Ex Parte Bar-Gadda

Patent Trial and Appeal Board

Aug 28, 2014

10819591 (P.T.A.B. Aug. 28, 2014)

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.
10/819,591 04/06/2004 Ronny Bar-Gadda A-75148-1 6774
40461 7590 08/28/2014
EDWARD S. WRIGHT
1100 ALMA STREET, SUITE 207
MENLO PARK, CA 94025
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
08/28/2014 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 RONNY BAR-GADDA
__________

Appeal 2013-002096
Application 10/819,591
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Ronny Bar-Gadda (“Appellant”) appeals under 35 U.S.C. § 134 from a final
rejection of claims 1, 3, 6-9, 12, 13, 29, 31, and 33. Claims 2, 4, 5, 10, 11, 14-28,
30, and 32 are also pending but have been withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter new grounds of rejection.
The subject matter on appeal is directed to a method of generating hydrogen
and oxygen gas comprising the steps of exciting water molecules in an
electromagnetic field to dissociate the molecules into hydrogen and oxygen
species, separating the dissociated hydrogen and oxygen species within the
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electromagnetic field, and removing the separated species from the
electromagnetic field. App. Br., Claims App.1
Claim 1 is reproduced below.
1. A method of generating hydrogen and oxygen gas,
comprising the steps of:
[(a)] exciting water molecules in an electromagnetic field
having a frequency spectrum that only stimulates one or more of the
kinetic and electronic modes of the molecules and an energy level
commensurate with a molecular bonding energy of the molecules to
dissociate the molecules into hydrogen and oxygen species without
the use of other energy from an external source while the water
molecules are being excited in the electromagnetic field;
[(b)] separating the dissociated hydrogen and oxygen species
within the electromagnetic field; and
[(c)] removing the separated species from the electromagnetic
field in a manner such that like species recombine to form hydrogen
and oxygen gas.
App. Br., Claims App. (formatting and emphasis added).
Claim 8, the other independent claim on appeal, also recites a method of
generating hydrogen and oxygen gas comprising “exciting,” “separating,” and
“removing” steps and recites an additional step of “reducing the hydrogen species
and/or hydrogen gas with carbon dioxide to form organic compounds.” App. Br.,
Claims Appendix.
The claims stand rejected as follows:
(1) claims 1, 3, and 29 under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Burgund2;

1 Appeal Brief dated August 23, 2012.
2 US 4,342,738, issued August 3, 1982.
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(2) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Burgund in
view of Fletcher3;
(3) claim 7 under 35 U.S.C. § 103(a) as unpatentable over Burgund in
view of Ohkawa4;
(4) claim 31 under 35 U.S.C. § 103(a) as unpatentable over Burgund in
view of Sayama5;
(5) claim 33 under 35 U.S.C. § 103(a) as unpatentable over Burgund in
view of Coury6;
(6) claims 8, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over
Burgund in view of Toyir7; and
(7) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Burgund in
view of Toyir, and further in view of Sayama.
B. DISCUSSION
1. Claims 1 and 8
Burgund discloses a method of separating water into hydrogen and oxygen.
According to the disclosed method, water is placed in a first vessel8 and subjected
to concentrated infrared light causing the water to boil. Burgund, col. 2, l. 67-col.
3, l. 4. The water passes into a second vessel that is transparent to ultraviolet light.

3 US 4,053,576, issued October 11, 1977.
4 US 6,258,216 B1, issued July 10, 2001.
5 K. Sayama & H. Arakawa, Photocatalytic Decomposition of Water and
Photocatalytic Reduction of Carbon Dioxide over ZrO2 Catalyst, 97 J. PHYS.
CHEM. 531-33 (1993).
6 US 4,330,307, issued May 18, 1982.
7 Jamil Toyir et al., Methanol synthesis from CO2 and H2 over gallium promoted
copper-based supported catalysts. Effect of hydrocarbon impurities in the CO2/H2
source, 3 PHYS. CHEM. CHEM. PHYS. 4837-42 (2001).
8 Burgund uses the terms “vessel,” “reactor,” and “chamber” interchangeably. See
Burgund, col. 3, ll. 1-4.
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Burgund, col. 3, ll. 4-10. In this vessel, the water is superheated up to temperatures
of about 800ºC. by more concentrated infrared light and simultaneously subjected
to ultraviolet light.9 Burgund, col. 3, ll. 13-19.
Burgund discloses that the ultraviolet light directly excites the vibrational
level of the molecular bonds of the water vapor molecules beyond the level
required for fracturing the molecular bonds, resulting in the disassociation of the
water molecules into elemental hydrogen and oxygen. Burgund, col. 3, ll. 62-66.
After disassociation, the combined hydrogen and oxygen gas passes out of the
second vessel into a conventional Venturi tube where the gases are separated and
individually collected. Burgund, col. 4, ll. 28-35; see also Ans. 3.10
Claims 1 and 8 recite the step of “separating the dissociated hydrogen and
oxygen species within the electromagnetic field.” App. Br., Claims App (emphasis
added). The Examiner appears to interpret this limitation as requiring the
superheated steam to be separated into hydrogen and oxygen species. See Final 6,
14.11 However, this interpretation is not supported by the language of claims 1 and
8. Claims 1 and 8 require previously dissociated hydrogen and oxygen species
(i.e., “the dissociated hydrogen and oxygen”) to be separated within the
electromagnetic field. App. Br., Claims App.; see also Reply Br. 2 (“the
separation called for in the second step is separation of the hydrogen and oxygen
species that have already been dissociated”).12
The Appellant argues that claim 1 distinguishes over Burgund because “[i]n
Burgund, the combined hydrogen and oxygen gas are removed from the chamber

9 The Appellant discloses that electromagnetic energy has wavelengths in the
ultraviolet, infrared, microwave, and radio frequency spectrum. Spec. 12, ll. 1-2.
10 Examiner’s Answer dated September 28, 2012.
11 Final Office Action dated January 17, 2012.
12 Reply Brief dated November 28, 2012.
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following dissociation and passed through a Venturi tube to reduce the pressure of
the gases before they are separated and collected.” App. Br. 4 (emphasis added).
The Appellant’s argument is supported by the record. Therefore, the rejection of
claims 1, 3, and 29 under § 102(b) or, in the alternative, under § 103(a) based on
Burgund is reversed. The remaining rejections on appeal are also reversed in view
of the Examiner’s erroneous interpretation of the “separating” step recited in
claims 1 and 8 and the Examiner’s erroneous application of Burgund.
2. New grounds of rejection
a. Claim 1
Burgund discloses a method of separating water into hydrogen and oxygen.
According to the disclosed method, water is placed in a first vessel and subjected
to concentrated infrared light causing the water to boil. Burgund, col. 2, l. 67-col.
3, l. 4. The water passes into a second vessel that is transparent to ultraviolet light.
Burgund, col. 3, ll. 4-10. In this vessel, the water is superheated up to temperatures
of about 800ºC. by more concentrated infrared light and simultaneously subjected
to ultraviolet light.13 Burgund, col. 3, ll. 13-19. Alternatively, the steam can be
superheated in one vessel and then passed into an ultraviolet light transparent
vessel. Burgund, col. 4, ll. 20-27 and col. 5, ll. 9-24; see also Reply Br. 1, n. 1.
Burgund discloses that the ultraviolet light directly excites the vibrational
level of the molecular bonds of the water vapor molecules beyond the level
required for fracturing the molecular bonds, resulting in the disassociation of the
water molecules into elemental hydrogen and oxygen. Burgund, col. 3, ll. 62-66.

13 The Appellant discloses that electromagnetic energy has wavelengths in the
ultraviolet, infrared, microwave, and radio frequency spectrum. Spec. 12, ll. 1-2.
The Examiner finds, and the Appellant does not dispute, that the electromagnetic
field recited in claim 1 reads on the ultraviolet light in Burgund. Ans. 3.
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We find that the “exciting” step recited in claim 1 reads on the alternative
embodiment in Burgund wherein the superheated steam is passed into the
ultraviolet light transparent vessel. Burgund, col. 4, ll. 20-27 and col. 5, ll. 9-24.
We find that in this embodiment, the water molecules are dissociated into
hydrogen and oxygen species in the ultraviolet light transparent vessel “without the
use of other energy from an external source” as recited in claim 1. See App. Br.,
Claims App.
Burgund discloses that after disassociation, the combined hydrogen and
oxygen gas passes out of the ultraviolet light transparent vessel into a conventional
Venturi tube where the gases are separated and individually collected. Burgund,
col. 4, ll. 28-35. However, Burgund also discloses that “[t]here are a variety of
conventional methods by which the hydrogen may be separated from the oxygen.
For example, it may be separated by diffusion through a hydrogen permeable
membrane . . . .” Burgund, col. 4, ll. 36-42. Nonetheless, Burgund does not
expressly disclose that the dissociated hydrogen and oxygen species are separated
within the electromagnetic field or that the separated species are removed from the
electromagnetic field as recited in claims 1 and 8.
Fletcher, on the other hand, discloses the “separating” and “removing” steps
recited in claim 1. In particular, Fletcher discloses a system, reproduced below, for
using solar energy to produce and separate hydrogen and oxygen from water.
Fletcher, col. 1, ll. 5-7.
Appeal
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radiation, and the walls of casing 18 are spaced from the diffusion membrane to
form a collection chamber for the preferentially diffused dissociation products.
Fletcher, col. 3, ll. 41-49. Fletcher discloses that hydrogen product line 19 extends
from casing 18 and oxygen product line 23 extends from dissociation chamber 13.
Fletcher, col. 3, ll. 62-66 and col. 4, ll. 3-6.
We find that one of ordinary skill in the art would have found the teachings
of Fletcher instructive in incorporating Burgund’s hydrogen permeable membrane
into the system disclosed in Burgund. We also find that one of ordinary skill in the
art would have been motivated to incorporate the hydrogen permeable membrane
into Burgund’s ultraviolet light transparent vessel (i.e., disassociation vessel), as
taught by Fletcher, to eliminate the need for an additional vessel to separate the
hydrogen and oxygen species. See In re Thompson, 545 F.2d 1290, 1294 (CCPA
1976) (economic factors alone may provide motivation for the proposed
combination). For these reasons, it would have been obvious to one of ordinary
skill in the art to replace the Venturi tube disclosed in Burgund with a hydrogen
permeable membrane, as taught by Fletcher, as an alternative means for separating
the dissociated hydrogen and oxygen species. In Burgund’s modified system, the
dissociated hydrogen and oxygen species would be separated within the
electromagnetic field and the separated species would be removed from the
electromagnetic field as recited in claim 1.
For the reasons set forth above, claims 1, 3, 6, and 29 are rejected under
35 U.S.C. § 103(a) as unpatentable over Burgund in view of Fletcher.
As for dependent claims 7, 31, and 33, the Appellant states these claims “are
directed to patentable subject matter for the same reasons as their parent claim”
(i.e., claim 1). Reply Br. 3. Therefore, claims 7, 31, and 33 are rejected as
follows:
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Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burgund
in view of Fletcher, and further in view of Ohkawa.
Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burgund
in view of Fletcher, and further in view of Sayama.
Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burgund
in view of Fletcher, and further in view of Coury.
b. Claim 8
For the reasons set forth above in the rejection of claim 1, the “exciting,”
“separating,” and “removing” steps recited in claim 8 are rendered obvious by the
combined teachings of Burgund and Fletcher. Claim 8 recites the additional step
of “reducing the hydrogen species and/or hydrogen gas with carbon dioxide to
form organic compounds.” App. Br., Claims App.
The Examiner finds that Toyir teaches the claimed “reducing” step and
concludes that it would have been obvious to one of ordinary skill in the art to add
this step to the method of Burgund. Final 16-17. The Appellant does not direct us
to any error in the Examiner’s factual findings or legal conclusions based on Toyir.
See App. Br. 6-7; Reply Br. 3-4. Therefore, claims 8, 12, and 13 are rejected under
35 U.S.C. § 103(a) as unpatentable over Burgund in view of Fletcher and Toyir.
Claim 9 depends from claim 8 and recites that “carbon dioxide is injected
into the water molecules prior to exciting the molecules in the electromagnetic
field.” App. Br., Claims App. The Examiner finds that Sayama teaches this step
and concludes that it would have been obvious to one of ordinary skill in the art to
add this step to Burgund’s method. Final 18; Ans. 9. The Appellant does not
direct us to any error in the Examiner’s factual findings or legal conclusions based
on Sayama. See App. Br. 7; Reply Br. 4. Therefore, claim 9 is rejected under
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35 U.S.C. § 103(a) as unpatentable over Burgund in view of Fletcher and Toyir,
and further in view of Sayama.
C. DECISION
The decision of the Examiner is reversed.
Claims 1, 3, 6, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Burgund in view of Fletcher.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burgund
in view of Fletcher, and further in view of Ohkawa.
Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burgund
in view of Fletcher, and further in view of Sayama.
Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burgund
in view of Fletcher, and further in view of Coury.
Claims 8, 12, and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Burgund in view of Fletcher and Toyir.
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Burgund
in view of Fletcher and Toyir, and further in view of Sayama.
This decision contains new grounds of rejection under 37 C.F.R. § 41.50(b)
(2012), which provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
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rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
(37 C.F.R. § 41.50(b))

cdc