, wherein each cell comprises a
metal plate and a diaphragm;
joining the plurality of cells together to form a device
comprising a stack of cells, wherein the metal plate of each cell
is separated from the metal plate of an adjoining cell by the
diaphragm of the respective cell;
plating the metal plate of each cell in situ by flowing a plating
solution through each cell and applying an electrical field
across the stack to form a metal layer over the metal plate of
each cell; and
increasing the surface area of the metal layer in situ. 
The References
Brannan US 4,104,133 Aug. 1, 1978
Kuo US 4,160,704 July 10, 1979
Bachot US 4,547,411 Oct. 15, 1985
Beaver US 5,227,030 July 13, 1993
Johal US 6,485,627 B1 Nov. 26, 2002
Bowen US 2006/0228619 A1 Oct. 12, 2006
The Rejections
1. Claims 1–10, 13, 14, 16, and 19–24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kuo in view of Bowen and Brannan;
2. Claims 11, 12, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuo in view of Bowen and Brannan, as applied to claim 1,
and further in view of Beaver;
3. Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kuo in view of Bowen and Brannan, as applied to claim 1, and further in
Appeal 2013-003703
Application 12/136,331

3
view of Johal; and
4. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kuo in view of Bowen and Brannan, as applied to claim 16, and further in
view of Bachot.
OPINION
We reverse the rejections of claims 1–24 under 35 U.S.C. § 103(a).
Rejection 1. The Examiner finally rejected claims 1–10, 13, 14, 16,
and 19–24 as obvious over the combination of Kuo, Bowen, and Brannan.
Ans. 5–20.
Because we reverse the rejection, we need address only the
independent claims, i.e., claims 1 and 19. Claim 1 requires in situ plating of
the metal plate of each cell in a stack of cells. The metal plate of each cell is
separated from the metal plate of an adjoining cell by the diaphragm of the
respective cell. App. Br. 14 (Claims App’x.) Claim 19 requires in situ
plating of metal plates interposed with a plurality of diaphragm assemblies
in an electrolyzer body. Id. at 16. The plating set forth in claims 1 and 19 is
carried out by flowing a plating solution through each cell (claim 1) or the
flow paths of the electrode assemblies and diaphragm assemblies (claim 19).
Id. at 14, 16.
Appellants argue that the Examiner’s rejection should be reversed
because the Examiner’s rationale for combining Kuo, Bowen, and Brannan
to arrive at Appellants’ claims 1 and 19 constitutes impermissible hindsight.
Id. at 7–9.
Kuo discloses a method of in situ plating to lower hydrogen
overvoltage of cathodes comprising introducing metal ions into a catholyte
solution and plating the metal ions, in metallic form, on the cathode side of
Appeal 2013-003703
Application 12/136,331

4
the cell. Ans. 5–6; Kuo 1:40–53. Kuo’s “[c]ell 12 comprises a cathode side
28, an anode side 30 and a membrane 32 (i.e., diaphragm) therebetween.”
Kuo 2:62–63 and Fig.; Ans. 26. Kuo’s Figure is reproduced below.

Kuo’s Figure depicts electrolytic assembly 10 comprising cell 12, ion
generators 14, 16, 18, and 20 (which generate low overvoltage metal ions 53
and introduce the generated ions into the catholyte 38 for deposition on the
cathode 34 in the form of a plating 54), catholyte feed line 24, and catholyte
product withdrawal line 26. Kuo 2:8–12, 3:26–30. During the plating
process:
valves 60 and 64 are opened to allow storage tank 56 to fluidly
communicate with cathode chamber 36. Pump means 22 is
then activated to circulate the plating solution 69 in tank 56
through cathode chamber 36 while cell 12 otherwise is being
operated normally. After an amount of time, valves 68 and 66
are opened and valves 60 and 64 closed to remove storage tank
56 from fluid communication with cathode chamber 36.
Id. at 4:65–5:5.
Appeal 2013-003703
Application 12/136,331

5
Bowen discloses an improved electrochemical cell or electrolyzer
structure, wherein the cell is an assembly of a plurality of cells or electrode
assemblies, with each cell comprising a bipolar plate surrounded by the
anode and cathode (i.e., a metal plate) and a diaphragm, or the electrode
assemblies comprising metal plates interposed with a plurality of diaphragm
assemblies in an electrolyzer body. Ans. 6, 15; Bowen ¶¶ 2, 6, 24, and Figs.
4 and 5. Bowen further teaches joining the plurality of cells together to form
a stack of cells with the metal plate of each cell separated from the metal
plate of an adjoining cell by the diaphragm of the respective cell, or
assembling the electrode assemblies and the diaphragm assemblies including
flow paths for the flow of fluid over the electrode assemblies and diaphragm
assemblies. Ans. 6, 15; Bowen 23, 31, and Figs. 3 and 11.
Brannan discloses a process for depositing a metal coating onto the
cathode tubes of an electrolysis cell without removing the cathode tubes
from the electrolysis cell. Brannan 4:44–4:66. Brannan teaches that “[i]n
order to deposit an active metal coating onto the cathode tubes 16 without
removing [the] same from [the] electrolysis cell A,” the electrolysis cell is
emptied of brine solution, the diaphragm coatings on the cathode tubes are
removed, the anode base and electrolysis anodes (i.e., anodes used in the
normal electrolytic process) are removed, and the cathode tubes are cleaned,
acid pickled, and immersed into the electroplating solution for metal
deposition. Id. Brannan’s process increases the surface area of the metal
layer in situ. Ans. 7; Brannan 2:34–52. Like Kuo, Brannan’s disclosed
process is used to lower the hydrogen discharge overpotential at the cathode.
Ans. 7; Brannan 1:6–11 and abstract.
Appeal 2013-003703
Application 12/136,331

6
“A patent composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
The Examiner asserts that, because Kuo teaches in situ plating a metal
plate with a metal layer and Bowen teaches the structural cell/electrolyzer
assembly recited in each of claims 1 and 19, it would have been obvious for
one of ordinary skill in the art to modify Kuo’s plating method to include
Bowen’s cell structure in order to in situ electroplate metal plates to form
electrodes and simplify the fabrication and construction of the apparatus.
Ans. 6–7, 15. The Examiner further argues that a skilled artisan would have
found “the process of electroplating within the cell structure of Bowen []
possible and applicable since both the cell structures of Kuo and Bowen
comprise metal plates and diaphragms.” Id. at 27.
The Examiner, however, has not explained how one of ordinary skill
in the art would have been able to apply Kuo’s technique of in situ plating a
single cell, which utilizes a tank to flow the plating solution through the
cathode chamber (i.e., the plating solution does not flow through the
diaphragm) to Bowen’s plurality of cells/assemblies structure, absent resort
to Appellants’ Specification. Indeed, Brannan, which, like Kuo, discloses in
situ electroplating, teaches removal of the diaphragm prior to electroplating.
Brannan 4:44–48. Thus, we are not convinced on the record before us that
the Examiner has presented the necessary reasoning with a rational
underpinning to support the obviousness rejection over the combination of
Kuo, Bowen, and Brannon. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
Appeal 2013-003703
Application 12/136,331

7
Accordingly, we reverse the rejection of independent claims 1 and 19
under 35 U.S.C. § 103(a), as well as claims 2–10, 13, 14, and 16, which
depend from claim 1, and claims 20–24, which depend from claim 19.
Rejection 2. The Examiner finally rejected claims 11, 12, and 18 as
obvious over the combination of Kuo, Bowen, and Brannan, as applied to
claim 1, and in further view of Beaver. Ans. 20–22.
Claims 11, 12, and 18 depend directly or indirectly from claim 1 and
also require in situ plating of the metal plate (coupled to a diaphragm and
separated from the metal plate of an adjoining cell by the diaphragm of the
respective cell) of each cell in a stack of cells by flowing a plating solution
through each cell. The Examiner does not rely on Beaver to cure the
deficiency in the combination of Kuo, Bowen, and Brannan.
Accordingly we reverse the rejection of claims 11, 12, and 18 under
35 U.S.C. § 103(a).
Rejection 3. The Examiner finally rejected claim 15 as obvious over
the combination of Kuo, Bowen, and Brannan, as applied to claim 1, and in
further view of Johal. Ans. 22–23.
Claim 15 depends directly from claim 1 and also requires in situ
plating of the metal plate (coupled to a diaphragm and separated from the
metal plate of an adjoining cell by the diaphragm of the respective cell) of
each cell in a stack of cells by flowing a plating solution through each cell.
The Examiner does not rely on Johal to cure the deficiency in the
combination of Kuo, Bowen, and Brannan.
Accordingly, we reverse the rejection of claim 15 under 35 U.S.C.
§ 103(a).
Appeal 2013-003703
Application 12/136,331

8
Rejection 4. The Examiner finally rejected claim 17 as obvious over
Kuo, Bowen, and Brannan, as applied to claim 16, and in further view of
Bachot. Ans. 23–24.
Claim 17 depends directly from claim 16 (which depends directly
from claim 1) and also requires in situ plating of the metal plate (coupled to
a diaphragm and separated from the metal plate of an adjoining cell by the
diaphragm of the respective cell) of each cell in a stack of cells by flowing a
plating solution through each cell. The Examiner does not rely on Bachot to
cure the deficiency in the combination of Kuo, Bowen, and Brannan.
Accordingly, we reverse the rejection of claim 17 under 35 U.S.C.
§ 103(a).
DECISION/ORDER
The Examiner’s rejections of claims 1–24 under 35 U.S.C. § 103(a)
are reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED

sl