Ex Parte Brundage et al

Board of Patent Appeals and Interferences

Jun 16, 2009

10354542 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK A. BRUNDAGE
and TAICHIANG P. YU

____________

Appeal 2009-001273
Application 10/354,5421
Technology Center 1700
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Decided:2 June 16, 2009
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Before PETER F. KRATZ, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

1 Application 10/354,542, Dual Function CO Clean-Up/Sorber Unit, filed
30 January 2003. The specification is referred to as the “542 Specification,”
and is cited as “Spec.” The real party in interest is listed as General Motors
Corporation. (Appeal Brief, filed 9 January 2009 (“Br.”), 3.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001273
Application 10/354,542

DECISION ON APPEAL
A. Introduction
Mark A. Brundage and Taichiang P. Yu (“Brundage”) timely appeal
under 35 U.S.C. § 134(a) from the final rejection3 of claims 1-9, 20, and 21.
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to a reactor said to be useful for
removing carbon monoxide (CO) from a reformate stream, i.e., the product
stream from a reformation reaction of methanol or hydrocarbons that
produces hydrogen gas and, as an undesired by-product, CO. Before such a
reformate stream can be used as a source of hydrogen for proton exchange
membrane (“PEM”) fuel cells, CO, which poisons the catalyst of the PEM
anode, must be removed. Prior art methods are said to include removal by a
water-gas shift (WGS) reaction:
CO + H2O → CO2 + H2
and by “preferential oxidation,” (“PrOx”):
CO + ½O2 → CO2.
(Spec. 2-3, ¶ [0007].) However, during start up, before the WGS and PrOx
catalysts have reached their operating temperatures (>100° C), an
unacceptably high amount of CO is present. To remedy this problem, the
claimed reactor adds a material that adsorbs CO at temperatures
below 100° C. In a preferred embodiment, efficient heat exchange is
obtained by providing flow passages for reformate on one side of generally

3 Office action mailed 10 August 2007 (“Final Rejection”; cited as “FR”).
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Application 10/354,542

parallel substrates, while flow passages for coolant are provided on the
opposite side of the substrates.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A reactor for reducing a carbon monoxide (CO) content of a
reformate stream comprising:
a support assembly including a reaction section [22] having
a plurality of substrates [24] configured for providing
a first plurality of flow channels [28] for reformate flow and
a second plurality of flow channels [30] for coolant flow,
wherein each of said plurality of substrates [24] has a first
surface [32] and a second surface [34] opposite thereto,
wherein at least a portion of said plurality of substrates
has said first surface [32] exposed to reformate and
has said second surface [34] in heat transfer
relationship with a coolant;
a sorption material [40, 44] coating at least a
portion of each first surface [32] of said substrates;
a catalyst coating [42, 46] at least a portion of each
first surface [32] of said substrates;
wherein said sorption material is active for
adsorbing carbon monoxide (CO) to reduce
the CO content of the reformate stream
flowing through said first plurality of flow
channels when the reactor is operating in a
first mode; and
wherein said catalyst enables a preferential
oxidation reaction of CO to reduce the CO
content of the reformate stream when the
reactor is operating in a second mode.
(Claims App., Br. 23, indentation, paragraphing, and bracketed labels to
features illustrated in Figures 2-4 added.)
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Application 10/354,542

Claim 21 is worded differently, but is substantively similar to claim 1,
and further specifies that the effluent has a CO concentration of less than
about 20 ppm. The CO concentration of the in-flowing reformate stream is
not specified. (Claims App., Br. 25.)
Claims 3 and 5 depend from claim 1 and recite, respectively, that the
sorption material “comprises hopcalite,” or “is selected from the group
consisting essentially [ ]4 of hopcalite, zeolite and combinations thereof.”
(Claims App., Br. 23, 24.)
Claim 7 depends from claim 1 and requires that the sorption and
catalyst materials be applied in a single layer having alternating regions of
the sorption material and the catalyst. Claim 20 depends from claim 1 and
requires that the portion of the substrate having a sorption material coating
be discrete from the portion having a catalyst coating. (Claims App.,
Br. 24, 25.)
The Examiner has maintained the following grounds of rejection:5
A. Claims 1, 2, 4-6, 8, 9, and 21 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Abe6
and Tonkovich.7

4 For purposes of this Appeal, we assume the Markush group is defined by
closed language.
5 Examiner’s Answer mailed 2 April 2008. (“Ans.”).
6 Fumio Abe et al., Reformer, U.S. Patent 6,576,203 (10 June 2003), based
on an application filed in 1999.
7 Anna Lee Tonkovich et al., Process for Conducting an Equilibrium
Limited Chemical Reaction in a Single Stage Process Channel, U.S. Patent
6,969,505 (29 November 2005), based on an application filed
15 August 2002.
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Application 10/354,542

B. Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Abe, Tonkovich, and Chuang.8
C. Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Abe, Tonkovich, and
Nojima.9
With respect to the principal rejection in view of Abe and Tonkovich,
Brundage presents arguments only for the separate patentability of claims 1
and 21. Brundage argues that neither Abe nor Tonkovich describes a
CO-sorbtion material active in a first mode. (Br. 9, 11.) Moreover, in
Brundage’s view, Abe provides no reason to address the CO content of the
reformate stream in a first mode of operation before the catalyst reaches its
activation temperature. (Id. at 12.) Brundage also argues that these
references do not teach “discrete regions of distinct material that either
adsorb or preferentially oxidize CO.” (Br. 13.) Brundage argues further that
both Abe and Tonkovich describe reactors having excessive amounts of CO
in the effluent stream after treatment. (Id.) Regarding claim 21, Brundage
argues that the high residual CO output of the reactors taught by Abe and by
Tonkovich removes a reasonable expectation of successfully obtaining the
recited maximum of “about 20 ppm CO” concentration of the reactor
effluent. (Id. at 16-18.)
Brundage argues further that Abe and Tonkovich do not teach the
“plurality of substrates that define interspersed cooling channels sharing a

8 Karl T. Chuang et al., Method of Oxidizing Gaseous Substances, U.S.
Patent 5,009,872 (1991).
9 Shigeru Nojima and Toshinobu Yasutake, Selective Removing Method of
Carbon Monoxide, U.S. Patent 6,531,106 (11 March 2003), based on an
application filed 7 June 2000.
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Application 10/354,542

substrate with a reformate channel.” (Br. at 14). In fact, according to
Brundage, Abe teaches away from such a structure because Abe seeks to
achieve direct heat transfer between adjacent endothermic and exothermic
catalytic units, rather than heat transfer from the catalyst to a coolant. (Id.
at 14-15.) Tonkovich, on the other hand, is said to describe heat exchange
channels that are “positioned in separate alternating planes and physically
separated by at least 0.1 mm from the [reaction] microchannels.” (Id. at 15.)
Brundage concludes that substrates having a first side facing reformate flow
and a second opposite side facing a coolant stream are not taught or
suggested by Tonkovich. (Id.)
The critical issues with respect to the principal rejection are whether
Abe discloses a CO-sorption material as well as a CO-oxidation catalyst, and
whether the reactor described by Tonkovich meets the structural limitations
of the reactor recited in claim 1.
Brundage urges that the rejection of claims 3 and 5 is in error because
Chuang does not teach hopcalite as a CO sorption material. (Br. 18-19.)
Moreover, according to Brundage, the hot and dry environment taught by
Chuang for the use of hopcalite as a CO oxidation catalyst provide no reason
to use it as a sorption material. (Id. at 19.)
Finally, Brundage urges that the rejection of claims 7 and 20 must be
reversed because none of the references, including Nojima, teaches or
suggests separate regions of sorption material and catalyst coating.
(Br. 20-21.)
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Application 10/354,542

B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 542 Specification
1. An embodiment of the claimed reactor is shown in Figure 2 of
the 542 Specification, which is reproduced below:

{Figure 2 of the 542 Specification is said to show an internal view of a
reactor}10
2. Internal portion 22 of the reactor comprises generally parallel
substrates 24 separated by separators 26. Reformate flows through
passages 28, which carry, on surfaces 32, sorbtion material [40, 44] and
active catalyst [42, 46] (shown in Figures 3 and 4, not reproduced here).

10 The text in curly braces following the Figures is provided to ensure
compliance with § 508 of the U.S. Rehabilitation Act for publication of this
Opinion on the USPTO website pursuant to the Freedom of Information Act.
It is not part of the Opinion.
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Coolant flows through passages 30, in contact with surfaces 34. (Spec. 7,
¶ [0023].)
3. CO sorbtion materials are said to include hopcalite and zeolite.
(Spec. 6-7, ¶ [0022].)
4. Selective CO oxidation catalysts are said to include Ir-[iridium]-
catalysts. (Spec. 7, ¶ [0022].)
5. In the embodiment shown in Figure 3, catalyst material [42] is
deposited in multiple strips on sorbtion material [40]; the relation can be
inverted. (Spec. 7-8, ¶ [0024].)
6. In Brundage’s words, Figure 4 illustrates an embodiment in which
“[t]he first surface 32 of the substrate 24 includes a single mixed layer
including a CO-sorption component 44 and a catalyst component 46.”
(Spec. 8, ¶ [0025]; emphasis added.)
Tonkovich
7. Tonkovich describes an apparatus said to be suitable for conducting
various chemical reactions, including preferential oxidation and, especially,
water gas shift reactions. (Tonkovich, col. 7, ll. 31-51.)
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8. An embodiment of the apparatus is illustrated in Figure 3, which is
reproduced below:

{Tonkovich Figure 3 is said to show a reactor}
9. Reactor 100 contains planes of single stage process
microchannels 120 arranged in rows 122, in thermal contact with alternating
planes of heat exchange channels 150 arranged in rows 152. (Tonkovich,
col. 13, ll. 53-67.)
10. According to Tonkovich, the microchannels 120 and heat exchange
channels 150 have square or rectangular cross sections ranging in size from
about 0.025 to about 10 mm. (Tonkovich, col. 14, ll. 18-23 and ll. 28-31.)
11. In Tonkovich’s words, “[t]he reactor may be constructed by forming
layers or sheets with features removed that allow flow passages. A stack of
sheets may be assembled via diffusion bonding, laser welding, diffusion
brazing, and similar methods to form an integrated device.” (Tonkovich,
col. 14, ll. 62-65.)
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Abe
12. Abe describes reformer reactors for hydrogen generation. (Abe,
col. 1, ll. 6-7.)
13. Abe teaches that reactions (1) through (6), can occur in the reforming
process, including selective CO oxidation reaction (3), which is the same as
the “partial oxidation” reaction described supra at 2. Abe teaches further
that various catalysts are used to promote these reactions. (Abe, col. 9,
ll. 8-54.)
14. Catalysts useful for partial oxidation are said to include iridium and
manganese (Mn), ordinarily loaded on a heat resistant oxide to provide
increase specific surface area, enhanced activity, and durability to reaction
temperature. (Abe, col. 10, ll. 19-30.)
15. The heat resistant oxides are said to include zeolites. (Abe, col. 10,
ll. 31-32.)
16. The catalyst units are said to have a honeycomb structure, i.e., “a
structure having a number of through-holes (cells) separated by a partition
from each other.” (Abe, col. 11, ll. 13-16.)
17. Suitable materials for the honeycomb carrier are said to include
ceramics and metals. (Abe, col. 11, ll. 20-25.)
Chuang
18. Chuang describes HOPCALITE as a tradename used for a proprietary
mixture of oxides of manganese and copper that is said to be useful for
carbon monoxide oxidation processes. (Chuang, col. 1, ll. 60-63.)
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19. According to Chuang, HOPCALITE is deactivated by adsorption of
water vapor, and is therefore kept hot or dried to prevent water absorption,
as is used at low relative humidity levels. (Chuang, col. 1, ll. 65-67.)
Nojima
20. Nojima describes reactors for selectively removing carbon monoxide
from gaseous mixtures containing H2 and CO. (Nojima, col. 2, ll. 21-25.)
21. According to Nojima, CO removal can be optimized by including a
plurality of catalyst “layers” (regions) in which the highest application
temperature catalysts are positioned on the upstream side of the catalyst bed.
(Nojima, abstract; col. 4, ll. 1-12.)
22. Nojima describes crystalline silicates said to have “fine pores sized
about 6 Å and, thus, adapted for the CO adsorption.” (Nojima, col. 6,
ll. 26-31.)
C. Discussion
As the Appellant, Brundage bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (citation and internal quote
omitted). Any argument not timely raised has been waived.
37 C.F.R. § 41.37(c)(1)(vii).
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Brundage’s complaint that neither Abe nor Tonkovich describes a CO
sorbant material is not persuasive of harmful error. The Examiner found that
the zeolites on which iridium (and other heavy metal catalysts) are deposited
in the catalysts described by Abe would function as CO sorption materials.
(FR 2.) Brundage has not challenged this finding, which is supported by the
teachings of the 542 Specification (Spec. 6-7, ¶ [0022]) that zeolites are CO-
sorption materials, as well as Nojima’s observation that 6 Å pores are
adapted for CO adsorption. (Nojima, col. 6, ll. 26-31.) It has long been
understood that, “[f]rom the standpoint of patent law, a compound and all of
its properties are inseparable; they are one and the same thing.” In re
Papesch, 315 F.2d 381, 391 (CCPA 1963). We conclude, on the present
record, that zeolites function as CO-sorption materials.
Brundage’s arguments that these references do not teach separate
regions of CO adsorption and preferential CO oxidation are without merit
because neither claim 1 nor claim 21 requires that the sorption material
occupy an area distinct from the area occupied by the catalyst coating.
These claims merely require that a material performing these functions “coat
at least a portion of [each] said first surface of said substrate.” (Claim 1,
[claim 21], Claims App., Br. 23, [25].) As for the allegedly “excessive
amounts” of CO in the exhaust streams of the reactors described by Abe and
by Tonkovich, we observe that claim 1 is not limited by the amount of CO
that must be removed or that may remain. Patentability cannot be premised
on a limitation not present in the claim. Claim 21 does limit the amount of
CO in the effluent stream to “less than about 20 ppm,” but the amount of CO
entering the reactor is not limited. As the Examiner points out (Ans. 6),
process results have little affect in a claim to an apparatus. This statement is
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true when, as here, it appears that the apparatus is capable of obtaining the
result under some conditions. We conclude that Brundage has not shown
that these aspects of the Examiner’s rejection suffer from harmful error.
Brundage’s arguments that Tonkovich does not describe the substrate
structure of the claimed reactor appear to be based on a misreading of
Tonkovich. In the reactor described by Tonkovich, the “physical
separation” of the microchannels from the coolant channels is a result of the
design that the microchannels lie in planes that alternate with the planes in
which the coolant channels lie. Tonkovich teaches, however, that the two
types of channels are in thermal contact with one another. (Tonkovich,
col. 13, ll. 60-64; FF 9.) Thus, the “separation” that Brundage complains
about does not distinguish between the reactor described by Tonkovich and
the reactor claimed by Brundage. To the extent that Tonkovich does not
expressly describe reactor channels being formed on one side of a substrate
and coolant channels being formed on the other side of the substrate, we
have no difficulty determining that such a structure would have been
obvious to a person having ordinary skill in the art. In particular, we find
that Tonkovich’s teaching that “[t]he reactor may be constructed by forming
layers or sheets with features removed that allow flow passages”
(Tonkovich, col. 14, ll. 62-63), coupled with the standard engineering
practice of seeking to optimize the use of materials and to minimize
obstacles to thermal contact in cooling systems would have suggested
forming channels in opposites sides of the substrates for reaction and for
cooling.
Brundage’s arguments that the Examiner erred in rejecting claims 3
and 5 as obvious in view of the combined teachings of Abe, Tonkovich and
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Chuang, because the references do not teach than HOPCALITE is a CO
sorbant, are misplaced. First, although the Examiner did err in finding that
Chuang teaches HOPCALITE is a CO sorbant, the Examiner found that
HOPCALITE is a copper oxide, and that it would have been obvious to use
HOPCALITE as a metal oxide as taught by Abe. (FR 2-3). Brundage has
not challenged the Examiner’s fact finding or conclusion on this point.
Moreover, as indicated by Chuang, HOPCALITE is known to be a
manganese-containing CO-oxidation catalyst. (Chuang, col. 1, ll. 60-63.)
Thus, the Examiner’s conclusion may also be affirmed on the basis that it
would have been obvious to use the known CO oxidation catalyst,
HOPCALITE as the supported Mn catalyst described by Abe (Abe, col. 10,
l. 25; FF 14) in a reactor as taught by Tonkovich. The intended function of
HOPCALITE as a CO sorbant is not entitled to patentable weight provided
there is an independent reason to use HOPCALITE. Cf. In re Dillon, 919
F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“the statement that a prima facie
obviousness rejection is not supported if no reference shows or suggests the
newly-discovered properties and results of a claimed structure is not the
law.”) Moreover, as shown by Chuang, the properties of HOPCALITE were
well known to those skilled in the art. Such persons would therefore have
arranged conditions such that the HOPCALITE would not be inactivated
prior to use. Brundage has not shown that HOPCALITE would not function
as a CO sorption material under such conditions. These arguments apply
equally to reactors covered by claim 5, which, because it specifies zeolites as
an alternative CO sorbant, would also have been obvious for the reasons
given supra with respect to claim 1.
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The rejection of claims 7 and 20 stands differently. Both claims
require that the sorption material and the catalyst occupy different regions of
the first surface of the substrate. The limitation in claim 7 that the single
layer have alternating regions of the sorbant and the catalyst cannot be met if
adjacent regions function both as a sorbant and a catalyst. In claim 20, the
requirement that the regions be discrete, i.e., different, is express. Nojima
teaches that different catalysts may be placed advantageously in different
regions, but is silent as to sorbants. Abe and Tonkovich are similarly silent
as to sorbants. The Examiner has failed to provide evidence supporting the
requirement that placing sorbant and the catalyst in alternating or in any
physically discrete positions would have been obvious.
D. Order
We AFFIRM the rejection of claims 1, 2, 4-6, 8, 9, and 21 under
35 U.S.C. § 103(a) in view of the combined teachings of Abe and
Tonkovich.
We AFFIRM the rejection of claims 3 and 5 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Abe, Tonkovich,
and Chuang.
We REVERSE the rejection of claims 7 and 20 under
35 U.S.C. § 103(a) in view of the combined teachings of Abe, Tonkovich,
and Nojima.
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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).
AFFIRMED-IN-PART
tc

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