Suss, Matthew et al.

Patent Trials and Appeals Board

Oct 22, 2019

14024540 - (D) (P.T.A.B. Oct. 22, 2019)

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.
14/024,540 09/11/2013 Matthew Suss IL-12649 2158
24981 7590 10/22/2019
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
LEONG, JONATHAN G
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
10/22/2019 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW SUSS, THEODORE F. BAUMANN,
FRANCESCO FORNASIERO, MICHAEL STADERMANN, and
JUAN G. SANTIAGO
____________

Appeal 2019-001339
Application 14/024,540
Technology Center 1700
____________

Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
Patent Judge, DONNA M. PRAISS, and JEFFREY R. SNAY,
Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3 and 6–10. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). We AFFIRM.

1 Our Decision refers to the Specification (“Spec.”) filed Sept. 11, 2013, the
Examiner’s Final Office Action (“Final Act.”) dated July 23, 2018,
Appellant’s Appeal Brief (“Appeal Br.”) filed Aug. 6, 2018, the Examiner’s
Answer (“Ans.”) dated Oct. 26, 2018, and Appellant’s Reply Brief (“Reply
Br.”) filed Nov. 29, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Lawrence Livermore National
Security, LLC and the United States of America, as represented by the
United States Department of Energy, as the real parties in interest. Appeal
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STATEMENT OF THE CASE
The invention “relates to energy harvesting and more particularly to
energy harvesting with flow-through porous electrodes.” Spec. ¶ 2.
According to the Specification, conventional devices use flow-between
electrodes, which results in diffusion-limited performance. Id. ¶ 3.
Conversely, the Specification discloses the use of flow-through electrodes
that remove diffusion limitations and enable significant performance
enhancements, such as a much higher power output than prior art flow-
between systems. Id. ¶¶ 3, 6, 22.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative.
1. An energy harvesting apparatus utilizing a river that
contains fresh water and a sea that contains salt water,
comprising:
a river water intake, said river water intake located on the
river wherein said river water intake intakes the fresh water
contained in the river;
a sea water intake, said sea water intake located on the sea
wherein said sea water intake intakes the salt water contained in
the sea;
a first porous electrode having first pores wherein said first
porous electrode is a first monolithic porous electrode;
a second porous electrode having second pores wherein
said second porous electrode is a second monolithic porous
electrode;
a non-conducting permeable separator between said first
porous electrode and said second porous electrode;

Br. 2. We note that inventor Juan G. Santiago executed an assignment to The
Board of Trustees of the Leland Stanford Junior University. Assignment
recorded Dec. 11, 2013, Reel 031671 / Frame 0458.
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an electrical potential system for applying an electric
potential difference between said first porous electrode, and said
second porous electrode;
a fresh water line connected to said river water intake and
connected to said first porous electrode having first pores;
a salt water line connected to said sea water intake on the
sea and connected to said first porous electrode having first
pores; and
an alternately connecting valve connected to said fresh
water line and connected to said salt water line,
wherein said alternately connecting valve is operatively
connected to said river water intake on the river by said fresh
water line and provides the fresh water for flowing the fresh
water from said river water intake through said first porous
electrode having first pores, through said non-conducting
permeable separator, and through said second porous electrode
having second pores, and
wherein said alternately connecting valve is operatively
connecting to said sea water intake on the sea by said salt water
line and provides the salt water for flowing the salt water from
said sea water intake through said first porous electrode having
first pores, through said non-conducting permeable separator,
and through said second porous electrode having second pores,
wherein the fresh water and the salt water flow through
said first porous electrode having first pores, said second porous
electrode having second pores, and said non-conducting
permeable separator with said electrical potential system
applying an electric potential difference between said first porous
electrode, and said second porous electrode thereby harvesting
energy from the fresh water and the salt water.

Independent claim 10 recites “[a]n energy harvesting apparatus
utilizing a river that contains fresh water and a sea that contains salt water,”
comprising, among other things, a river water intake, a sea water intake, a
first porous electrode, a second porous electrode, a non-conducting
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permeable separator, an electrical potential system, a fresh water line, a salt
water line, and a valve. Each remaining claim on appeal depends from
claim 1.
ANALYSIS
We review the appealed rejection for error based upon the issues
Appellant identifies, in light of the arguments and evidence produced
thereon. 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)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of reversible error in the
Examiner’s rejection.
The Examiner rejects claims 1–3 and 6–10 under 35 U.S.C. § 103 as
unpatentable over Suss3 in view of Brogioli4 and Appellant’s Admitted Prior
Art 5 for the reasons provided on pages 3–8 of the Examiner’s Answer.
Appellant argues the claims together. Appeal Br. 7–28. Therefore, we
confine our discussion to claim 1, which we select as representative. Claims
2, 3, and 6–10 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

3 Matthew E. Suss et al., Capacitive desalination with flow-through
electrodes, 5 Energy & Envtl. Sci. 9511 (2012) (“Suss”).
4 Doriano Brogioli, Extracting Renewable Energy from a Salinity Difference
Using a Capacitor, 103 Physical Rev. Letters 058501 (2009) (“Brogioli”).
5 The Examiner identifies Appellant’s Figure 1 and paragraphs 20 and 21 of
the Specification as admitted prior art (“Appellant’s Admitted Prior Art”).
Ans. 3.
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The Examiner finds Suss discloses a first porous electrode, a second
porous electrode, a non-conducting permeable separator, and an electrical
potential system. Ans. 3–4. The Examiner finds Suss’s system flows water
through the first porous electrode, through the separator, and through the
second porous electrode. Id. at 4. The Examiner finds Suss does not disclose
a river water intake, a sea water intake, a fresh water line, a salt water line,
or an alternating connecting valve connected to the fresh water and salt
water lines so, among other things, fresh water and salt water can flow
through the first and second electrodes and separator, as claim 1 recites. Id.
at 4–5.
The Examiner finds Brogioli discloses harvesting renewable energy
from fresh water and salt water via a capacitor that is analogous to capacitive
desalination devices. Id. at 5. According to the Examiner, Brogioli’s device
includes an intake for fresh water, such as river water, an intake for salt
water, such as sea water, a fresh water line connected to the fresh water
intake, and a salt water line connected to the salt water intake. Id. The
Examiner concludes it would have been obvious to modify Suss’s device to
include a fresh water intake, a sea water intake, a fresh water line, and a sea
water line so Suss’s device can harvest the renewable energy rivers and seas
provide, as Brogioli teaches. Id. at 6. The Examiner notes that because
Brogioli teaches river water as a fresh water source and sea water as a salt
water source, it would have been obvious for one of ordinary skill in the art
to obtain fresh water from a river and salt water from the sea by locating the
respective intakes on a river and a sea. Id.
The Examiner finds Suss in view of Brogioli provides individual
pumps for fresh water and sea water lines instead of an alternately
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connecting valve, as claim 1 recites. Id. at 7. However, the Examiner finds
Appellant’s Admitted Prior Art, specifically Figure 1 and paragraphs 20 and
21 of the Specification, which describe Figure 1, demonstrates that such a
valve was known. Id. The Examiner concludes it would have been obvious
to one of ordinary skill in the art to use the alternately connecting valve
instead of Brogioli’s pumps as an alternative method for providing fresh
water and salt water. Id.
The Examiner further finds the limitations “located on the river,”
“located on the sea,” “for flowing the fresh water,” “for flowing the salt
water,” regard intended uses (i.e., locations for intakes and uses for the
valve) that Suss, as modified in view of Brogioli and Appellant’s Admitted
Prior Art, is capable of performing. Id. at 7–8.
Appellant contends the applied references do not teach or suggest the
river water intake, fresh water line, sea water intake, or sea water line of
claim 1 because Suss and Appellant’s Admitted Prior Art do not disclose
these limitations, Brogioli’s Figure 3(a) shows only water reservoirs, and
Brogioli in general does not teach or suggest these limitations. Appeal Br.
10–15, 20, 22–27; Reply Br. 3–4.
The test for obviousness is “whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention.” In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Here, the Examiner correctly
finds that Brogioli discloses river water and sea water as sources and the
reservoirs depicted in Brogioli’s Figure 3(a) each include an intake, pump,
and line (e.g., the tube leading from the intake opening within a reservoir to
the pump for the reservoir). Ans. 9–10 (citing Brogioli Abstract, Figs. 1,
3(a)). Brogioli’s Figure 1 identifies a low salinity water reservoir and a high
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salinity water reservoir. Brogioli Fig. 1. Brogioli further explains that the
different salt concentrations of the two water reservoirs represent salt and
fresh water. Id. at 058501-1. Therefore, Brogioli, when considered as a
whole, suggests using river water and sea water sources for a device which
includes an intake and line for each water source type.
Appellant asserts the applied references do not teach or suggest the
alternately connecting valve of claim 1 because “there is no question or
argument that the Suss reference and the [Appellant’s Admitted Prior Art]
AAA reference lack” this limitation, “[t]he Final Rejection does not have
any portion that make[s] such an argument,” and Brogioli lacks the valve.
Appeal Br. 16–17; Reply Br. 5–6. These arguments do not address the
Examiner’s rejection. As noted above, the Examiner finds Appellant’s
Admitted Prior Art discloses the alternately connecting valve of claim 1.
Ans. 6. Appellant’s Figure 1, which is labeled “Prior Art,” includes valve
116 connected to fresh water source 112 and salt water source 114. The
Specification explains prior art valve 116 switches between sources 112, 114
to provide alternating portions of fresh water and salt water to gap 108
between electrodes 102, 104. Spec. ¶ 20. The Examiner concludes it would
have been obvious to use the alternately connecting valve instead of
Brogioli’s pumps as an alternative method for providing fresh water and salt
water. Ans. 7, 10–11. Such a rationale relies on the well-established
principle that, for an improvement to be patentable, it must be more than the
predictable use of prior art elements according to their established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant also argues the applied references do not teach or suggest
the electrical potential system of claim 1. Appeal Br. 17–18. Appellant’s
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argument, however, merely recites the limitations of claim 1 regarding the
electrical potential system with a generic denial that the applied references
teach or suggest the limitations. Id. We and our reviewing court have long
held that such “argument” does not merit separate consideration. See, e.g., In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
In addition, Appellant contends the proposed combination “would not
produce an energy harvesting apparatus that could provide a commercially
viable continuous and uninterrupted supply of energy” because Brogioli’s
device “is strictly a laboratory experimental set up that could not possibly
provide a commercially viable energy harvesting apparatus that would
produce a continuous and uninterrupted supply of energy.” Appeal Br. 18–
19. These arguments fail from the outset because they are not based on
limitations set forth in the claims. In re Self, 671 F.2d 1344, 1348 (CCPA
1982). Claim 1 recites “[a]n energy harvesting apparatus” without limitation
as to the amount of energy provided or whether the energy supplied is
continuous. Moreover, Brogioli discloses the applicability of its device to
exploit the flow of fresh water and salt water, like river water and sea water,
based on the salinity difference as a completely renewable energy source.
Brogioli 058501-1. Appellant has not provided persuasive evidence of a
patentable difference in structure between the apparatus of claim 1 and that
the prior art suggests.
Appellant argues there would not have been a reasonable expectation
of success for Brogioli’s device to provide an energy supply based on
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Brogioli’s experimental laboratory set up. Appeal Br. 20. However, as the
Examiner explains, Brogioli’s device extracts renewable energy from the
flows of fresh water and salt water. Ans. 12; Brogioli Abstract. Appellant’s
arguments are insufficient to demonstrate a lack of reasonable expectation
that Brogioli’s device would have succeeded in supplying energy.
Appellant argues there would not have been a reasonable expectation
of success because the applied references “are differing systems with
different interconnected components,” noting the structures shown in
drawings of each reference. Appeal Br. 19–20. Appellant contends that the
Examiner has not provided valid reasons for combining the references
because Suss is not directed to an energy harvesting apparatus, Appellant’s
Admitted Prior Art does not mention energy, and Brogioli is strictly an
experimental laboratory set up that could not have reasonably provided an
expectation of success for providing a supply of energy. Appeal Br. 21–22;
Reply Br. 2–3.
These arguments are unpersuasive. The record supports the
Examiner’s finding (Ans. 6, 10, 12) that Brogioli teaches that its device is
analogous in structure to capacitive desalination devices (e.g., Suss’s device)
and differs mainly in operation. Suss discloses a capacitive desalination
device. Suss Title, 9511. Brogioli discloses a device for extracting renewable
energy from water solutions of different salinity (e.g., river water and salt
water). Brogioli Abstract. Brogioli states “[t]he device described in this
Letter bears analogies also with the ‘capacitive desalination’ devices [13], in
which electric energy is consumed, in order to remove salt ions from sea
water” and “[a]ctually, the process reported here can be thought of as the
reverse of capacitive desalination.” Id. at 058501-2.
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In other words, Brogioli not only teaches that its energy harvesting
device and capacitive desalination devices (e.g., Suss’s device) are
analogous, but that the operation of capacitive desalination devices is
essentially the reverse of harvesting energy from salt water and fresh water
sources (i.e., the function of Brogioli’s device). As a result, Brogioli’s
teachings would have provided a reasonable expectation of success that
Suss’s device as modified in view of Brogioli would have been capable of
generating power. As noted above, the Examiner concludes it would have
been obvious to modify Suss in view of Brogioli to provide an energy
harvesting apparatus that extracts renewable energy from fresh water and sea
water. Ans. 6, 12. Thus, the Examiner has “articulated reasoning with some
rational underpinning” (i.e., Brogioli’s teachings regarding the relationship
between capacitive desalination devices and energy harvesting devices) to
support the Examiner’s legal conclusion of obviousness. KSR, 550 U.S. at
418.
In view of the above, Appellant’s arguments do not identify a
reversible error in the Examiner’s § 103 rejection of claim 1 over Suss,
Brogioli, and Appellant’s Admitted Prior Art.
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–3 and 6–10 under 35 U.S.C. § 103 as
obvious over Suss, Brogioli, and Appellant’s Admitted Prior Art.
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).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–3, 6–10 103
Suss, Brogioli,
Appellant’s
Admitted Prior Art
1–3, 6–10

AFFIRMED