Ex Parte Ahmed et al

Patent Trial and Appeal Board

Nov 16, 2016

13176523 (P.T.A.B. Nov. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/176,523 07/05/2011
28524 7590 11/18/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Osman Ahmed
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011Pl3578US 4735
EXAMINER
RAPHAEL, COLLEEN M
ART UNIT PAPER NUMBER
1756
NOTIFICATION DATE DELIVERY MODE
11/18/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSMAN AHMED, MAXIMILIAN FLEISCHER,
BEATE SCHLAGETER, and HEINRICH ZEININGER
Appeal2015-006725
Application 13/176,523
Technology Center 1700
Before BEYERL YA. FRANKLIN, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-24, 27-32, and 35--42. We have jurisdiction. 35
U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is Siemens
Aktiengesellschaft. Appeal Br. 3.
Appeal2015-006725
Application 13/176,523
STATEMENT OF THE CASE
Appellants describe the invention as relating to a panel for converting
atmospheric gas into an output product via a photosynthesis reaction.
Appeal Br. 4. For example, carbon dioxide could be converted into
methanol, carbon monoxide, or other hydrocarbons. Spec. iii! 24, 28. Claim
1, reproduced below with emphasis added to certain key recitations, is
illustrative of the claimed subject matter:
1. A photocatalytic panel comprising:
a housing having a plurality of walls defining a chamber
and an outlet in communication with said chamber, at least one
wall having a portion that is transmissive to sunlight;
a photo-conversion element disposed within said chamber,
wherein upon exposure to sunlight, said photo-conversion
element converts an atmospheric gas into an output product
dischargeable through said outlet; and
at least one of said plurality of walls includes a
permeable portion having a high permeability to the
atmospheric gas and a low permeability to said output
product.
Appeal Br. 2 14 (Claims Appendix).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Gonzalez-Martin et al. US 6,136,186 Oct. 24, 2000
(hereinafter "Gonzales-
Martin '186")
Gonzalez-Martin et al. US 6,156,211 Dec. 5, 2000
2 In this decision, we refer to the Final Office Action mailed June 3, 2014
("Final Act."), the Appeal Brief filed December 2, 2014 ("Appeal Br."), the
Examiner's Answer mailed May 21, 2015 ("Ans."), and the Reply Brief
filed July 7, 2015 ("Reply Br.").
2
Appeal2015-006725
Application 13/176,523
(hereinafter "Gonzales-
Martin '211 ")
Guerra
Baldeschwieler
Lee et al.
(hereinafter "Lee")
Monzyk et al.
(hereinafter "Monzyk")
Sela
US 2003/0228727 Al Dec. 11, 2003
US 2005/0166953 Al Aug. 4, 2005
US 2009/0155605 Al Jun. 18, 2009
US 2009/0220388 Al Sep. 3, 2009
US 2011/0265840 Al Nov. 3, 2011
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-7, 10, 12, 13, 17, 18, 21, 22, 27, 31, 35-39,
and 42 under 35 U.S.C. § 102(b) as anticipated by Monzyk. Ans. 2.
Rejection 2. Claims 1, 2, 6, 8, 10, 12, 13, 15-21, 24, 27, and 35-39
under 35 U.S.C. § 102(b) as anticipated by Gonzales-Martin '186. Id. at 5.
Rejection 3. Claims 1, 2, 6, 8, 10, 12, 13, 28-30, 32, and 35--41 under
35 U.S.C. § 102(b) as anticipated by Gonzales-Martin '211. Id. at 8.
Rejection 4. Claim 9 under 35 U.S.C. § 103 as obvious over ivfonzyk
(or, alternatively, Gonzalez-Martin '186) in view of Guerra. Id. at 11.
Rejection 5. Claim 11 under 35 U.S.C. § 103 as obvious over
Monzyk (or, alternatively, Gonzalez-Martin '186) view of Lee. Id. at 12.
Rejection 6. Claim 14 under 35 U.S.C. § 103 as obvious over
Monzyk (or, alternatively, Gonzalez-Martin' 186) view of Baldeschwieler.
Id.
Rejection 7. Claim 23 under 35 U.S.C. § 103 as obvious over
Monzyk (or, alternatively, Gonzalez-Martin' 186) view of Salas. Id. at 13. 3
3 The Examiner's heading for this rejection refers to claim 14, but the text of
the rejection refers to claim 23. Ans. 13. The typographical error is
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Appeal2015-006725
Application 13/176,523
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf 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) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
Claim Construction. As a threshold matter, Appellants argue that
each of the Examiner's rejections is erroneous because the Examiner failed
to give proper weight to claim 1 's recitation "said photo-conversion element
converts an atmospheric gas into an output product dischargeable through
said outlet." Appeal Br. 14 (Claims Appendix); see also Reply Br. 4---6. We
agree with Appellants that the recitation limits the scope of claim 1, but we
also note that the language is functional because it defines the recited
"photo-conversion element" by its function rather than by its structure.
While a patent applicant may recite features structurally or
functionally, "choosing to define an element functionally, i.e., by what it
does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). In particular, where there is reason to believe that prior art structure
is inherently capable of performing the claimed function, the burden shifts to
harmless because Appellants understood this rejection as applying to claim
23. Appeal Br. 3.
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Appeal2015-006725
Application 13/176,523
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See id.; In re Hallman, 655
F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to
show that prior art structures were not inherently capable of functioning as
claimed invention). Below, we address the Examiner's rejections and
Appellants' arguments with this legal framework in mind.
Rejection 1. The Examiner rejects claims 1-7, 10, 12, 13, 17, 18, 21,
22, 27, 31, 35-39, and 42 as anticipated by Monzyk. Ans. 2. Appellants do
not separately argue claims 2-7, 10, 12, 13, 17, 18, 21, 22, 27, 31, 35-39,
and 42. We therefore limit our discussion to claim 1. Claims 2-7, 10, 12,
13, 17, 18, 21, 22, 27, 31, 35-39, and 42 stand or fall with that claim. 37
C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Monzyk teaches each recited element of
claim 1. Final Act. 2 (providing citations to Monzyk). In the Answer, the
Examiner finds that parts 520 and 522 of Figure 5 of Monzyk are a
"permeable portion of the plurality of the housing walls having a high
permeability to gas and a low permeability to output product. ... " Ans. 14
(citing Monzyk Fig. 5, i-f 38). A preponderance of the evidence, as cited by
the Examiner, supports the Examiner's findings.
Appellants argue that Monzyk does not teach all recitations of claim 1
because it does not teach converting "an atmospheric gas into an output
product dischargeable through an outlet upon exposure to sunlight. ... "
Appeal Br. 8 (emphasis removed). Appellants suggest that Monzyk relates
only to conversion of liquid phase water. Id. A preponderance of the
evidence, however, supports the Examiner's position that Monzyk teaches
that its device converts gaseous water vapor (an atmospheric gas) into
hydrogen ions and oxygen (an output product). Ans. 14. Monzyk explains,
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Appeal2015-006725
Application 13/176,523
for example that needed hydrogen atoms "arise from the water (moisture or
RH) of the stale air. ... " Monzyk i-f 50; see also id. at i-f 38 ("When the
system 500 is in operation[,] light impinging the photo catalyst 526 splits
water in the anode compartment that is in contact with the photo catalyst 526
and produces oxygen .... "). Moreover, the evidence establishes that
gaseous water (i.e., water vapor) is an atmospheric gas. Ans. 14. Thus, the
preponderance of the evidence adequately establishes that Monzyk's photo-
conversion element is capable of "convert[ing] an atmospheric gas into an
output product dischargeable through said outlet," and Appellants have not
established that the claim 1 's functional recitation distinguishes the structure
of claim 1 from Monzyk's prior art structure.
Appellants also argue that Monzyk's wall 524 is not permeable to the
input atmospheric gas and therefore does not meet the "at least one of said
plurality of walls includes a permeable portion having a high permeability to
the atmospheric gas and a low permeability to said output product" recitation
of claim 1. Appeal Br. 8-9. The Examiner, however, finds that ivfonzyk's
parts 520 and 522 as illustrated in Figure 5 teach this recitation (Ans. 14),
and Appellants do not persuasively dispute this finding.
Because Appellants have not identified reversible Examiner error, we
sustain the Examiner's rejection of claims 1-7, 10, 12, 13, 17, 18, 21, 22, 27,
31, 35-39, and 42 as anticipated by Monzyk.
Rejection 2. The Examiner rejects claims 1, 2, 6, 8, 10, 12, 13, 15-21,
24, 27, and 35-39 as anticipated by Gonzales-Martin '186. Ans. at 5.
Appellants again argue only claim 1, so all other claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Gonzales-Martin' 186 teaches each recited
element of claim 1. Final Act. 5 (providing citations to Gonzales-Martin
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Appeal2015-006725
Application 13/176,523
'186). A preponderance of the evidence, as cited by the Examiner, supports
the Examiner's findings.
Appellants argue that Gonzales-Martin '186 does not disclose claim
1 's recited "[wall that] includes a permeable portion having a high
permeability to the atmospheric gas and a low permeability to said output
product." Appeal Br. 9. In particular, Appellants argue that only the oxidant
of Gonzales-Martin passes through its permeable walls 76, 78 rather than the
"atmospheric gas" recited by claim 1. Id. A preponderance of the evidence,
however, supports the Examiner's finding that the oxidant of Gonzales-
Martin is an atmospheric gas. Ans. 15-16. For example, the oxidant can be
ozone which is an atmospheric gas. Id. Moreover, the oxidant could also be
oxygen, another atmospheric gas. Gonzales-Martin '186 3:48-53 ("The
present invention combines a porous semiconductor material ... and an
efficient oxidant, such as electrochemically generated ozone (03) ... or
oxygen (02).").
Because Appellants have not identified reversible Examiner error, we
sustain the Examiner's rejection of claims 1, 2, 6, 8, 10, 12, 13, 15-21, 24,
27, and 35-39 as anticipated by Gonzales-Martin '186.
Rejection 3. The Examiner rejects claims 1, 2, 6, 8, 10, 12, 13, 28-30,
32, and 35--41 as anticipated by Gonzales-Martin '211. Ans. 8. Appellants
again argue only claim 1, so all other claims stand or fall with claim 1. 3 7
C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Gonzales-Martin '211 teaches each recited
element of claim 1. Final Act. 8 (providing citations to Gonzales-Martin
'186). A preponderance of the evidence, as cited by the Examiner, supports
the Examiner's findings.
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Application 13/176,523
Appellants raise the arguments addressed above with respect to
Gonzales-Martin '186. Appellants' arguments do not identify reversible
Examiner error for substantially the same reasons as those explained above.
See also Ans. 17-18 (providing citations to Gonzales Martin '211 );
Gonzales-Martin '211 2:15-25 (explaining that oxidant can be ozone or
oxygen). We thus sustain the Examiner's rejection of claims 1, 2, 6, 8, 10,
12, 13, 28-30, 32, and 35--41 as anticipated by Gonzales-Martin '211.
Rejections 4--7. The Examiner rejects dependent claims 9, 11, 14, and
23 as obvious over Monzyk (or, alternatively, Gonzalez-Martin '186) in
view of Guerra, Lee, Baldeschwieler, and Salas respectively. Ans. 11-13.
Claims 9, 11, 14, and 23 each depend from claim 1. Appellants argue that
the Guerra, Lee, Baldeschwieler, and Salas references do not teach
recitations of claim 1 that Appellants argued were lacking from Monzyk and
Gonzalez-Martin '186. Appeal Br. 10-12. Because, for the reasons
explained above, a preponderance of the evidence supports that Monzyk and
Gonzalez-iviartin '186 each teach all elements of claim 1, Appellants'
arguments do not establish reversible error. Accordingly, we sustain the
Examiner's obviousness rejections.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-24, 27-32, and 35--42.
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
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