Ex Parte Denvir et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10994855 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ADRIAN DENVIR, OLIVER J. MURPHY,
ALAN CISAR, PRISCILLA ROBERTSON, and KYLE USELTON
______________

Appeal 2009-014463
Application 10/994,855
Technology Center 1700
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 37-42, 52-55, and 57-59 in the Office

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Action mailed September 18, 2008 (Office Action). 35 U.S.C. §§ 6 and
134(a) (2002); 37 C.F.R. § 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
Claim 37 illustrates Appellants’ invention of an apparatus, and is
representative of the claims on appeal:
37. An apparatus comprising:
an anode substrate adapted for fluid communication with a source of
hydrogen gas;
a porous cathode substrate; and
a liquid electrolyte disposed within a matrix, wherein the matrix is
disposed between the anode substrate and the porous cathode substrate,
wherein the liquid electrolyte comprises an electroactive species containing
nitrogen, and wherein the liquid electrolyte is not an aqueous solution.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: claims 37-40, 52, 53, 55, and 57-59 under 35
U.S.C. § 102(b) over Marianowski (US 4,738,760);2 and claims 41, 42, and
54 under 35 U.S.C. § 103(a) over Marianowski. Br. 5;3 Ans. 3 and 4.
Appellants argue the claims the first ground of rejection as a group,
and rely on the same arguments for the second ground of rejection. Br., e.g.,
7 and 9. Thus, we decide this appeal based on claim 37. 37 C.F.R. §
41.37(c)(1)(vii) (2008).
Opinion

2 In the Office Action and the Answer, the Examiner states this ground of
rejection as applying to claims 37-40, 52, 53, 55, 57, and 58, but includes
claim 59 in the body of the rejection. Ans. 4; Office Action 3. Thus, the
ground of rejection is applied to claim 59 as Appellant has acknowledged.
Br. 5 and 6.
3 We considered the Appeal Brief filed March 13, 2009.
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The dispositive issue on this appeal is, as Appellants submit, the
interpretation of the language “an anode substrate adapted for fluid
communication with a source of hydrogen gas” of claim 37. Br. 7.
Appellants argue that when the subject claim language is interpreted in light
of the Specification, the Examiner erred in finding that Marianowski would
have described to one of ordinary skill in the art an apparatus anticipating
claim 37. Br. 8.
We give the terms of the subject claim language the broadest
reasonable interpretation consistent with the written description in the
Specification. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259
(Fed. Cir. 2010) (“During reexamination, as with original examination, the
PTO must give claims their broadest reasonable construction consistent with
the specification.”) (quoting In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55
(Fed. Cir. 1997).
The plain language of claim 37 specifies any apparatus comprising at
least, among other things, any “anode substrate” which is “adapted for fluid
communication” in any manner with any “source of hydrogen gas.” We
determine that the apparatus must have a structure which places the “anode
substrate” in “fluid communication” with the “source of hydrogen gas.”
Indeed, in this respect, we find that the Specification discloses that “[t]he
apparatus will typically further comprise hydrogen gas inlet and outlet
manifolds for providing the fluid communication between the source of
hydrogen gas” and the anode substrate, wherein “[t]he flow of the hydrogen
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can be controlled via a series of pumps, valves, pressured vessels, suction
devices or a combination thereof.” Spec. ¶¶ 015 and 028; see also, e.g.,
¶ 041.
On this record, and in light of the claim language and the disclosure in
the Specification, we determine that the claimed apparatus encompassed by
claim 37 includes an anode substrate that is adapted by suitable structure,
including manifolds, gas lines, pumps, and other structure specific to the
apparatus, which permits the apparatus, and thus the anode substrate, to
receive the flow of hydrogen from any source. In this respect, we find no
specific source of hydrogen gas disclosed in the Specification as forming a
part of the disclosed apparatus. See Spec., e.g., ¶ 011 (“In operation, the
hydrogen gas may be delivered to the metal membrane [of the porous anode
substrate] from a process selected from stream reformation, partial
oxidation, autothermal reformation, and plasma reformation. Alternatively,
hydrogen gas may be provided . . . by electrolyzing water.”). Indeed, the
claim language encompasses an apparatus which has suitable structure to
deliver hydrogen gas from a canister of hydrogen attached to the apparatus,
to the anode substrate.
Thus, we agree with the Examiner, that when considered in light of
the Specification, the subject language “an anode substrate adapted for fluid
communication with a source of hydrogen gas” “merely defines the
structures of the anode as being capable of being connected to a source of
hydrogen gas and does not expressly require the presence of the source of
hydrogen gas” as Appellants contend. Ans. 4-5; Br. 7-8. In other words, the
Examiner argues that the “connection of the anode to a source of hydrogen
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gas relates to the manner of operation of the claimed structure because the
source of hydrogen source has no been positively recited as part of the
structure of the apparatus.” Ans. 5. Thus, on this record, the phrase “a
source of hydrogen gas” conveys a method or intended use concept, see,
e.g., In re Yanish, 477 F.2d 958, 959 (CCPA 1973); In re Casey, 370 F.2d
576, 579-80 (CCPA 1967); In re Otto, 312 F.2d 937, 939-40 (CCPA 1963),
and does not confer a structural limitation. See, e.g., In re Echerd, 471 F.2d
632, 634-35 (CCPA 1973); In re Ludtke, 441 F.2d 660, 663-64 (CCPA
1971); In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971) (there is nothing
intrinsically wrong in defining something by what it does rather than by
what it is). Indeed, “hydrogen gas” is a material on which the claimed
apparatus works, and thus does not form a part of the claimed apparatus.
See, e.g., Otto, 312 F.2d at 939-40 (CCPA 1963); In re Rishoi, 197 F.2d 342,
344-45 (CCPA 1952) (“[T]here is no patentable combination between a
device and the material upon which it works.”); In re Young, 75 F.2d 996,
998 (CCPA 1935); In re Smith, 36 F.2d 302, 303 (CCPA 1929).
Therefore, in view of our interpretation of the subject language of
claim 37, we cannot agree with Appellants’ position that the Examiner erred
in finding that Marianowski inherently described to one of ordinary skill in
this art an apparatus which is attached to a “source of hydrogen” in
disclosing that air, “which inherently includes at least trace amounts of
hydrogen gas,” is introduced to cathode chamber 15, and thus is “adapted for
fluid communication with the anode” 12. Ans. 3; Br. 8. See Marianowski,
e.g., col. 5, ll. 33-35, col. 4, l. 66 to col. 5, l. 8, and Fig. We recognize that,
as Appellants point out, air contains a trace amount of hydrogen. Br. 8.
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However, as the Examiner argues, air contains hydrogen and thus is a source
of hydrogen. Ans. 4. Indeed, contrary to Appellants’ position that “one of
ordinary skill in the art would not consider air . . . to be a ‘source of
hydrogen’ for the synthesis of ammonia production” in the context of the
disclosure in the Specification, we fail to find any claim lamination which
structurally limits the claimed apparatus specified in claim 37 to any
particular chemical synthesis, including ammonia synthesis. It is well settled
that limitations in the Specification are not read into the claims, and
Appellants have had opportunity to amend the claims. See, e.g., In re Zletz,
893 F.2d 319, 321-22 (Fed. Cir. 1989). Appellants do not contend that
anode 12 of Marianowski’s apparatus would be incapable of being “adapted
for fluid communication with a source of hydrogen gas” as claimed. Reply
Br. 22-23. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Thus, on this record, we agree with the Examiner’s finding that, as a
matter of fact, Marianowski describes to one skilled in this art each and
every limitation of the claimed apparatus encompassed by claim 51 arranged
as required therein, either explicitly or inherently, within the meaning of §
102(b). See, e.g., Schreiber, 128 F.3d at 1477, and cases cited therein. We
reach the same conclusion with respect to the ground of rejection under §
103(a) because Appellants rely on the same position with respect to this
ground of rejection.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation and of obviousness
found in Marianowski with Appellants’ countervailing evidence of and
argument for non-anticipation and nonobviousness and conclude, by a
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preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 37-40, 52, 53, 55, and 57-59
would have been anticipated as a matter of fact under 35 U.S.C. § 102(b),
and that the claimed invention encompassed by appealed claims 41, 42, and
54 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED

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