Tarkeshwar Chandrakant. Patil

Patent Trials and Appeals Board

Apr 2, 2020

14280341 - (D) (P.T.A.B. Apr. 2, 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.
14/280,341 05/16/2014 Tarkeshwar Chandrakant Patil 1246
149655 7590 04/02/2020
Dr Tarkeshwar Patil
A 101 Jagruti Society
Next to Abhishek Nursing Home
Bhatwadi Ghatkopar West
Mumbai, Maharashtra, 400084
INDIA
EXAMINER
DOUYETTE, KENNETH J
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
tarkeshwarcpatil@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TARKESHWAR CHANDRAKANT PATIL
____________________

Appeal 2018-003249
Application 14/280,341
Technology Center 1700
____________________

Before GEORGE C. BEST, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
March 20, 2017 decision rejecting claims 1 and 3–16 (“Non-Final Act.”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Dr. Tarkeshwar Chandrakant Patil as
the real party in interest (Appeal Br. 2).
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Application 14/280,341

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to an apparatus for in-vivo power
generation which includes a fuel generator arranged to produce a hydrogen
rich liquid fuel from a liquid flowing through the fuel generator (Spec. 2).
The fuel generator is a low carbon fuel converter which produces the
hydrogen rich liquid by the action of a bioenzyme on glucose in the liquid
(id.). The apparatus further includes a biofuel cell fluidically connected to
the fuel generator which is used to generate electricity (id.). The apparatus
is said to be useful for generating electrical power inside a human body to
power implants in the body (Spec. 1). Details of the claimed apparatus are
set forth in claim 1, which is reproduced below from the Claims Appendix to
the Appeal Brief (emphasis added):
1. An apparatus for in-vivo power generation comprising:
a fuel generator arranged to produce a hydrogen rich
liquid fuel from a liquid flowing through the fuel generator,
wherein the fuel generator is a low carbon fuel convertor which
is configured to receive the liquid and produce the hydrogen
rich liquid fuel by the action of a bioenzyme on glucose in the
liquid; and
a biofuel cell fluidically coupled to the fuel generator, the
biofuel cell including a first chamber and a second chamber
separated by a membrane assembly, wherein the membrane
assembly comprises a first electrode having a catalyst for
enabling extraction of oxygen from the liquid, a second
electrode, and a membrane, the liquid being configured to flow
through the first chamber, and wherein the second chamber is
arranged to receive the hydrogen rich liquid fuel from the fuel
generator,
wherein, when in use, electrical power is generated when
the oxygen from the first chamber and hydrogen in the
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hydrogen rich liquid fuel from the second chamber combine
reactively.
REJECTIONS
1. Claims 1, 3, 5–7, 11, and 15 are rejected under 35 U.S.C. § 103
as unpatentable over Heller2 in view of Creeth,3 and further in view of
Zhang 1.4
2. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
Heller in view of Creeth and Zhang 1, and further in view of Conn.5
3. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Heller in view of Creeth and Zhang 1, and further in view of Curello.6
4. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
Heller in view of Creeth and Zhang 1, and further in view of Miller. 7
5. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over Heller in view of Creeth and Zhang 1, and further in view of Jin.8
6. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable
over Heller in view of Creeth and Zhang 1, and further in view of Zhang 2.9

2 Heller et al., US 2008/0044721 A1, published February 21, 2008.
3 Creeth, US 2008/0274385 A1, published November 6, 2008.
4 Zhang et al., US 2007/0264534 A1, published November 15, 2007.
5 Conn et al., US 6,561,978 B1, issued May 13, 2003.
6 Curello et al., US 2011/0121220 A1, published May 26, 2011.
7 W. Lash Miller, The New Requirements in Chemistry 42 (University of
Toronto 1905).
8 Jin et al., US 2006/0057388 A1, published March 16, 2006.
9 Zhang et al., US 2009/0297913 A1, published December 3, 2009.
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7. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Heller in view of Creeth and Zhang 1, and further in view
of Kabumoto.10
8. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable
over Heller in view of Creeth and Zhang 1, and further in view of Aleyraz.11
DISCUSSION
Rejection 1. The Examiner finds that Heller discloses an apparatus
for in-vivo power generation which comprises a biofuel cell including first
and second electrodes separated by a membrane assembly (Non-Final Act.
2–3). The Examiner further finds that the first electrode comprises a catalyst
for extracting oxygen from the fluid (id. at 3). The Examiner also finds that
Heller does not explicitly disclose that the first and second electrodes are
chambers through which fluid flows and also does not explicitly teach that
its structure is fluidly coupled to a fuel generator (id.). The Examiner relies
on Creeth as teaching a fluidic connection between a fuel cell and a device
for generating a hydrogen rich fuel gas as well as chambers serving as
electrodes and determines that it would have been obvious to incorporate the
multiple chamber structure fluidly connected to the fuel generator/reformer
disclosed by Creeth into the structure of Heller to enhance the efficiency of
the fuel cell structure as well as to allow the produced hydrogen rich fuel to
flow directly to the fuel cell (id. at 3–4).
The Examiner also finds that Heller does not explicitly disclose a fuel
generator arranged to produce a hydrogen rich fuel from a liquid flowing

10 Kabumoto et al., US 2007/0190394 A1, published August 16, 2007.
11 Aleyraz et al., US 2008/0002472 A1, published January 3, 2008.
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through a fuel generator, where the fuel generator is a low carbon fuel
converter which is configured to receive the liquid and produce the hydrogen
rich fuel by the action of a bioenzyme on glucose in the liquid (Non-Final
Act. 4). The Examiner further finds that Zhang 1 discloses a hydrogen
generator which uses a liquid including glucose and an enzyme to generate
hydrogen, which is then supplied to a fuel cell (id.). The Examiner
determines that it would have been obvious to incorporate an electrolytic
electrode generating hydrogen utilizing enzymes as disclosed by Zhang 1
into Heller’s structure to produce a high yield of hydrogen (id.).
(1) Appellant states that Heller discloses “the basic structure of a
PEM Fuel Cell and claimed in 100s of patents issued by USPTO and other
patenting bodies worldwide even before the application of Heller[], thus this
rejection cannot be relied upon to teach a fuel cell structure” (Appeal Br. 9).
While the exact error that Appellant seeks to point out with this statement is
not precisely clear, we agree with the Examiner (Ans. 13) that any piece of
prior art, not simply the oldest one, may be relied on in making a rejection
under § 103. Thus, this argument does not show reversible error in the
rejection.
(2) Appellant argues that Heller fails to disclose or “mention []flow
plates, i.e. in our case the first chamber 25 and a second chamber 30 as seen
in Fig. 2 which are not the electrodes anode and cathode as [recited by the
Examiner in the Non-Final Act.], whereas in Heller[] the fuel is directly
flown to the electrodes . . . thus this rejection cannot be relied upon to teach
a fuel cell structure” (Appeal Br. 10). However, as noted by the Examiner
(Ans. 14), the claims do not recite flow plates. Accordingly, the argument
regarding flow plates does not demonstrate reversible error in the rejection.
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(3) Appellant argues that Heller does not disclose the claimed first and
second chambers separated by a membrane because the geometry disclosed
by Heller is planar, and not in the form of a chamber (Appeal Br. 10). This
argument is not persuasive because, as explained by the Examiner, the
rejection does not rely on Heller as teaching the claimed chambers. Instead,
the Examiner cites Creeth as disclosing the chambers, and explains why it
would have been obvious to incorporate them into Heller’s system (Non-
Final Act. 3–4). Thus, the essence of this argument is that Appellant is
attacking Heller individually. However, it is well established that one
cannot show nonobviousness by attacking references individually when, as
in the present instance, the rejection is based on a combination of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
(4) Appellant argues that Heller’s device is of a millimeter to sub-
millimeter scale, while the claimed device is on a nanometer scale (Appeal
Br. 11). However, again as noted by the Examiner (Ans. 17), claim 1 is not
limited to a device on a nanometer scale. Accordingly, this argument is not
persuasive of reversible error. The rejection is reviewed against the scope of
the claims, not against unclaimed limitations.
(5) Appellant argues, generally, that the Examiner has not established
an adequate reason for combining the teachings of Heller and Creeth as
needed for the rejection (Appeal Br. 11–12). It is axiomatic that in order to
make out a rejection for obviousness, the Examiner must provide reasoning
to support the combination or modification underlying an obviousness
rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(making clear that “rejections on obviousness grounds cannot be sustained
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by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In this instance, the Examiner finds that it would have been obvious to
incorporate the multiple chamber structure fluidly connected to the fuel
generator/reformer disclosed by Creeth into the structure of Heller to
enhance the efficiency of the fuel cell structure as well as to allow the
produced hydrogen rich fuel to flow directly to the fuel cell. Appellant has
not directly disputed this finding and, therefore, has not demonstrated
reversible error in it.
(6) Appellant also argues that the Examiner has not explained “what
prevented both Heller[] and Creeth, persons of extraordinary skill in the art,
from making or suggesting” the claimed apparatus (Appeal Br. 12).
However, as noted above, the Examiner’s obligation in making the rejection
was to explain why a person of ordinary skill in the art would have
combined the teachings of the references so as to arrive at the claimed
invention. The Examiner was not obligated to provide an explanation of
why Heller and/or Creeth did not make that combination. Thus, this
argument also fails to demonstrate reversible error in the rejection of claim
1.
(7) Appellant argues that Zhang 1, which the Examiner relies on to
teach the production of a “hydrogen rich fuel” (Non-Final Act. 4), in fact
only discloses the production of hydrogen (Appeal Br. 13). Appellant’s
argument is persuasive. Zhang 1 explicitly teaches that its method is used to
produce “hydrogen” (Zhang 1, ¶¶ 19, 33). The Specification of the
application on appeal, by contrast, describes a “hydrogen rich fuel” as being
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either methanol or ethanol (Spec. 5). It is apparent that a hydrogen rich fuel,
which is required by claim 1, is different from hydrogen. While the
Examiner is correct in stating that limitations from the Specification are not
read into the claims, the term “hydrogen rich fuel” is interpreted in light of
the Specification, which makes clear that it is not “hydrogen.” Thus,
Appellant has shown error in the Examiner’s finding that Zhang discloses
the production of a “hydrogen rich fuel.”
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988); KSR, 550 U.S. at 417. In the absence of a proper
prima facie case of obviousness, an applicant who complies with the other
statutory requirements is entitled to a patent. In re Rouffet, 149 F.3d 1350,
1355 (Fed. Cir. 1998); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). In this instance, the rejection set forth by the Examiner does not
show the inclusion of “a fuel generator arranged to produce a hydrogen rich
liquid fuel from a liquid flowing through the fuel generator, wherein the fuel
generator is a low carbon fuel convertor which is configured to receive the
liquid and produce the hydrogen rich liquid fuel by the action of a
bioenzyme on glucose in the liquid.” Accordingly, Appellant has
demonstrated reversible error in the rejection of claim 1.
Because the remaining claims on appeal depend from claim 1, and the
additional references do not cure the deficiency outlined above, we also
reverse the rejections of the remaining claims.
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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § References(s)/
Basis
Affirmed Reversed
1, 3, 5–7, 11, 15 103 Heller, Creeth,
Zhang 1
1, 3, 5–7, 11,
15
4 103 Heller, Creeth,
Zhang 1, Conn
4
8 103 Heller, Creeth,
Zhang 1, Curello
8
9 103 Heller, Creeth,
Zhang 1, Miller
9
10 103 Heller, Creeth,
Zhang 1, Jin
10
12 103 Heller, Creeth,
Zhang 1, Zhang 2
12
13, 14 103 Heller, Creeth,
Zhang 1,
Kabumoto
13, 14
16 103 Heller, Creeth,
Zhang 1, Aleyraz
16
Overall
Outcome
1, 3–16

REVERSED