Ex Parte Ord et al

Board of Patent Appeals and Interferences

Jul 11, 2012

11441533 (B.P.A.I. Jul. 11, 2012)

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.
11/441,533 05/26/2006 Jason S. Ord SP-2711.2
US(100200305-7)
7932
20875 7590 07/11/2012
MICHAEL C. POPHAL
EVEREADY BATTERY COMPANY INC
25225 DETROIT ROAD
P O BOX 450777
WESTLAKE, OH 44145
EXAMINER
JOHNSON, KEVIN M
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
07/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JASON S. ORD, JUSTIN ROMAN, and
ALAN SHIBATA
_______________

Appeal 2010-009632
Application 11/441,5331
Technology Center 1700
________________

Before CHUNG K. PAK, PETER F. KRATZ, and
ROMULO H. DELMENDO, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection2 of claims 1 through 7, 9 through 11, 13, 22, 24 through 26,

1 Application 11/441,533 (Application ’533), filed on May 26, 2006, which
is a division of Application 10/177,233, filed on June 21, 2002, which issued
as U.S. Patent No. 7,097,813.
2 Office action mailed August 5, 2009 (“Final Rejection”; cited as “FR”).
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28 through 33, 44, 45, 47, 48, and 53 through 583. We have jurisdiction
pursuant to 35 U.S.C. § 6.
INTRODUCTION
Details of the appealed subject matter are recited in representative
appealed claims 1, 44, and 56 of Application’533, which are reproduced
below from the Claims Appendix to the Appeal Brief.:
1. A hydrogen generating apparatus comprising:
a chemical reaction chamber;
a chemical solution reservoir; and
a spring-bag for providing pressure to move a chemical
solution from said chemical solution reservoir to said chemical
reaction chamber where hydrogen is produced from said
chemical solution.

44. A fuel cell cartridge comprising:
a chemical reaction chamber;
a chemical solution reservoir;
an unpowered pressure producing member for moving a
chemical solution from said chemical solution reservoir to said
chemical reaction chamber;
in which said chemical solution reservoir is contained
within said chemical reaction chamber such that an effective
volume of said chemical reaction chamber increases and an
effective volume of said chemical solution reservoir decreases
as said chemical solution moves from said chemical solution
reservoir to said chemical reaction chamber.

3 Claims 34 through 43 are also pending, but have been withdrawn from
consideration. See Appeal Brief filed on December 4, 2009 (“App. Br.”), 4.
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56. The apparatus of claim 1,
wherein said spring-bag comprises a flexible bag that is
both flexible and made of a stretchable material that is biased to
a particular volume, said flexible bag being inflated with a
liquid chemical solution pumped under pressure into said
flexible bag, to expand said flexible bag beyond said particular
volume, said flexible bag then providing pressure from all
directions when so expanded so as to move a chemical solution
from said chemical solution reservoir to said chemical reaction
chamber where hydrogen is produced from said chemical
solution.
(emphasis added).
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer4:
(1) Claims 1 through 7, 9 through 11, 24 through 26, 28
through 33, 44, 47, 48, and 53 through 55 under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of Hockaday5 and
Seccombe6;
(2) Claims 13 and 56 through 58 under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings of Hockaday and

4 Examiner’s Answer mailed on March 5, 2010 (“Ans.”). In the Examiner’s
Answer, the Examiner withdrew the rejection of claim 54 under 35 U.S.C.
§ 112, second paragraph. Ans. 3.
5 United States Patent Application Publication 2001/0045364 A1 to Robert
G. Hockaday et al., published on November 29, 2001.
6 United States Patent No. 5,650,811, issued to S. Dana Seccombe et al. on
July 22, 1997.
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Seccombe as applied to claim 1 above, further combined with Nagel7;
and
(3) Claims 22 and 45 under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Hockaday and Seccombe
as applied to claims 1 and 44 above, further combined with Litz.8

DISCUSSION
As a preliminary matter, Appellants have independently argued the
following sets of claims, focusing on perceived defects of Hockaday.
Seccombe and Nagel:
(1) Claims 1 through 6, 10, 11, 13, 22, 24 through 26, 28 through 33,
and 53 through 55. App. Br. 10 through 14;
(2) Claim 7. App. Br. 14 and 15;
(3) Claim 9. App. Br. 15 and 16;
(4) Claim 56 through 58. App. Br. 17 and 18; and
(5) Claims 44, 45, 47, and 48. App. Br. 18 through 20.
Thus, we select a particular claim from each set of claims and limit our
discussion thereto consistent with 37 C.F.R. § 41.37(c)(1)(vii).

7 United States Patent No. 5,865,344, issued to Dietmar Nagel on
February 2, 1999.
8 United States Patent No. 3,459,510, issued to L. M. Litz et al. on
August 5, 1969.
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I. Claims 1 through 6, 10, 11, 13, 22, 24 through 26, 28 through 33, and
53 through 55.
Appellants argued that Hockaday
does not teach or suggest the claimed spring-bag for providing
pressure to move a chemical solution from a chemical solution
reservoir to a reaction chamber where hydrogen is produced, as
recited in claim 1 [and claim 53]. . . [but] teaches “a two-
chamber system that pressurizes reactants in a bladder with
respect to the catalyst reaction chamber” using wicking and the
pressure of the hydrogen gas being produced to pressurize the
reactant.
App. Br. 10, citing Hockaday, paragraph [0068]. Appellants further argued
that the secondary reference Seccombe “has absolutely nothing whatsoever
to do with a hydrogen generating apparatus. Rather, Seccombe teaches an
‘ink-jet printing system having a pressurized ink reservoir.’” App. Br. 11,
citing Seccombe, abstract and col. 4, ll. 39-45. Appellants contend that if
the spring bag of Seccombe were to be used in the Hockaday apparatus, it
“would change the operating principles of the device taught by Hockaday.”
App. Br. 12.
Notwithstanding Appellants’ arguments to the contrary, we find that
Hockaday itself teaches the hydrogen generation apparatus and the fuel cell
comprising said hydrogen generation apparatus recited in appealed
independent claims 1 and 53, respectively. We find that Hockaday, for
example, in Figure 3, illustrates, in cross section, a percolation hydrogen
generator with a wicking fuel supply that corresponds to the claimed
hydrogen generation apparatus. Hockaday’s Figure 3 is reproduced below:
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In the percolation apparatus illustrated in Figure 3 of Hockaday, fuel
7, e.g., NaBH4 + NaOH + H2O (see paragraph [0097]), which is held in
wicking material 39, wets the narrow capillary entrance 35 and is then
hydrolyzed on contact with the catalyst coating 33 in the reaction zone 41.
The production of hydrogen in reaction zone 41 forms bubbles that first
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entrap fuel 7 and subsequently pump fuel 7 up the diverging capillary
tube 40. This pumping action then drives fuel 7
up the reaction zone 41 to further hydrolyze the fuel 7 and push
the spent fuel 7 beyond the reaction zone 41 to the narrow
capillary exit 35 or side capillary vents 42. The hydrogen gas
12 separates from the fuel 7 in the larger diameter of the
reaction capillary tube 40.
Paragraph [0106]. Hockaday teaches that the apparatus
pressure regulates its production of hydrogen 12 such that when
the hydrogen pressure is low the elastic container [38] squeezes
on the porous hydrophobic liner 32. This in turn compresses
the wicking material 39 and fuel is pushed into the narrow
capillary entrance 35. Subsequently, the fuel hydrolysis
commences on the catalytic surfaces 33 and hydrogen 12 is
produced. The production of hydrogen raises the pressure on
the interior of the elastic flexible container 38 and it expands,
drawing the fuel back out of the reaction flask 40 and slowing
or stopping the hydrolysis reaction on the reaction zone 41
(emphasis added). Paragraph [0107].
As is apparent from the findings set forth above, the Hockaday
hydrophobic liner 32 comprising the fuel 7-loaded wicking material 39
meets the “chemical solution reservoir” recited in appealed claims 1 and 53.
The Hockaday capillary tube 40 comprising reaction zone 41 also meets the
“chemical reaction chamber” recited in appealed claims 1 and 53. Because
the elastic container 38 squeezes the hydrophobic liner 32 to move fuel 7
from the wicking material 39 into the capillary tube 40, the Hockaday elastic
container 38 meets the spring-bag limitation of “providing pressure to move
a chemical solution [Hockaday’s fuel 7] from said chemical solution
reservoir [Hockaday’s hydrophobic liner 32 comprising the fuel 7-loaded
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wicking material 39] to said chemical reaction chamber [Hockaday’s
capillary tube 40 comprising reaction zone 41] where hydrogen is produced
from said chemical solution” recited in appealed claims 1 and 53.
Hockaday further teaches that its hydrogen generator may be part of a
fuel cell that further comprises an anode, a cathode, and an electrolyte, e.g.
NaOH. Paragraphs [0002], [0007], [0017], [0018], and [0022]
through [0024], and for example, the fuel cell shown in Fig. 2. In Fig. 2, the
fuel cell is shown to include a positive current collector electrode 16 [a
cathode], a negative current collector electrode 23 [an anode], and an
electrolyte, e.g., the fuel’s electrolyte of NaOH and water. See
paragraphs [0102] through [0104].
Thus, we find that Hockaday teaches the hydrogen generation
apparatus and the fuel cell recited in appealed claims 1 and 53, respectively.
Hockaday’s anticipating disclosure of the claimed subject matter is the
epitome of obviousness. In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991); see also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982)
(“[L]ack of novelty is the ultimate of obviousness.”)
Accordingly, we AFFIRM the Examiner’s decision rejecting claims 1
through 6, 10, 11, 13, 22, 24 through 26, 28 through 33, and 53 through 55
under 35 U.S.C. § 103(a) as unpatentable over Hockaday alone. However,
inasmuch as our rationale for affirming this rejection is materially different
from the one proposed by the Examiner, we denominate our affirmance as
including a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
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II. Claims 7, 44, 45, 47, and 48.
Claims 7, 44, 45, 47, and 48 were rejected over the collective
teachings of Hockaday with the other cited references for the reasons
discussed at pages 5 through 9 of the Examiner’s Answer. According to the
Examiner,
Hockaday teaches that the fuel bladder [chemical solution
reservoir] may be separated by an elastic membrane, and that
there are many ways that one of ordinary skill in art could
incorporate the catalyst chamber [reaction chamber] and fuel
bladder in to the system (paragraph 69). It would have been
obvious to one of ordinary skill in the art . . . to place the fuel
bladder in the chemical reaction chamber taught by Hockaday.
Ans. 5 and 12.
Appellants contend that Hockaday does not teach or suggest a
chemical solution reservoir that is “contained within” a chemical reaction
chamber as recited in appealed claims 7, 44, 45, 47, and 48. App. Br. 14, 15,
and 19. Appellants argued that “[i]n the various embodiments taught by
Hockaday, the chemical solution is generally disposed in a wicking material
around the exterior of the chemical reaction chamber. This is the opposite of
what is claimed.” App. Br. 14-15, and 19.
Thus, the issue presented here is: Would Hockaday have taught or
suggested a hydrogen generating apparatus comprising a chemical solution
reservoir within a chemical reaction chamber as recited in appealed claims 7,
44, 45, 47, and 48? On this record, we answer the question in the negative.
Our reasons follow:
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Hockaday in paragraph [0069] merely discloses that “[t]here are many
ways of incorporating the fuel bladder, pressure regulated fuel delivery
route, hydrogen vent route, catalyst chamber, catalyst surfaces, and liquid
gas separation.” There is no disclosure or guidance in paragraph [0069] of
Hockaday that would have prompted a person having ordinary skill in the art
to place the fuel bladder [chemical solution reservoir] within a catalyst
chamber [chemical reaction chamber] as recited in appealed claims 7,
44, 45, 47, and 48. Thus, on this record, the Examiner has not demonstrated
that a person having ordinary skill in the art would have been led to
rearrange the Hockaday fuel bladder [chemical solution reservoir] to be
contained in a catalytic chamber [chemical reaction chamber] as recited in
appealed claims 7, 44, 45, 47, and 48 from the generic disclosure in
paragraph [0069] of Hockaday.
Accordingly, we REVERSE the Examiner’s decision rejecting claims
7, 44, 45, 47, and 48 under 35 U.S.C. § 103(a).
III. Claim 9.
Claim 9 was rejected for the reasons discussed at pages 5 and 6 of the
Examiner’s Answer. According to the Examiner, because Hockaday teaches
a reaction chamber with at least one flexible wall in paragraph [0069], it
would have been obvious for a person having ordinary skill in the art to
utilize a flexible bag as a reaction chamber in the apparatus taught by
Hockaday. Ans. 5 and 6.
Appellants contend that Hockaday does not teach or suggest a
chemical reaction chamber comprising a flexible bag as recited in appealed
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claim 9. App. Br. 16. Even accepting, arguendo, that Hockaday in
paragraph [0069] discloses that the reaction chamber has “at least one
flexible wall” as found by the Examiner, as Appellants argue, “an elastic
membrane between a fuel bladder and reaction chamber, as taught by
Hockaday, is not [the] same thing as a flexible bag that serves as the reaction
chamber” as recited in appealed claim 9. Id.
Thus, the issue presented here is: Would Hockaday have taught or
suggested a chemical reaction chamber comprising a flexible bag as recited
in appealed claim 9? On this record, we answer the question in the negative.
As is apparent from the Answer, the Examiner has not proffered a
sufficient factual basis to show why Hockaday’s disclosure of using an
elastic membrane to separate the fuel bladder from the reaction chamber
would have led one of ordinary skill in the art to form a reaction chamber
comprising a flexible bag as recited in appealed claim 9. On this record, the
Examiner has not carried the initial burden of establishing a prima facie case
of obviousness regarding the subject matter recited in appealed claim 9.
Accordingly, we REVERSE the Examiner’s decision rejecting claim 9
under 35 U.S.C. § 103(a).
IV. Claims 56 through 58.
Claims 56 through 58 are rejected for the reasons discussed at page 8
of the Examiner’s Answer. According to the Examiner, Nagel teaches that
a rubber balloon type bladder may be inflated with a liquid
thereby pressuring the liquid allowing the movement of said
liquid out of the bladder (column 4, lines 18-32).
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It would have been obvious to one of ordinary skill in the
art at the time of the invention to utilize a rubber bladder of the
type taught by Nagel in the system taught by Hockaday [Figure
9]. Such a modification would have been motivated by the
teaching in Hockaday that the bladder itself maintains a
pressure on the fuel liquid (paragraph 122) and the teaching in
Nagel that rubber bladders when inflated by pressurized liquids
maintain the liquids under pressure.
Ans. 8.
Appellants argue that the collective teachings of the cited references
would not have arrived at the spring bag comprising
a flexible bag . . . being inflated with a liquid chemical solution
pumped under pressure into said flexible bag, to expand said
flexible bag beyond . . . [a] particular volume, said flexible bag
then providing pressure from all directions when so expanded
so as to move a chemical solution from
a chemical solution reservoir to a reaction chamber that produces hydrogen
from said chemical solution, as recited in the appealed claims 56 through 58.
App. Br. 17 and 18. Appellants argued that Nagel teaches a ‘‘‘toy water
pistol’ with a ‘pressurized bladder chamber.’” Id. at 17, citing Nagel,
abstract and title. Appellants contend that “[t]here simply is no justification
on the record, other than Applicant’s own specification, for combining
teachings of the squirt gun of Nagel with the hydrogen generation system of
Hockaday.” App. Br. 17.
Thus, the issue here is: Would the collective teachings of the
references referred to by the Examiner have suggested a hydrogen generator
apparatus comprising a spring-bag comprising a flexible bag that is
expanded or inflated with a chemical solution to move the chemical solution
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from a chemical solution reservoir to a chemical reaction chamber9 as
recited in appealed claims 56 through 58? We answer the question in the
negative. Our reasons follow:
According to Hockaday in paragraph [0122], in the percolator
hydrogen generation apparatus shown in Fig. 9 relied upon by the Examiner,
the bladder 113, which comprises the fuel 7-loaded wicking material 114,
“elastically maintains a hydrostatic pressure on the fuel 7” (emphasis added).
There is no disclosure in Hockaday’s paragraph [0122] of “pumping under
pressure” fuel 7 into the wicking material 114 to expand or inflate the
bladder 113 so as to move fuel 7 to a reaction chamber as recited in appealed
claims 56 through 58. Rather, according to Hockaday in paragraph [0123],
liquid fuel 7 that is separated from the produced hydrogen gas, “is shown
wetting the small capillary return routes 119 and 117,” which are connected
to fuel outlet tube 120 that returns the separated fuel 7 to the wicking
material 114.
On this record, the Examiner has not shown why a person having
ordinary skill in the art would have altered the operating principles of the
percolator hydrogen generator taught by Hockaday by using the rubber
bladder in the squirt gun taught by Nagel as the fuel bladder 113 comprising
the fuel-loaded wicking material 114 in the percolator hydrogen generator
taught by Hockaday to arrive at the hydrogen generation apparatus

9 This limitation requires a particular arrangement of a chemical solution
reservoir made of a spring-bag comprising a flexible bag and a chemical
reaction chamber so that the expansion of the flexible bag causes movement
of a chemical solution from the chemical solution reservoir to the chemical
reaction chamber. (See, e.g., Figs. 5 and 6.)
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comprising a spring-bag comprising the flexible bag as recited in appealed
claims 56 through 58. Nor has the Examiner shown why one of ordinary
skill in the art would have had a reasonable expectation that the rubber
bladder of the squirt gun taught by Nagel is useful for producing the type of
desired flow taught by Hockaday in its hydrogen generation apparatus.
Accordingly, we REVERSE the Examiner’s decision rejecting claims
56 through 58 under 35 U.S.C. § 103(a).
ORDER
We AFFIRM the Examiner’s decision rejecting claims 1 through 6,
10, 11, 13, 22, 24 through 26, 28 through 33, and 53 through 55 under
35 U.S.C. § 103(a) as unpatentable over Hockaday. However, we
denominate our affirmance of this decision as including a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) as indicated supra.
We REVERSE the Examiner’s decision rejecting claims 7, 9,
44, 45, 47, 48, and 56 through 58 under 35 U.S.C. § 103(a) as
unpatentable over collective teachings of the cited references.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen Prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceedings will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceedings be
reheard under § 41.52 by the Board upon the same record. . . .
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/37 C.F.R. § 41.50(b)

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