Ex Parte Eickhoff et al

Patent Trial and Appeal Board

Jul 5, 2016

12062315 (P.T.A.B. Jul. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/062,315
92689 7590
HONEYWELL/SLW
Patent Services
115 Tabor Road
P.O. Box 377
04/03/2008
07/07/2016
MORRIS PLAINS, NJ 07950
FIRST NAMED INVENTOR
Steven J. Eickhoff
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H0017545.92741 1062
EXAMINER
CHUO, TONY SHENG HSIANG
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
07/07/2016 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):
patentservices-us@honeywell.com
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. EICKHOFF 1
and Chunbo Zhang
Appeal2014-008537
Application 12/062,315
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and BRIAND. RANGE,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Steven J. Eickhoff and Chunbo Zhang ("Honeywell") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection of the Primary
Examiner, 2 as modified by the Advisory Action, 3 of claims 1 and 3-17,
which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 The real party in interest is listed as Honeywell International, Inc.
("Honeywell"). (Appeal Brief, filed 7 April 2014 ("Br."), 2.)
2 Office action mailed 7 November 2013 ("Final Rejection"; cited as "FR").
3 Advisory Action mailed 30 January 2014 ("Adv."); see n.15, infra.
Appeal2014-008537
Application 12/062,315
A. Introduction4
OPINION
The subject matter on appeal relates to fuel cells. In particular,
the '315 Specification is concerned with power generators based on fuel
cells having a proton exchange membrane ("PEM") and water-scavenging,
self regulating chemical hydride based hydrogen fuel generators.
(Spec. 1 [0001].) Such fuel cells are said to be sensitive to ambient
humidity. (Id.) In particular, according to the Specification, low water
content in the PEM resulting from normal ambient humidity may limit the
maximum power that can be generated. (Id.) Moreover, the shelf life of
such fuel cells is said to be limited by continuous hydrogen discharge
through the PEM. (Id.)
Honeywell seeks patent protection for a power generator that is said to
avoid these problems by coupling an electrolytic oxygen generator to
the PEM. The oxygen generator comprises an oxygen ion transport
membrane that blocks the transport of gases, including water vapor, and is
powered by electricity generated by the fuel cell. As a result, the humidity
sensitivity is said to be removed; the amount of water vapor available to
react with the hydride to generate hydrogen gas is increased, and the
deleterious hydrogen discharge is blocked. (Id. at 2-3 [0009].)
4 Application 12/062,315, Fuel cell with oxygen transport membrane,
filed 3 April 2008. We refer to the '"315 Specification," which we cite as
"Spec."
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Application 12/062,315
Claim 1 is representative of the dispositive issues and reads:
A power generator comprising:
a fuel cell having a proton exchange membrane for
generating electricity from hydrogen and oxygen;
wherein the hydrogen is to be provided from a
hydrogen producing fuel comprising
a water vapor reactive chemical hydride to be coupled
to the proton exchange membrane for supplying
hydrogen to the proton exchange membrane; and
an electrolytic oxygen generator
receiving a portion of the electricity generated by the
fuel cell and
coupled to the proton exchange membrane for
providing oxygen to the proton exchange membrane;
wherein the electrolytic oxygen generator comprises an
oxygen-ion transport membrane,
wherein the oxygen-ion transport membrane comprises
an oxygen selective permeable membrane that allows
oxygen-ion permeation but blocks other gases
including water vapor, thereby
blocking hydrogen discharge to ambient and
driving water vapor generated by the generation of
electricity to the fuel cell anode
where the increased water vapor content results in
higher ionic conductivity and
where the water vapor can react with the chemical
hydride and generate more hydrogen.
(Claims App., Br. 23; indentation, paragraphing, and emphasis added.)
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Appeal2014-008537
Application 12/062,315
The Examiner maintains the following grounds of rejection5' 6 :
A. Claims 1, 4, 6, 8-15, and 17 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Eickhoff '996,7 Del Gallo,8 and Research Disclosure.9
A'. Claim 1 stands rejected under Obviousness-type double
patenting in view of claims 1, 2, 10, 14, and 15 of
Eickhoff '81610 and Del Gallo.
B. Claims 1, 3, 4, 6, and 8-17 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Hoffjann, 11 Rezachek, 12 Del Gallo, and Research Disclosure.
5 Examiner's Answer mailed 6 June 2014 ("Ans.").
6 Because the '315 application was filed before 16 March 2013, we refer to
the pre-AIA version of the patent statute.
7 Steven J. Eickhoff and Roland A. Wood, Water reclamation in a
micropower generator, U.S. Patent Application Publication
2007/0104996 Al (10 May 2007, based on application 11/270,848,
filed 9 November 2005; issued as U.S. Patent No. 7,901,816 B2
on 8 March 2011, assigned to Honeywell Int'l, Inc.
8 Pascal Del Gallo and Guylaine Gouriou, Method for producing oxygen,
from air, particularly using an electrochemical cell with ceramic membrane,
with control means for continuous production, WO 2007 /060141 Al
(31 May 2007).
9 Anonymous, Integration of fuel cells and electrically driven oxygen
separation systems, Research Disclosure Database number 391009
(Questel Ireland Ltd) (1996).
10 Steven J. Eickhoff and Roland A. Wood, Water reclamation in a
micropower generator, U.S. Patent No. 7,901,816 B2 (8 March 2011), based
on an application 11/270,848, supra at n.7.
11 Claus Hoffjann and Hans-Juergen Heinrich, Fuel cell system and method
with increased efficiency and reduced exhaust emissions, U.S. Patent
Application Publication 2004/0043276 Al (2004), issued as U.S.
Patent 7,208,239 B2 on 24 April 2007.
12 Thomas Rezachek and Roland A. Wood, Electrical power generator, U.S.
Patent Application Publication 2004/0161646 Al (2004), issued as U.S.
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Application 12/062,315
[Bl. Claim 5 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Hoffjann, Rezachek, Del Gallo, and
Prasad.13]
[B2. Claim 7 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Hoffjann, Rezachek, Del Gallo, and
Sarkar. 14]
The status of the rejections of the dependent claims, including
Rejections B 1 and B2 of claims 5 and 7, respectively, was not made entirely
clear. However, for reasons explained in the footnote 15 , we treat all claims
as standing or falling with the rejections of the independent claims.
Patent No. 7,445,860 B2 on 4 November 2008 (assigned to Honeywell Int'l,
Inc.).
13 Ravi Prasad and Christian Friedrich Gotzmann, Reactor comprising a
ceramic membrane for carrying out endothermic reactions and process for
providing heat to endothermic reactions, EP 0984500 A2 (2000).
14 Partho Sarkar et al., Heat exchanger for fuel cell stack, US 2007/0003806
Al (2007).
15 Rejections Bl and B2 were applied in the Final Rejection. (FR 19-20.)
Eickhoff filed amendments under 37 C.F .R. § 116 on 7 January 2014, after
the Final Rejection. The Examiner entered these amendments and set out
new grounds of rejection of claims 1 and 13 in view of the references
applied to those claims in the Final Rejection, and further in view of
Research Disclosure. (Adv. 2-7.) The Advisory Action identifies the status
of claims 1and3-17 as being rejected. (Advisory Form PTOL-303; item 15)
However, the Examiner does not appear to mention any of the dependent
claims in the new statements of rejection. (Adv. 2-7.) On appeal, Eickhoff
recites expressly the rejected status of each claim (Br. 4, last para.), but does
not list the rejections of claims 5 and 7 in the "Grounds of Rejection to be
Reviewed on Appeal." (Br. 8.) Nor does Eickhoff discuss substantively the
rejections of these claims, or of any other dependent claims, in the Brief or
in the Reply (Reply Brief filed 6 August 2014 ("Reply").)
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Application 12/062,315
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejections A, in view of Eickhoff
Honeywell urges that the Examiner erred by relying on Eickhoff16
because, inter alia, modifying the fuel cell described by Eickhoff with an
oxygen generator described by Del Gallo would require changing a
fundamental principle of operation of the fuel cell described by Eickhoff. In
Honeywell's words, "Del Gallo's electrolytic oxygen generator would
prevent Eickhoff from receiving its needed atmospheric oxygen and
atmospheric water, and therefore render those embodiments of Eickhoff
inoperable." (Br. 16, last para.)
Review of Eickhoff confirms Honeywell's representations in this
regard. According to Eickhoff, the invention concerns "a passively
controlled process for producing electricity with a fuel cell using
stoichiometric amounts of a solid hydrogen fuel and byproduct water vapor
produced by the fuel cell to generate hydrogen gas." (Eickhoff '996,
abstract.) Eickhoff instructs that "[t]he process and apparatus of the
We assume, without deciding, that the rejections of the dependent
claims incorporate the rationale of the rejections of the independent claims
as expressed in the Advisory Action.
On this record, we assume further, without deciding, that these lapses
were mere oversights, and that the status of these claims will be clarified on
the record in the event of any further proceedings.
16 We refer to the Published Patent Application and to the Patent collectively
as "Eickhoff," except where necessary to distinguish the two documents.
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Application 12/062,315
invention are designed to operate without an externally provided water
supply, i.e. the system is water-less except for water that is generated by the
fuel cell and water molecules present in the atmosphere outside of the power
generator." (Id. at 3 [0050]; emphasis added.) Moreover, "the present
invention provides a continuous, self-regulating process since the hydrogen-
oxygen reaction produces exactly the required water corresponding to the
electrical power generated, wherein stoichiometric amounts of recycled
water and solid fuel are used." (Id.; emphasis added.)
To accomplish these goals, in the embodiment shown in Figs. 1 and 2,
reproduced below,
46
46 ]{)
~ ~ 12
44
water produced by the fuel cell reaction at cathode 16, as well as water vapor
in the ambient air, diffuses through pneumatic valve 26 to fuel chamber 12,
which contains a hydride, e.g., lithium aluminum hydride, which generates
hydrogen gas by reaction with the water. (Id. at 6 [0069].) Pneumatic
17 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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Appeal2014-008537
Application 12/062,315
valve 26 closes against seal 38 when hydrogen gas pressure rises enough to
push diaphragm 30 out slightly, causing hydrogen gas production to cease.
(Id. at 5 [0064].) As hydrogen is consumed, the internal gas pressure drops,
allowing valve disc 28 to disengage seal 38, opening the valve and allowing
water vapor back into fuel chamber 12. (Id.) In the embodiment illustrated
in Fig. 2, restriction 32, which is preferably substantially permeable to
oxygen gas but impermeable to water vapor, obstructs the egress of fuel cell
water vapor to the atmosphere, while small opening 48 allows ingress of
atmospheric oxygen and water vapor into the fuel cell cathode.
(Id. at 6 [0068].)
The Eickhoff' 816 patent claims also require "d) at least one air inlet
for admitting atmospheric air into the housing" (claim 1) and "an oxygen
permeable, water vapor impermeable membrane united with the air inlet,
which membrane deters the flow of fuel cell water into the atmosphere"
(claim 10). See also claim 14, limitations d) and h).
The weight of the evidence is that the use of an oxygen-generator
comprising a ceramic membrane heated to high temperature or electrically
biased, such as the generator described by Del Gallo, to provide oxygen to
the cathodes of the fuel cells in the power generator described by Eickhoff,
while not technically impossible, would change the principle of operation of
the power generator described by Eickhoff. Thus, the present record does
not support by a preponderance of evidence that a person of ordinary skill
would have modified Eickhoff with the teachings of Del Gallo as proposed
by the Examiner.
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Application 12/062,315
We conclude that Honeywell has shown harmful error in the rejection
for obvious based on Eickhoff and Del Gallo, and we reverse Rejection A.
Honeywell argues that the Examiner erred in maintaining the
obviousness-type double patenting rejection over the specified claims of the
Eickhoff 816 patent because "[ t ]the 'obvious to modify' language does not
indicate that the change to the claimed invention is an obvious variation."
(Br. 12, 11. 21-22.) This argument is not persuasive. If the Examiner had
shown it would have been obvious to modify the fuel cell based power
generator described by Eickhoff, we should have had no difficulty affirming
the rejection. But, the argument against the teachings of the Eickhoff '996
printed publication, as explained supra, applies with respect to the double
patenting rejection.
Accordingly, we reverse Rejection A' for obviousness-type double
patenting.
Rejections B, in view of Hofjjann
Honeywell urges that "the structure recited in the present claims
results in the fuel cell and oxygen generator interacting in a "symbiotic
relationship," where the fuel cell provides power to the oxygen generator
and the oxygen generator provides oxygen to the fuel cell." (Br., para.
bridging 20-21.) Hoffjann and the other applied references do not, in
Honeywell's view, provide any motivation to provide power generated by a
fuel cell to an oxygen generator supplying oxygen to the fuel cell. (Id.)
Honeywell urges further that the Examiner has not suggested the manner in
which the distinct devices of the references could be combined, and that the
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Appeal2014-008537
Application 12/062,315
routineer would not have been motivated to combine the teachings in order
to simplify the overall system. (Id. at 21, 1st full para.)
These arguments are not persuasive of harmful error in the rejections
based on Hoffjann. The Examiner finds that Hoffjann teaches the provision
of oxygen enriched air to the cathodes of fuel cells; Del Gallo teaches
methods of producing oxygen from air using electrolytic oxygen generators;
and Rezachek teaches the provision of hydrogen gas from hydrides reacting
with water. (Adv. 4-6.) The oxygen generators taught by Del Gallo need
power, and Research Disclosure teaches powering electrically driven oxygen
separation systems with power from a fuel cell. Unlike the rejections based
on Eickhoff, Honeywell has not identified a fundamental incompatibility
among the references. Nor has Honeywell identified substantive errors in
the Examiner's findings of fact regarding the teachings of these references.
The fuel cell power generation art, as demonstrated by the references
in this case, is an art of high technical sophistication, Hoffjann itself shows
the use of products from one part of the system for multiple purposes in
other parts of the system. Accordingly, we are not persuaded that the
absence of the "symbiotic" relation required by the appealed claims, in
which power for the oxygen separation is derived from the fuel cells, which
are provided with oxygen by the oxygen separators, represents something
more than the ordinary ingenuity of persons having ordinary skill in the art.
Notably, Honeywell has not raised substantive arguments based on
secondary considerations such as unexpected results, etc.
We are not persuaded of harmful error in Rejections B, so we affirm.
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C. Order
It is ORDERED that Rejections B of claims 1 and 3-17 is affirmed.
It is FURTHER ORDERED that Rejection A of claims 1, 4, 6, 8-15,
and 1 7 is reversed.
It is FURTHER ORDERED that Rejection A' of claim 1 is
reversed.No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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