Ex Parte Albertus et al

Patent Trial and Appeal Board

Nov 9, 2017

13951716 (P.T.A.B. Nov. 9, 2017)

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.
13/951,716 07/26/2013 Paul Albertus 1576-0953 2453
10800 7590 11/09/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
OHARA, BRIAN R
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
11/09/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ALBERTUS, JOHN F. CHRISTENSEN, and
BORIS KOZINSKY
Appeal 2016-008212
Application 13/951,716
Technology Center 1700
Before JAMES C. HOUSEL, AVELYN M. ROSS, and
JANE E. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision rejecting claims 1, 3—8, and 10-13. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision refers to the Specification (Spec.) filed July 26, 2013, the
Examiner’s Final Office Action (Final Act.) dated July 7, 2015, Appellant’
Appeal Brief (Appeal Br.) filed January 5, 2016, the Examiner’s Answer
(Ans.) dated July 28, 2016, and Appellant’s Reply Brief (Reply Br.) filed
August 29, 2016.
2 The Applicant and real party in interest is Robert Bosch GmbH
(Appellant). Appeal Br. 2.
Appeal 2016-008212
Application 13/951,716
STATEMENT OF THE CASE
The invention relates to a metal/oxygen battery with an oxygen
management system. Spec. 119. The inventors disclose that, while many
metal/oxygen electrochemical cells draw oxygen from the surrounding
atmosphere, the amount of oxygen in the ambient air may be lower than the
concentration of oxygen that provides optimal efficiency during charge and
discharge cycles in the cell. Id. 117. Further, the inventors disclose that
ambient air can carry contaminants, such as CO2 and H20, which reduce
efficiency and can damage the positive electrode and other cell components.
Id. The inventors, therefore, teach a metal/oxygen battery that uses oxygen
efficiently during charge and discharge cycles, while preventing
contamination. Id. 1 18.
The inventors disclose that the battery includes positive and negative
electrodes, a separator positioned there between, a first oxygenated gas
supply reservoir, a second oxygenated gas supply reservoir, a compressor,
and a valve and pressure regulator. Id. 119. In addition, the inventors teach
that an outlet of the compressor is fluidly coupled to the first reservoir, an
inlet of the compressor is fluidly coupled to the second reservoir, and the
valve and pressure regulator is fluidly coupled to the reservoirs and the
positive electrode. Id. According to the inventors, the valve and pressure
regulator is configured to place the first reservoir in fluid communication
with the positive electrode during a discharge cycle and to place the second
reservoir in fluid communication with the positive electrode during a charge
cycle. Id.
2
Appeal 2016-008212
Application 13/951,716
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A metal/oxygen battery with an oxygen management system
comprising:
a negative electrode;
a positive electrode;
a separator positioned between the negative electrode and
the positive electrode;
a first oxygenated gas supply reservoir;
a compressor with an outlet fluidly coupled to the first
oxygenated gas supply reservoir;
a second oxygenated gas supply reservoir fluidly coupled
to an inlet of the compressor and the valve and pressure
regulator, and
a valve and pressure regulator fluidly coupled to the first
oxygenated gas supply reservoir and to the positive electrode and
configured to:
place the first oxygenated gas supply reservoir in
fluid communication with the positive electrode during a
discharge cycle; and
place the positive electrode in fluid communication
with the compressor inlet during a charge cycle.
Remaining independent claim 8 similarly recites a metal/oxygen
battery with an oxygen management system having a second low-pressure
reservoir fluidly coupled to the compressor inlet and to a third port of a
valve and pressure regulator.3
3 We note that claim 8 recites the low-pressure reservoir prior to reciting the
compressor, yet also recites that the low-pressure reservoir is fluidly coupled
to “the inlet.” Claim 8. Although “the inlet” lacks prior antecedence in the
claim, the only reasonable construction is that this inlet is the compressor
inlet later recited in the claim. Upon further examination, the Examiner and
Appellant should consider addressing this matter.
3
Appeal 2016-008212
Application 13/951,716
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1. Claims 1, 3, 5, 6, 8, 11, and 124 as unpatentable over Hermann5
in view of Mitsui;6
2. Claims 4 and 10 as unpatentable over Hermann in view of
Mitsui, and further in view of Pulskamp;7 and
3. Claims 7 and 13 as unpatentable over Hermann in view of
Mitsui, and further in view of Gottwick.8
ANALYSIS
The Examiner finds Hermann discloses a metal/oxygen battery with
an oxygen management system as recited in claims 1 and 8, except for a
second oxygenated gas supply or low-pressure reservoir fluidly coupled to
the compressor inlet and the valve and pressure regulator. Final Act. 3—4, 6.
For this feature, the Examiner turns to Mitsui for the teaching of a second
oxygenated gas supply or low-pressure reservoir (effluent tank 7 in Figure 1)
fluidly coupled to the inlet of a compressor and a valve and pressure
regulator. Id. at 4, 7. The Examiner concludes that it would have been
obvious to use an effluent tank in Hermann because Hermann already
4 Although the Examiner’s statement of this rejection includes claim 9 in the
list of claims under rejection, the Examiner acknowledged Appellant’s
cancellation of claim 9. Compare Final Act. 12 and 1 8. We have corrected
the listing of claims to reflect the cancellation of claim 9.
5 Hermann, US 2012/0040253 Al, published February 16, 2012.
6 Mitsui et al., US 2012/0148928 Al, published June 14, 2012 (“Mitsui”).
7 Pulskamp et al., US 2011/0143226 Al, published June 16, 2011
(“Pulskamp”).
8 Gottwick et al., US 2011/0200850 Al, published August 18, 2011
(“Gottwick”).
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Appeal 2016-008212
Application 13/951,716
teaches use of oxygen-enriched effluent from the battery pack and because
recycling the effluent reduces waste. Id.
Appellant argues, inter alia, that the Examiner mischaracterizes
Mitsui’s teaching, in particular that Mitsui’s effluent tank is not a second
oxygenated gas supply reservoir, but is an effluent tank used to provide
spent liquid fuel back to the fuel cell after mixing with fuel from a fuel tank
6. Appellant further argues that Mitsui’s fuel pump 3 only supplies liquid
fuel to the fuel cell and is not a compressor. Moreover, Appellant contends
that there is no added benefit in Hermann to adding an effluent tank as
taught in Mitsui because Hermann already stores effluent rather than sending
it to the environment as waste. Id. at 9. Appellant notes that Hermann
teaches that the entire volume of generated oxygen can be stored in a 38-liter
tank, but that a smaller tank may be used, or it is desirable to charge the
battery pack without storing some or all of the effluent, and valve 121 may
be opened and valve 129 closed, to allow discharge of the effluent to the
environment. Id. (citing Hermann 138). As such, Appellant argues that the
Examiner has failed to articulate why the person of ordinary skill in the art
would have been lead to store gas in a second tank rather than in the first
high-pressure tank. Id. at 10.
Appellant’s arguments are persuasive of reversible error in the
Examiner’s rejection of claim 1. The Examiner finds that, because Mitsui
teaches both discharging to the atmosphere and discharging to an effluent
tank, these two techniques are art-recognized equivalents. Ans. 6—7.
However, Hermann also teaches that effluent may either be discharged to the
atmosphere or recycled to an effluent tank. Hermann 138. Hermann also
teaches that the first tank may be sufficiently large to store the entire volume
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Appeal 2016-008212
Application 13/951,716
of generated oxygen in the system, but that if it is desirable, a smaller tank
may be used and some or all the effluent may be released to the
environment. Id. Further, the purpose of Mitsui’s effluent tank 7 is to
recover unreacted liquid fuel and water which is then mixed with fresh fuel
from fuel tank 6 in confluence portion 8 to be fed back into fuel cell 2.
Indeed, Mitsui discharges effluent at oxidant outlet 2e, separates gases in the
gas liquid separator 100, recycles liquid effluent to effluent tank 7, but
discharges the gas effluent to the environment. Id. Thus, Mitsui fails to
teach or suggest the use of a second oxygenated gas supply reservoir
connected to the compressor inlet and a valve and pressure regulator,
especially where Hermann teaches a single oxygenated gas supply reservoir
is sufficient to store the entire volume of generated oxygen in the system.
We note the Examiner takes the position that the rejection merely
relies on Mitsui’s concept of the use of an effluent tank, rather than directly
incorporating Mitsui’s tank into Hermann. Ans. 4. However, Mitsui’s
effluent tank is not a second of two reservoirs in an oxidant recycling system
as taught in Hermann and Appellant’s disclosure. Mitsui’s effluent tank is a
single tank for recycling unreacted liquid fuel and water to a confluence
portion for mixing with fresh fuel from a fuel tank. Also, Mitsui’s effluent
tank 7 and fuel tank 6 are both coupled at the inlet of fuel pump 3, rather
than one coupled at the inlet and the other coupled at the outlet as recited in
claims 1 and 8.
Because we find the Examiner erred in finding Mitsui teaches a
second oxygenated gas supply or low-pressure reservoir, and also fails to
articulate why it would have been obvious to include such a reservoir in
Hermann’s system, the Examiner’s conclusion of obviousness lacks
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Appeal 2016-008212
Application 13/951,716
sufficient rational underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”), quoted with approval in KSR, 550 U.S. at 418. We will not
sustain the Examiner’s obviousness rejection of claims 1 and 8, and their
dependent claims 3, 5, 6, 11, and 12.
Because the Examiner does not rely on either Pulskamp or Gottwick
to remedy the deficiencies in the combination of Hermann and Mitsui
discussed above, we likewise do not sustain the Examiner’s obviousness
rejections of claims 4, 7, 10, and 13.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1, 3—8, and 11—13 under 35 U.S.C. § 103(a) as unpatentable over
Hermann and Mitsui, alone or further in view of Pulskamp or Gottwick, is
reversed.
REVERSED
7