Ex Parte Barry et al

Patent Trial and Appeal Board

Oct 25, 2017

12369219 (P.T.A.B. Oct. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/369,219 02/11/2009 Terence P. Barry P06336US (28243-55) 3441
76656 7590
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
USpatents @ armstrongteasdale. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERENCE P. BARRY, DEAN T. TOMPKINS,
MARC A. ANDERSON, and WALTER A. ZELTNER
Appeal 2016-004133
Application 12/369,219
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and MONTE
T. SQUIRE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
1 This Decision includes citations to the following documents: Specification filed
Feb. 11, 2009 (“Spec.”); Final Office Action mailed Apr. 23, 2015 (“Final”);
Appeal Brief filed June 2, 2015 (“Br.”); and Examiner’s Answer mailed Dec. 16,
2015 (“Ans.”).
Appeal 2016-004133
Application 12/369,219
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1—18 and 25—32. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
The invention relates to a photoelectrocatalytic oxidation device for use,
e.g., in an aquarium or a closed, recirculating aquaculture system. See Spec. ]Hf 87,
89. Claim 1, the sole independent claim on appeal, and dependent claim 32 are
reproduced below:
1. A photoelectrocatalytic oxidation device comprising:
a photoelectrocatalytic composite photoanode comprising a
solid nanoporous film member having a median pore diameter in the
range of 0.1 nm to 500 nm constructed from TiCF nanoparticles, the
nanoporous film member adhered to a conductive metal support
member,
a cathode,
a housing member having an inlet and outlet, the housing
member adapted to house the photoelectrocatalytic composite
photoanode and cathode,
a light source assembly adapted to emit ultraviolet light to the
photoelectrocatalytic composite photoanode, and
an electrical power source that applies a voltage across the
photoelectrocatalytic composite photoanode and cathode in the range
of+4 Vto +12 V.
Br. 10 (emphasis added).
32. The photoelectrocatalytic oxidation device of claim 1,
wherein water is reduced into H2 at the cathode by electrolysis.
Id. at 13.
2 Appellants identify the real party in interest as Wisconsin Alumni
Research Foundation. Br. 1.
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Appeal 2016-004133
Application 12/369,219
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. claims 1—4, 7—12, 14, 18, and 25—32 over Kaneko et al,
Photoelectrochemical reaction of biomass and bio-related compounds with
nanoporous HO2 fdm photoanode and 02-reducing cathode, 8 Electrochemistry
Communications 336—340 (2006) (hereinafter “Kaneko”), in view Bray (WO
03/082750 Al, pub. Oct. 9, 2003);
2. claims 5 and 6 over Kaneko in view of Bray and Anderson (US
5,215,943, iss. June 1, 1993);
3. claim 13 over Kaneko in view of Bray and Snee (US 5,603,843, iss.
Feb. 18, 1997); and
4. claims 15—17 over Kaneko in view of Bray and Brandli (US
4,349,765, iss. Sept. 14, 1982).
With respect to the above-listed, first ground of rejection, Appellants present
arguments in support of patentability of claims 1 and 32. See Br. 3—6. Appellants’
arguments in support of patentability of the remaining claims subject to this ground
of rejection are limited to a general assertion that the applied prior art fails to
disclose or suggest the recited limitations. Id. at 6. Appellants’ traversals of the
above-listed, second, third, and fourth grounds of rejection are limited to general
assertions that the additional references relied on by the Examiner fail to cure the
deficiencies in the Examiner’s rejection of claim 1 as unpatentable over the
combination of Kaneko and Bray, and that the applied prior art fails to disclose or
suggest the recited limitations. Id. at 6—8. Accordingly, claims 2—18 and 25—31
will stand or fall with independent claim 1, from which they depend. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
Appellants’ arguments with respect to the Examiner’s rejection of claim 1
(see Br. 3—5) raise the following issue: Have Appellants identified reversible error
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Application 12/369,219
in the Examiner’s finding that one of ordinary skill in the art would have been
motivated, based on Bray’s disclosure, to “construct the Kaneko . . . device with
an electrical power source that applies a voltage across the photoelectrocatalytic
composite photoanode and cathode in the range of +4 V to +12 V ” (Final 8)? We
answer this question in the negative for the reasons explained below.
With respect to the argued claim 1 limitation (see italicized language in
claim 1, supra, p. 2), the Examiner found Kaneko discloses “a photofuel cell that
provides electrical power by the photoelectrochemical decomposition of biomass,
bio-related materials such as ammonia, and other electron-donating compounds.”
Final 5—6. The Examiner further found Kaneko discloses two sources of electrical
power: the fuel provided to the photofuel cell device, and an additional power
source “as evidenced by (1) a cyclic voltammogram that was generated with a
voltage scanning rate of 20 mVs'1 and a sweep direction of 0 —> -0.9 —> +0.4 —> 0
V, and (2) a xenon light source at an intensity [of] 505 mW cm'2 which is used to
run the photochemistry.” Id. at 6 (citing Kaneko, Fig. 1). The Examiner found
Bray discloses a device that, like Kaneko’s device, uses an electrochemical process
to decompose compounds such as ammonia. Id. at 3 (citing Bray 4—5). The
Examiner found, more specifically, that Bray discloses “ammonia is oxidized to
nitrogen with a pulsed electrical power source having [an] ‘output between 5 Volts
and 25 Volts,”’ and that, for titanium electrodes, a suitable applied voltage is from
6 Volts up to 12 Volts. Id. at 8 (citing Bray, Abstract, 5, 7—8). The Examiner
found Bray teaches the pulsed power source provides “[p]recise control over the
electrochemical process [to] maintain[] the optimum conditions under which
oxidation takes place and organic compounds are broken down with a high degree
of efficiency. When the apparatus is ‘switched-on’ the oxidation process begins
and continues until it is ‘switched-off’.” Id. at 2 (citing Bray 4,11. 18—21). Based
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Application 12/369,219
on this noted advantage, the Examiner found the ordinary artisan at the time of the
invention would have modified Kaneko to include a pulsed electrical power source
as disclosed in Bray whereby, when the power source is switched-on, electricity is
consumed to provide control over the electrochemical process as described in
Bray, and when the power source is switched-off, electricity is generated via the
photoelectrochemical decomposition described in Kaneko. Id. at 2—3.
Appellants’ principal argument is that one of ordinary skill in the art would
not have modified Kaneko to include a power source that applies a voltage in the
claimed range of +4 V to +12 V because such modification would have rendered
Kaneko’s device unsatisfactory for its intended purpose of generating electricity.
Br. 4—5. Appellants argue, more specifically, that Kaneko’s device is intended to
generate a maximum of 0.94 V. Id. at 5. According to Appellants, if modified to
include a power source that applies a voltage between 4 and 12 times greater than
the maximum voltage output, Kaneko’s device would consume more power than it
generates, thereby changing the principle of operation of the device and rendering
it unsatisfactory for its intended purpose of electricity generation. Id.
We agree with the Examiner that Appellants’ argument is not persuasive of
error in the rejection of claim 1 for the reasons stated in the Answer. See Ans. 20—
26. As explained by the Examiner, Appellants have not identified persuasive
evidence to support their assertion that Kaneko’s device, if modified to include a
pulsed electrical power source as disclosed in Bray, would be rendered
unsatisfactory for its intended purpose. See Ans. 23 (“The argument is
unpersuasive because it appears to be merely attorney argument. . . .”). For
example, Appellants do not provide a citation to Kaneko in support of their
contention that Kaneko’s device is intended to generate a maximum of 0.94 V. See
Br. 3—5. This value appears in Table 1 of Kaneko which is described as showing
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Application 12/369,219
“[pjhotofuel cell (PFC) characteristics of various compounds.” Kaneko 339. We
are unable to locate, however, any description in Kaneko indicating that this is the
maximum voltage output of Kaneko’s device as alleged by Appellants. But see Br.
3^4 (“Examples of the PFC characteristics demonstrated in Kaneko et al.,
specifically the electricity generated is illustrated by the open-circuit voltage
(Voc), which Kaneko et al. discloses as between 0.44 V and 0.94 V based upon
different fuels.” (emphasis added)); cf. Ans. 24 (noting that Appellants’ Figure 1
and Kaneko’s Figure 2 are substantially the same and, therefore, if Appellants’
argument is correct, then Appellants’ device is also necessarily limited to
generating a maximum of 0.94 V).
In sum, we are not persuaded of reversible error in the Examiner’s rejection
of claim 1. Accordingly, we sustain the rejections of claims 1—18 and 25—31.
Turning now to claim 32, the additional arguments advanced by Appellants
raise the following issue: Have Appellants shown that the Examiner, in concluding
the invention as recited in claim 32 would have been obvious, reversibly erred by
failing to consider that Kaneko teaches away from reducing water into H2 at the
cathode? We answer this question in the negative for the reasons explained below.
Appellants argue Kaneko teaches away from reducing water into H2 at the
cathode because Kaneko discloses that “it is important... to reduce 02 at a
counter cathode electrode to generate electricity instead of reducing protons into
H2 there.” Br. 6.
With respect to claim 32, the Examiner found Kaneko’s device, as modified
by Bray, would be capable of reducing water to H2 at the cathode because the
electrical power source, in use, would apply a voltage in the range of +6 V to +12
V across the photoelectrocatalytic composite photo anode and cathode. Final 13,
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18 (citing Cleveland, Encyclopedia of Energy, Elsevier Academic Press (2004)
as evidence that the electrolysis of water begins to occur at a voltage of 1.23 V).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994).
Kaneko’s alleged teaching away relates to operation of the device during
electricity generation. Kaneko 337, col. 1, lines 6—9 (“[I]t is important... to
reduce O2 at a counter cathode electrode to generate electricity instead of reducing
protons into H2 there.”). Appellants have not explained why this disclosure would
have discouraged the ordinary artisan from using a pulsed electrical power source
as taught by Bray to provide improved control over Kaneko’s electrochemical
process during power consumption. See Ans. 27—29. Appellants have not shown
error in the Examiner’s finding that Kaneko’s device, as modified to include an
electrical power source as taught by Bray, would be capable of functioning in the
manner recited in claim 32 during the power consumption phase. See Ans. 27
(“The argument is unpersuasive because it appears to be merely attorney argument
since Appellant failed to provide any scientific statistical evidence showing that the
Combination's device is not operable to carry out the intended use.”). Accordingly,
we sustain the rejection of claim 32.
In sum, we have considered the arguments in support of patentability
advanced by Appellants in their Appeal Brief, but are not convinced of reversible
error in the Examiner’s conclusion of obviousness as to appealed claims 1—18 and
25—32. We sustain all four grounds of rejection based on the Examiner’s fact
finding and reasoning in the Final Office Action and the Answer.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
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