10454864 (P.T.A.B. Dec. 11, 2013)

Ex Parte Dossas et al

Patent Trial and Appeal BoardDec 11, 2013

10454864 (P.T.A.B. Dec. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/454,864 06/05/2003 Vasilios Dossas 3479 7590 12/11/2013 Clifford Kraft 320 Robin Hill Dr. Naperville, IL 60540 EXAMINER LEWIS, BEN ART UNIT PAPER NUMBER 1726 MAIL DATE DELIVERY MODE 12/11/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte VASILIOS DOSSAS, CLIFFORD H. KRAFT, and LAURA ZIMMERMAN ________________ Appeal 2013-001872 Application 10/454,864 Technology Center 1700 ________________ Before CHUNG K. PAK, TERRY J. OWENS, and GEORGE C. BEST, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-001872 Application 10/454,864 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 21-25. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for managing water generated by one or more fuel cells in a power generation plant. Claim 1 is illustrative: 1. A method of managing water generated by at least one fuel cell disposed in a power generation plant located at a fixed geographical location, said method comprising the steps of: (a) capturing the water generated by said at least one fuel cell at said fixed geographical location; (b) storing said water; (c) distributing the stored water to a plurality of second, fixed geographical locations, said second fixed geographical locations being separated from each other by substantial distances and remote from said at least one fuel cell, wherein said water distribution is effected by electric power generated by said fuel cell power generation plant. The References Werth US 6,093,501 July 25, 2000 Gore US 6,107,691 Aug. 22, 2000 Hall US 6,323,247 B1 Nov. 27, 2001 Hoffjann US 2004/0038089 A1 Feb. 26, 2004 (filed Apr. 16, 2003) The Rejections The claims stand rejected as follows: claims 1 and 21-25 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement, claims 23 and 25 under 35 U.S.C. § 112, first paragraph as failing to comply with the enablement requirement, and Appeal 2013-001872 Application 10/454,864 3 claims 1 and 21-25 under 35 U.S.C. § 103 over Hall in view of Gore and over Hoffjann in view of Hall and Werth. OPINION We affirm the rejections under 35 U.S.C. § 112, first paragraph written description requirement and 35 U.S.C. § 103 and reverse the rejection under 35 U.S.C. § 112, first paragraph enablement requirement. Rejection under 35 U.S.C. § 112, first paragraph written description requirement For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement, the applicant’s specification 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 invention.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). The Examiner argues that the Appellants’ original disclosure fails to provide written descriptive support for “wherein said water distribution is effected by electric power generated by said fuel cell power generation plant” (claim 1), “wherein said water distribution is effected solely by electric power generated by said fuel cell power generation plant” (claim 21), “wherein said water distribution is effected by a pump powered by electricity generated by said fuel cell power generation plant” (claims 22 and 24) and “wherein said pump is powered solely by electric power generated by said fuel cell power generation plant” (claims 23 and 25) (Ans. 2-3). Appeal 2013-001872 Application 10/454,864 4 The Appellants argue that “[o]ne skilled in this art would recognize that the box in Fig. 3 can be a pump, especially since the other 90◦ [sic] turn in the piping does not include a box to represent an elbow” (Br. 10). Even if Fig. 3’s box below the water collection tower represents a pump, the Appellants’ original disclosure would not have conveyed with reasonably clarity to those skilled in the art that the Appellants were in possession of selecting, as the source of electricity for powering the pump, the electricity generated by the fuel cell power generation plant. Nor would the Appellants’ original disclosure have shown possession of a fuel cell power generation plant that is sufficiently remote from other sources of electrical power, such as electrical power used in providing fuel for the fuel cell power generation plant, that the fuel cell power generation plant is the only available source of electrical power for powering the water distribution pump. Thus, we are not persuaded of reversible error in the rejection under 35 U.S.C. § 112, first paragraph written description requirement.1 Rejection under 35 U.S.C. § 112, first paragraph enablement requirement A specification complies with the 35 U.S.C. § 112, first paragraph, enablement requirement if it allows those of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Factors, 1 The Appellants’ argument that “to suggest that one skilled in the art is incapable of powering pumps with the power from the plant is not credible” (Br. 10) is not well taken because it pertains to enablement rather than written description. Appeal 2013-001872 Application 10/454,864 5 which are illustrative, not mandatory, see Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991),to be considered in determining whether a disclosure would require undue experimentation “include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner argues that “[t]he disclosure lacks direction to enable one of ordinary skill in the art to use a pump that only operates solely on DC power to distribute the water to geographical locations separated by substantial distances as disclosed in the specification” (Ans. 4) and that “the disclosure does not provide any working examples that would indicate that indicate [sic] the indented [sic, intended] purpose was to use or operate the system with a DC pump that would only receive the electricity from the fuel cell.” Id. The Appellants’ claims do not require a DC pump. The Examiner’s argument that “[b]y the claim language, ‘solely by electric power generated by said fuel cell’, the use of AC current is excluded because the electric power would have to be converted and changed though [sic, through] another component and therefore would not be ‘solely’ from the fuel cell but [from] a combination of components” (Ans. 4) is not well taken because even if DC electrical current generated by the fuel cell power plant is converted to AC, the electrical power still would be that generated by the fuel cell power generation plant. The Examiner has not shown that, in view Appeal 2013-001872 Application 10/454,864 6 of the Wands factors or comparable factors, one of ordinary skill in the art would have been unable to use the Appellants’ claimed method without undue experimentation. Accordingly, we reverse the rejection under 35 U.S.C. § 112, first paragraph enablement requirement. Rejections under 35 U.S.C. § 103 The Appellants state that the claims stand or fall together (Br. 2). We therefore limit our discussion to one claim to which each rejection applies, i.e., claim 1. See 37 C.F.R. § 1.37(c)(1)(vii) (2007). Rejection over Hall in view of Gore Hall discloses a method for converting natural gas to liquid hydrocarbons (col. 1, ll. 8-12). The method includes a step of converting the natural gas to ethylene/acetylene and hydrogen in a high temperature reactor (col. 3, ll.7-16). The natural gas can be heated to the temperature of that reaction by electrical power generated by fuel cells which produce water (col. 4, ll. 27-34). In a non-fuel cell embodiment wherein the natural gas is heated by steam generated by combusting hydrogen produced from the natural gas, the steam is condensed to water which can be stored and “may be considered a product in some plant locations” (col. 3, ll. 52-58; col. 4, ll. 1-5; col. 8, ll. 6-10). In an example wherein the natural gas is heated by steam from hydrogen combustion, a plant produces about 3.6 million gallons per day (GPD) of liquid hydrocarbons “and about 2.25 million GPD of water, enough to supply a town with a population of 30,000, or, alternatively, to irrigate about 2,500 acres of desert for crop production” (col. 7, ll. 18-40). Appeal 2013-001872 Application 10/454,864 7 Gore directs all of the outputs and byproducts of fuel cells in parked vehicles to service a greenhouse (col. 13, ll. 22-24; col. 13, l. 65 – col. 14, l. 1). Water from the fuel cells is collected in a tank (233) to provide all or part of the water supply for the greenhouse (col. 13, ll. 31-32) including water for “direct irrigation of the crops being grown in the greenhouse” (col. 9, ll. 2-3). The water can be provided to the greenhouse by pumping it using electricity generated by the fuel cells (col. 13, ll. 25-27, 35-37). Gore states that “[t]his invention not only has direct applications to the fuel cell mobile generation market but to the stationary or fixed use of fuel cells in residences, commercial buildings or industrial complexes” (col. 14, l. 66 – col. 15, l. 2). The Appellants argue that the applied references do not produce power (Br. 14, 16-17). Power and water are produced by Hall’s fuel cells used in heating the natural gas to reaction temperature (col. 4, ll. 27-34) and Gore’s fuel cells produce electricity which can be used to pump water to greenhouses (col. 13, ll. 25-27) and can be connected to an overhead electrical cable (col. 7, ll. 21-23). The Appellants argue that Hall and Gore do not disclose a power plant or means for conveying water from a power plant (Br. 13-15). Hall’s electrical power generator (21) wherein fuel cells produce power (col. 4, ll. 29-34) is a power generation plant. Hall does not disclose storing and distributing the water produced in the fuel cell embodiment. However, the non-fuel cell embodiment disclosures that the water produced from the hydrogen combustion used to heat the natural gas to reaction temperature “may be considered a product in some plant locations” and can Appeal 2013-001872 Application 10/454,864 8 be stored and used to supply a town with water or to irrigate desert crops (col. 3, ll. 52-59; col. 7, ll. 24-33; col. 8, ll. 6-10) would have led one of ordinary skill in the art, through no more than ordinary creativity, to likewise store the water produced in the fuel cells and distribute it to locations where it is needed. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The Appellants argue that Hall’s disclosure of water production of “about 2.25 million GPD of water, enough to supply a town with a population of 30,000, or, alternatively, to irrigate about 2,500 acres of desert for crop production” (col. 7, ll. 30-32) would not have suggested distributing the water to locations separated from each other by substantial distances (Br. 14-15). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. The disclosures by Hall that water “may be considered a product in some plant locations” (col. 3, ll. 56-57) and Gore that “water is so precious that in many areas it could be more precious than the electricity created” (col. 13, ll. 51-52) would have led one of ordinary skill in the art, through no more than ordinary creativity, to store the water produced in Hall’s fuel cells and distribute it to locations where it is needed such as towns and crop fields. The Appellants’ disclosure that “[t]he water can be used for agricultural, industrial or community purposes” (Spec. 10:11-12) indicates that those areas would include areas “separated from each other by substantial distances” according to the broadest reasonable interpretation of that claim limitation consistent with the Appeal 2013-001872 Application 10/454,864 9 Appellants’ Specification. Gore’s disclosure that water produced in fuel cells is suitable for drinking and irrigating greenhouse crops (col. 9, ll. 2-3; col. 13, ll. 31-33, 55-57) would have indicated to one of ordinary skill in the art that the water produced in Hall’s fuel cells would be suitable for those purposes. The Appellants argue that Hall and Gore do not disclose water distribution effected by electrical power generated by a fuel cell power generation plant (Br. 15). Gore’s disclosure that the water can be provided to the greenhouse by pumping it using electricity generated by the fuel cells (col. 13, ll. 25-27, 35- 37) would have led one of ordinary skill in the art, through no more than ordinary creativity, to distribute Hall’s water to the locations such as towns and crop fields where it is needed, including those which are separated from each other by substantial distances, using electrical power generated by Hall’s fuel cell. See KSR, 550 U.S. at 418. The Appellants argue that Hall and Gore are nonanalogous art because they are not reasonably pertinent to power generation for the electric grid (Br. 16-18). That argument is not convincing because it is directed toward a limitation which is not in the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant's arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). For the above reasons we are not persuaded of reversible error in the rejection over Hall in view of Gore. Appeal 2013-001872 Application 10/454,864 10 Rejection over Hoffjann in view of Hall and Werth The Appellants argue that Hoffjann, Hall and Werth do not disclose water distribution effected by electrical power generated by a fuel cell power generation plant (Br. 13-16). Werth stores fuel cell byproduct water and pumps it using electricity produced by the fuel cell (col. 4, ll. 25-24). That disclosure would have led one of ordinary skill in the art, through no more than ordinary creativity, to store Hall’s fuel cell byproduct water and use electricity produced by Hall’s fuel cell to distribute the water to the locations such as towns and crop fields where it is needed, including those which are separated from each other by substantial distances. See KSR, 550 U.S. at 418. Thus, we are not convinced of reversible error in the rejection over Hoffjann in view of Hall and Werth.2 DECISION/ORDER The rejections of claims 1 and 21-25 under 35 U.S.C. § 112, first paragraph, written description requirement and claims 1 and 21-25 under 35 U.S.C. § 103 over Hall in view of Gore and over Hoffjann in view of Hall and Werth are affirmed. The rejection of claims 23 and 25 under 35 U.S.C. § 112, first paragraph, enablement requirement is reversed. It is ordered that the 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). AFFIRMED tc 2 The Appellants arguments regarding Hall are discussed above with respect to the rejection over Hall in view of Gore.