KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Feb 26, 2020

14655547 - (D) (P.T.A.B. Feb. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/655,547 06/25/2015 MIAOXIN YANG 2013P00021WOUS01 7912
24737 7590 02/26/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
ALLEN, JOSHUA L
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIAOXIN YANG, GUANGWEI WANG,
and JIANYU JIN
____________

Appeal 2019-003609
Application 14/655,547
Technology Center 1700
____________

Before LINDA M. GAUDETTE, ELIZABETH M. ROESEL, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 11, 12, and 16–24.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Koninklijke Philips N.V. as the real
party in interest. Appeal Brief filed December 17, 2018 (“Appeal Br.”).
Appeal Br. 3.
2 Final Office Action mailed July 19, 2018 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims a device for preparing a pH-adjusted electrolyte
aqueous solution. Appeal Br. 7–8. Claim 11, the sole pending independent
claim, illustrates the subject matter on appeal, and is reproduced below with
contested subject matter italicized:
11. A device for preparing a pH adjusted electrolyte aqueous
solution, the device comprising:
a pH adjustor configured to prepare the pH-adjusted
electrolyte aqueous solution;
a second unit in liquid connection with the pH adjustor
and configured to dispense the pH-adjusted electrolyte aqueous
solution,
wherein the pH adjustor comprises:
an electrolysis cell including an anode and a
cathode:
said cathode comprising pseudocapacitance
material and said anode comprising a metal oxide, in operation
of the pH adjustor, the pseudocapacitance material gets
electrons from the anode and adsorbs cations from the
electrolyte aqueous solution by electrochemically reacting with
said cations, OH- in the electrolyte aqueous solution are
consumed at the anode by losing electrons and a consumption
of H+ in the electrolyte aqueous solution at the cathode is
inhibited, leaving H+ in the electrolyte aqueous solution; or
said anode comprises pseudocapacitance
material and said cathode comprising a metal oxide, and in
operation of the pH adjustor, the pseudocapacitance material
loses electrons and adsorbs anions from the electrolyte aqueous
solution by electrochemically reacting with said anions, H+ in
the electrolyte aqueous solution are consumed at the cathode by
getting electrons and a consumption of OH- in the electrolyte
aqueous solution at the anode is inhibited, leaving OH- in the
electrolyte aqueous solution; and
a controller configured to control the electrolysis process
in the electrolysis cell.

Appeal Br. 23–24 (Claims Appendix) (emphasis added).
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REFERENCES
Nakamura et al. US 6,113,853 Sept. 5, 2000
(“Nakamura”)
Rosenblum et al. US 2002/0027068 A1 Mar. 7, 2002
(“Rosenblum”)
Tanahashi et al. US 2011/0042206 A1 Feb. 24, 2011
(“Tanahashi”)

Kuo et al., Investigation of Pseudocapacitive Charge-Storage Reaction of
MnO2nH2O Supercapacitors in Aqueous Electrolytes, 153 Journal of the
Electrochemical Society, The Electrochemical Society, A1317–A1324
(2006), (“Kuo”).

Chang, et al., Electrochemically synthesized graphene/polypyrrole
composites and their use in supercapacitor, 50 Carbon, 2331–2336 (2012),
www.sciencedirect.com, last visited Feb. 2020, (“Chang”).

Xie et al., Supercapacitance of ruthenium oxide deposited on titania and
titanium substrates, 122 Materials Chemistry and Physics, 23–29 (2010),
(“Xie”).

REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered February 7, 2019 (“Ans.”):
I. Claims 11 and 16–19 under 35 U.S.C. § 103(a) as unpatentable
over Tanahashi in view of Rosenblum;
II. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Tanahashi in view of Rosenblum and Nakamura;
III. Claims 20–22 under 35 U.S.C. § 103(a) as unpatentable over
Tanahashi in view of Rosenblum and Kuo; and
IV. Claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable
over Tanahashi in view of Rosenblum, Chang, and Xie.
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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 11, 12, and 16–24 under 35 U.S.C. § 103(a) for the reasons set forth
in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the [E]xaminer’s
rejections”)).
Rejection I
We turn first to the Examiner’s rejection of claims 11 and 16–19
under 35 U.S.C. § 103(a) as unpatentable over Tanahashi in view of
Rosenblum. To address this rejection, Appellant presents arguments
directed to claim 11 only, and asserts that claims 16–19 are allowable for the
same reasons as claim 11. Appeal Br. 11–17. We, therefore, select claim 11
as representative, and decide the appeal as to claims 11 and 16–19 based on
claim 11 alone. 37 C.F.R. § 41.37(c)(1)(iv).
We point out initially that claim 11 recites that the claimed device
comprises a pH adjustor “configured to” prepare a pH-adjusted electrolyte
aqueous solution. As discussed more fully below, Appellant’s Specification
discloses that the recited pH adjustor is designed and constructed to perform
this recited function of adjusting the pH of an aqueous solution.
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Consequently, claim 11 requires the recited pH adjustor to be “made to” or
“designed to” perform the function of adjusting the pH of an aqueous
solution. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (explaining
that recitation in a claim that an apparatus or structure is “configured to”
perform a particular function requires more than “mere capability” of
performing the recited function, and is synonymous with “made to” or
“designed to” perform the function, when the description makes clear that
the claimed apparatus or structure is “designed to” or “constructed to”
perform the recited function).
We also point out that claim 11 sets forth two alternative
compositions for the anode and cathode of the recited pH adjustor, and two
consequent alternative operations of the pH adjustor, one of which is
optional, by virtue of the claim’s recitation of “or” between the two relevant
paragraphs in the claim. We, therefore, limit our discussion to the first
alternative recited in claim 11, in which the cathode comprises a
pseudocapacitance material and the anode comprises a metal oxide.
Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir.
2009).
Tanahashi discloses a device for regulating the pH of drinking water
that comprises an ion-adsorbing electrode, a metal electrode paired with the
ion-adsorbing electrode that functions as a counter electrode, and a
controller that controls a power supply to apply a voltage between the
electrodes, which electrolyzes water at the surface of the metal electrode.
Tanahashi ¶¶ 21, 28 48, 51, 75. Tanahashi discloses that the ion-adsorbing
electrode can serve as a cathode, while the metal electrode serves as an
anode. Tanahashi ¶ 52. Appellant does not dispute the Examiner’s finding
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that the ion-adsorbing cathode disclosed in Tanahashi corresponds to a
cathode comprising pseudocapacitance material as recited in claim 11.
Compare Final Act. 3–4, with Appeal Br. 11–17.
Tanahashi discloses lowering the pH of drinking water by applying a
direct current voltage between the ion-adsorbing cathode and the metal
anode, which, Tanahashi explains, causes cations in the drinking water to be
adsorbed on the electrically conductive material of the ion-adsorbing
electrode, and causes hydrogen ions (H+) and oxygen gas to be generated at
the surface of the metal electrode, resulting in the drinking water becoming
acidic. Tanahashi ¶ 52.
The Examiner finds that although Tanahashi discloses that suitable
anodes for Tanahashi’s device include electrodes whose surface is coated
with a metal that facilitates water electrolysis, such as platinum, Tanahashi
does not disclose an anode comprising a metal oxide, as recited in claim 11.
Final Act. 6 (citing Tanahashi ¶ 48).
Rosenblum, however, discloses that suitable materials for forming
electrodes used for the electrolysis of water include platinum, ruthenium
dioxide, and conductive oxides. Rosenblum ¶¶ 9, 73 (Table 1). Rosenblum
further discloses that ruthenium oxides yield “[a] very good anode.”
Rosenblum ¶ 73 (Table 1).
In view of these disclosures in Rosenblum, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art at the time
of Appellant’s invention to use a metal oxide, such as ruthenium dioxide, as
disclosed in Rosenblum, to form Tanahashi’s metal anode, because
Tanahashi “discloses that any electrode suitable for water electrolysis is
enabled,” and Rosenblum discloses that ruthenium oxides yield “[a] very
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good anode.” Final Act. 7 (citing Tanahashi ¶ 48; Rosenblum Table 1); see
also Ans. 24. The Examiner determines that such a modification of
Tanahashi’s metal electrode would constitute nothing more than selection of
a known material based upon its suitability for an intended use. Id.
Appellant argues that the operating principle of Tanahashi’s device
for regulating pH differs fundamentally from the operating principle of the
pH adjustor recited in claim 11. Appeal Br. 12–15. Appellant argues that
“the ion-adsorbing electrode (cathode)/metal electrode (anode) embodiment
of Tanahashi may be characterized as an acidic regulation technique for
drinking water” that generates “additional hydrogen ions (H+) in the drinking
water leading to a pH decrease,” but in contrast, “the pseudocapacitance
material (cathode)/metal oxide (anode)” of Appellant’s invention “may be
characterized as an acidic regulation technique for drinking water” that
consumes hydroxide ions (OH-) in the drinking water leading to a pH
decrease. Appeal Br. 13–14.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons well-expressed by the Examiner in the
Answer, and discussed below.
Claim 11 recites a pH adjuster comprising, in part, an electrolysis cell
including a cathode comprising a pseudocapacitance material and an anode
comprising a metal oxide. Claim 11 recites that, in operation, “the
pseudocapacitance material gets electrons from the anode and adsorbs
cations from the electrolyte aqueous solution by electrochemically reacting
with said cations, OH- in the electrolyte aqueous solution are consumed at
the anode by losing electrons and a consumption of H+ in the electrolyte
aqueous solution at the cathode is inhibited, leaving H+ in the electrolyte
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aqueous solution.”
As the Examiner explains in the Answer (Ans. 17–22), contrary to
Appellant’s arguments, Tanahashi’s device for regulating pH uses the same
mechanism of operation (or operating principle) as the pH adjustor recited in
claim 11, in view of the plain language of claim 11, and the description of
the recited pH adjustor provided in Appellant’s Specification and drawings.
The Specification discloses that Appellant’s device for preparing a
pH-adjusted aqueous solution operates according to an asymmetric
electrolysis mechanism in which the formation of hydrogen gas at the
cathode, which occurs during typical symmetrical electrolysis of water, is
inhibited, while formation of oxygen gas at an anode, which occurs during
typical symmetrical electrolysis of water, is not inhibited. Spec. pg. 1, ll.
11–15; pg. 5, ll. 6–25. The Specification discloses that the result of this
asymmetrical electrolysis process is accumulation of hydrogen ions in the
electrolysis solution, which lowers the pH of the solution. Spec. pg. 5, ll. 6–
25; pg. 15, l. 22–pg. 16, l. 11; Fig. 9B.
More Specifically, the Specification discloses that Appellant’s device
comprises an electrolysis cell that includes an anode comprising a metal
oxide and a cathode comprising a pseudocapacitance material (such as a
transition metal oxide), both of which are immersed in an aqueous solution,
such as water, and a controller that controls the flow of current from a power
supply to the electrodes. Spec. pg. 5, l. 6–pg. 6, l. 19; pg. 14, ll. 1–24; Fig.
9B. The Specification explains, as recited in claim 11, that the cathode
pseudocapacitance material gets electrons from the anode, and absorbs
cations from the water by electrochemically reacting with the cations, which
inhibits the formation of hydrogen gas at the cathode (that normally occurs
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during symmetric electrolysis). Spec. pg. 2, ll. 10–20; pg. 5, ll. 6–25; pg. 14,
l. 26–pg. 16, l. 11; pg. 22, l. 23–pg. 23, l. 2; Fig. 9B. The Specification
further explains—as also recited in claim 11—that hydroxide ions (OH-) in
the water are consumed at the anode by losing electrons, which generates
oxygen gas and hydrogen ions (H+). Id. Due to inhibition of the formation
of hydrogen gas at the cathode, hydrogen ions (H+) accumulate in the water,
which lowers the pH of the water, and “result[s] in production of acidic
water.” Id.
As the Examiner points out (Ans. 19), the Specification also discloses
that during operation of Appellant’s device, the longer the water is in contact
with the electrodes while current is being supplied, the more H+ ions are
generated. Spec. 16, ll. 13–24; Fig. 9B. Similarly, the higher the
current/voltage supplied to the electrodes, the greater the electron transfer
speed between the electrodes and the water, and the higher the generation
rate of H+ ions in the water. Spec. 16, ll. 13–24; Fig. 9B.
Consistent with the plain language of claim 11, the Specification thus
explicitly indicates that the mechanism of operation of the pH adjuster
recited in claim 11 involves the generation of hydrogen ions (H+) at the
anode and inhibition of the formation of hydrogen gas at the cathode, which
lowers the pH of the water in the electrolysis cell due to the accumulation of
hydrogen ions (H+) in the water. As discussed above, Tanahashi discloses
lowering the pH of drinking water by applying a direct current voltage
between an ion-adsorbing cathode and a metal anode, which Tanahashi
indicates causes cations in the drinking water to be adsorbed on the
electrically conductive material of the ion-adsorbing cathode, and causes
hydrogen ions (H+) and oxygen gas to be generated at the surface of the
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metal anode, resulting in the drinking water becoming acidic. Tanahashi
¶ 52.
As indicated above, Appellant argues that the mechanism of operation
of Tanahashi’s device differs from that of the device of claim 11 because
Tanahashi’s mechanism of operation “may be characterized as an acidic
regulation technique for drinking water” that generates “additional hydrogen
ions (H+) in the drinking water leading to a pH decrease.” As discussed
above, however, the mechanism of operation of the device of claim 11 as
explicitly recited in the claim and described in Appellant’s Specification also
generates additional hydrogen ions (H+) in water being treated, leading to a
decrease in the pH of the water. Thus, rather than distinguishing the
mechanism of operation of Tanahashi’s device from the mechanism of
operation of the device of claim 11, Appellant’s arguments show that the
two devices both operate according to the same mechanism. Appellant’s
arguments, consequently, do not identify error in the Examiner’s finding that
Tanahashi’s device modified as suggested by Rosenblum to include a
ruthenium dioxide anode (as discussed more fully below) is configured to
prepare a pH-adjusted aqueous solution as recited in claim 11.
Next, Appellant argues that Rosenblum “fails to describe, teach or
suggest an electrode pairing of a pseudocapacitance material and a metal
oxide [and] Rosenblum teaches away from the use of metal oxide by . . .
stating a metal oxide capable of absorbing hydrogen should not be used as a
cathode in an electrolytic cell.” Appeal Br. 15 (citing Rosenblum ¶ 72)
(emphasis omitted).
As discussed above, however, it is undisputed on this appeal record
that Tanahashi—rather than Rosenblum—discloses a device for regulating
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the pH of drinking water that includes a cathode formed of an ion-adsorbing
material, which corresponds to a cathode comprising a pseudocapacitance
material as recited in claim 11. As also discussed above, Tanahashi
discloses that Tanahashi’s device includes a metal anode, and Tanahashi
indicates that suitable materials for forming the anode include metals that
facilitate the electrolysis of water, such as platinum.
Rosenblum’s disclosure that platinum and ruthenium dioxide are both
suitable materials for forming anodes for the electrolysis of water would
have indicated to one of ordinary skill in the art that both materials could be
used interchangeably to form such anodes. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (An obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for [an examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”); see also In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (In assessing the content of the
applied prior art, “it is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”). This understanding in the art,
coupled with Rosenblum’s disclosure that ruthenium oxides yield “very
good” anodes for the electrolysis of water, would have led one of ordinary
skill in the art to substitute a ruthenium oxide, such as ruthenium dioxide as
disclosed in Rosenblum, for the platinum disclosed in Tanahashi for forming
Tanahashi’s metal anode, resulting in a device including a cathode
comprising an ion-adsorbing material (pseudocapacitance material) and an
anode comprising ruthenium oxide (metal oxide), as recited in claim 11. In
re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute
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one equivalent for another need not be present to render such substitution
obvious.”); see also KSR, 550 U.S. at 416 (“[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”).
Although, as discussed above, Appellant argues that Rosenblum
“teaches away from the use of metal oxide” by disclosing that a metal oxide
capable of absorbing hydrogen should not be used as a cathode in an
electrolytic cell, the paragraph of Rosenblum cited by Appellant for this
disclosure explicitly mentions numerous metals and metal oxides that should
be avoided as cathode materials, but makes no mention of ruthenium oxides,
and does not describe any disadvantages associated with the use of
ruthenium oxides as anode materials. Rosenblum ¶ 72. Thus, the cited
paragraph of Rosenblum does not negate Rosenblum’s explicit disclosure
that ruthenium oxides yield “very good” anodes for the electrolysis of water.
Contrary to Appellant’s arguments, Rosenblum, therefore, does not teach
away from using ruthenium oxides as an anode material for the electrolysis
of water.
Finally, Appellant argues that any modification of Tanahashi’s
operating principle in view of Rosenblum to that of the operating principle
of the pH adjustor of claim 11 would improperly change the operating
principle of Tanahashi’s device. Appeal Br. 15.
As discussed above, however, Tanahashi’s device for regulating pH
uses the same mechanism of operation (or operating principle) as the pH
adjustor recited in claim 11. As also discussed above, the Examiner’s
proposed modification of Tanahashi in view of the relied-upon disclosures in
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Rosenblum does not involve modifying the operating principle of
Tanahashi’s device. Rather, the proposed modification involves using
ruthenium dioxide as disclosed in Rosenblum to form Tanahashi’s metal
anode. Appellant’s conclusory argument does not identify any error in the
Examiner’s factual findings, reasoning, or conclusion of obviousness.
We, accordingly, sustain the Examiner’s rejection of claims 11 and
16–19 under 35 U.S.C. § 103(a) as unpatentable over Tanahashi in view of
Rosenblum.
Rejections II–IV
Appellant argues that the claims subject to these rejections (claims 12
and 20–24) under 35 U.S.C. § 103(a) are patentable over the applied prior
art references for the same reasons Appellant presents for claim 11
(discussed above) because, Appellant argues, the additional references
applied in these rejections (Nakamura, Kuo, Chang, and Xie) fail to cure the
deficiencies of Tanahashi and Roenblum. Appeal Br. 16–20. Appellant also
repeats the argument that Appellant presents for claim 11 that any
modification of Tanahashi’s operating principle in view of the additional
prior art references to that of the operating principle of Appellant’s claimed
device would improperly change the operating principle of Tanahashi’s
device. Appeal Br. 18, 20.
Because Appellant’s arguments do not identify reversible error in the
Examiner’s rejection of claim 11 for the reasons discussed above,
Appellant’s arguments also do not identify reversible error in Examiner’s
rejections of claims 12 and 20–24 under 35 U.S.C. § 103(a), which we
accordingly sustain.

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CONCLUSION

Claims
Rejected

35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11, 16–19 103(a) Tanahashi,
Rosenblum
11, 16–
19

12 103(a) Tanahashi,
Rosenblum,
Nakamura
12
20–22 103(a) Tanahashi,
Rosenblum, Kuo
20–22
23, 24 103(a) Tanahashi,
Rosenblum,
Chang, Xie
23, 24
Overall
Outcome
11, 12,
16–24

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