UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Aug 28, 2020

14768622 - (D) (P.T.A.B. Aug. 28, 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.
14/768,622 08/18/2015 Andrew Smeltz 61184US01;
67007-029PUS1
1043
26096 7590 08/28/2020
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
SLIFKA, SARAH A
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
08/28/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREW SMELTZ, ROBERT MASON DARLING,
MICHAEL L. PERRY, and ZHONGFEN DING
____________________

Appeal 2019-006416
Application 14/768,622
Technology Center 1700
____________________

Before N. WHITNEY WILSON, JULIA HEANEY 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
December 17, 2018 decision finally rejecting claims 1–7 and 19–23 (“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 United Technologies Corporation, as
the real party in interest (Appeal Br. 1).
Appeal 2019-006416
Application 14/768,622

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a flow battery which includes a cell
that has first and second flow fields spaced apart from each other and an
electrolyte separator layer (Abstract). A supply/storage system is external to
the cell and includes first and second vessels fluidly connected with the first
and second flow fields, and first and second pumps configured to move first
and second fluid electrolytes between the vessels and the first and second
flow fields (id.). The flow fields each have an electrochemically active zone
that has a total open volume that is a function of at least one of a power
parameter of the flow battery, a time parameter of the pumps and a
concentration parameter of the fluid electrolytes (id.).
Details of the claimed invention are set forth in representative claim 1,
which is reproduced below from the Claims Appendix to the Appeal Brief:
1. A flow battery comprising:
at least one cell having first and second flow fields spaced
apart from each other, and an electrolyte separator layer arranged
there between; and
a supply/storage system external of the at least one cell, the
supply/storage system including first and second vessels fluidly
connected with the respective first and second flow fields, and
first and second pumps configured to selectively move first and
second fluid electrolytes between the first and second vessels and
the first and second flow fields,
wherein the first and second flow fields each have an
electrochemically active zone configured to receive flow of the
respective first and second fluid electrolytes, the
electrochemically active zone having a total open volume that is
a function of at least one of a power parameter of the flow
battery, a time parameter of the respective first and second pumps
and a concentration parameter of the respective first and second
fluid electrolytes,
Appeal 2019-006416
Application 14/768,622

3
wherein the power parameter is a maximum rated power of
the flow battery, the time parameter is the time in seconds for the
first and second pumps to achieve full flow of the first and
second fluid electrolytes from a low-flow state, and the
concentration parameter is a concentration of at least one
electrochemically active species in the first and second fluid
electrolytes.

REJECTION
1–7 and 19–23 are rejected under 35 U.S.C. § 102(a) as anticipated by
Liu.2
DISCUSSION
“A prior art reference anticipates a patent claim under 35 U.S.C.
§ 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d
1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet
Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). In this instance, with
regards to claim 1, Appellant argues that Liu does not disclose the claimed
“‘electrochemically active zone having a total open volume that is a function
of at least one of a power parameter of the flow battery’” (Appeal Br. 3).
The Examiner finds that Liu explicitly discloses a flow battery with
each of the structural features listed in the first two paragraphs of claim 1, as
well as the “electrochemically active zone configured to receive flow of the
respective first and second fluid electrolytes” (Final Act. 2–3, citing Liu,
FIGS. 3, 4, ¶¶ 7, 20, 32, 34–36). The Examiner further finds that limitation
relating to the “electrochemically active zone having an open volume that is
a function of at least one of a power parameter of the flow battery” is met by

2 Liu et al., US 2013/0022846 A1, published January 24, 2013.
Appeal 2019-006416
Application 14/768,622

4
Liu because “[g]iven the structural similarities of the instant claim and the
battery of Liu, it is recognized that the battery of Liu can inherently operate
as claimed” (Final Act. 3). The Examiner also finds that:
It is considered that the total open volume, meaning the unfilled volume
of the grooved channels, prior to operation is necessarily a function of at
least one of the parameters claimed. Although, the Examiner maintains
that the other alternatives, power and concentration, are similarly a
function of the total open volume during operation, for simplification's
sake, the Board is reminded that only one claimed parameter (see listed
above) is required thus let's consider the parameter of time of the flow
pumps as an example.

As shown in the figure above, when time is 0 seconds, there is no flow
into the channel. When time is 0+X seconds, electrolyte flows into the
channel via the pump until full. As a result of time passing the total open
volume decreases (function of time) as electrolyte occupies open volume
and allows for ions to move and perform the battery functions. Therefore,
the amount of open volume is a function of at least time and therefore
reads on at least instant claim 1.
(Ans. 6–7).
The Examiner’s analysis is flawed, however, generally for the reasons
set forth by Appellant (Reply Br. 2). In particular, the Examiner’s reasoning
does not consider the language in the final paragraph of claim 1, which
recites the specific parameters which may be used to determine the total
open volume described in the third paragraph of the claim:
wherein the power parameter is a maximum rated power of the
flow battery, the time parameter is the time in seconds for the
Appeal 2019-006416
Application 14/768,622

5
first and second pumps to achieve full flow of the first and
second fluid electrolytes from a low-flow state, and the
concentration parameter is a concentration of at least one
electrochemically active species in the first and second fluid
electrolytes.
(Claim 1, emphasis added).3
Thus, the claim requires that the total open volume of the flow battery
be a function of at least one of three specific power parameters. The
Examiner’s finding that “the amount of open volume is a function of at least
time” (Ans. 6) does not address claim 1’s requirement that “the time
parameter is the time in seconds for the first and second pumps to achieve
full flow of the first and second fluid electrolytes from a low-flow state.”
The Examiner does not find that this structural feature of the battery4 is
explicitly disclosed by Liu. Nor does the Examiner’s example, illustrated
above, demonstrate that the claimed time parameter is inherently met by
Liu’s battery. The Examiner’s example demonstrates how Liu’s total open
volume could be a function of a different time parameter.
Accordingly, the Examiner has not demonstrated that the total open
volume of Liu’s battery is a function of a property which is “necessarily
present” in Liu’s battery. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d
1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing
descriptive material is ‘necessarily present,’ not merely probably or possibly

3 This claim language is consistent with and supported by the Specification
(Spec. ¶¶ 5–7).
4 It is a structural feature because the total open volume is specifically tied to
specific parameters of the battery (Spec. ¶¶ 5–7).
Appeal 2019-006416
Application 14/768,622

6
present, in the prior art.” (quoting In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999)).
Appellant has demonstrated reversible error in the anticipation
rejection over Liu.

CONCLUSION

In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 19–23 102(a) Liu 1–7, 19–23

REVERSED