10506386 (B.P.A.I. Feb. 18, 2011)

Ex Parte Bednarz et al

Board of Patent Appeals and InterferencesFeb 18, 2011

10506386 (B.P.A.I. Feb. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MARC BEDNARZ and MICHAEL WOSKI __________ Appeal 2009-012669 Application 10/506,386 Technology Center 1700 ___________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and TERRY J. OWENS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-012669 Application 10/506,386 2 A. STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claims 10-13 under 35 U.S.C. § 102(b) as anticipated by D’Alessandro (US 3,544,374, issued December 1, 1970). Claims 14-16 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal relates to a method for inerting anodes of a fuel cell. Claim 10, reproduced below, is illustrative.2 10. A method for inerting anodes of fuel cells of a molten carbonate fuel cell system, comprising steps of: supplying water vapor to the anodes of the fuel cells during standby operation of the fuel cell in which no fuel gas is supplied to an anode half-cell of the fuel cell; and applying an external voltage to the fuel cells to produce a reducing atmosphere at the anodes by electrolysis. The Appellants disclose that the “voltage is preferably sufficiently high that a mean current density of 5-10 mA/cm2 is achieved in the opposite direction of flow from normal operation.” Spec. 7:16-17. B. ISSUE The sole issue on appeal is whether the Examiner reversibly erred in finding that electrolysis inherently occurs in the method of D’Alessandro. 2 The Examiner points out that claim 10 in the Claims Appendix to the amended Appeal Brief dated February 12, 2009 (“App. Br.”), contains a typographical error. Examiner’s Answer dated April 16, 2009 (“Ans.”), at 2. A corrected version of claim 10 has been reproduced in this Decision on Appeal. Appeal 2009-012669 Application 10/506,386 3 C. PRINCIPLES OF LAW “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1379 (Fed. Cir. 2003). “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). D. ANALYSIS The Appellants argue that D’Alessandro does not disclose that electrolysis occurs when an external voltage is applied to the fuel cell. The Appellants recognize that D’Alessandro discloses that a voltage is applied between the anode and the cathode of the fuel cell. However, the Appellants argue that the application of a voltage does not automatically or inherently mean that electrolysis is present. The Appellants argue that electrolysis only takes place if a certain minimum voltage, i.e., a decomposition voltage, is applied and direct us to Exhibits A-C in the Evidence Appendix for support. App. Br. 6-7. The Examiner recognizes that the evidence relied on by the Appellants establishes that there is a minimum voltage at which electrolysis Appeal 2009-012669 Application 10/506,386 4 occurs.3 Nonetheless, the Examiner argues that the evidence fails to prove that electrolysis does not occur in the method of D’Alessandro. Ans. 11-14. Significantly, the Examiner bears the initial burden of establishing inherency under § 102(b). After this initial burden has been satisfied, the burden then shifts to the Appellants to prove that the prior art method does not necessarily or inherently possess the characteristics of the claimed method. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In this case, the Examiner contends that electrolysis is inherent in the method of D’Alessandro because D’Alessandro discloses the steps of flushing the anode membrane with steam and applying a voltage of 3 V or higher to the fuel cell. Ans. 7. For support, the Examiner directs our attention to the following disclosure in D’Alessandro: [T]he practical upper limit of the potential applied between the electrodes disposed in an alkali metal hydroxide electrolyte will be that value at which alkali metal begins to deposit from the electrolyte a value less than that at which electrolysis would occur. For sodium hydroxide, this value will be about 3 volts. Though higher potentials may be used they are neither practical nor necessary. D’Alessandro 3:29-36 (emphasis added). The Examiner contends that the electrolysis referred to in this disclosure “is with respect to the electrolyte, not the purging gas (steam).” Ans. 6. 3 DE 19622693 C1 (Exhibit C) was submitted during prosecution of the instant application on January 22, 2008. The Examiner notes that Exhibit C contains a translated portion that is submitted for the first time on appeal. Ans. 12. It is not necessary to decide whether Exhibit C was submitted in compliance with 37 C.F.R. § 41.37(c)(1)(ix) (2010) because the English translation in Exhibit C is merely cumulative of other evidence in the record establishing that a minimum voltage is required for electrolysis. Appeal 2009-012669 Application 10/506,386 5 Assuming for the sake of argument that the Examiner’s contention is correct, there is no evidence on this record establishing that electrolysis necessarily occurs when the method of D’Alessandro is conducted at 3 volts. The Examiner directs our attention to the following statement in Exhibit B to demonstrate that decomposition voltages may range from 1 to 4 V: “The decomposition voltage for aqueous HCl with a concentration of 1.2 moles/L is 1.37 V at 25ºC (Figure 1-3); decomposition voltages for other electrolyses are of a similar order of magnitude (1 to 4 V).” However, the Examiner acknowledges that no comparison between Exhibit B and D’Alessandro can be drawn because Exhibit B describes the electrolysis of HCl not water vapor. Ans. 11. As for the disclosure in D’Alessandro that “higher potentials may be used,” D’Alessandro does not identify the value of these higher potentials. Manifestly, it is not possible to determine whether electrolysis occurs at an unidentified voltage. In sum, the Examiner has failed to establish, in the first instance, that electrolysis inherently occurs in the method of D’Alessandro. Therefore, we will not sustain the § 102(b) rejection on appeal. E. DECISION The decision of the Examiner is reversed. REVERSED Appeal 2009-012669 Application 10/506,386 6 sld LUCAS & MERCANTI, LLP 475 PARK AVENUE SOUTH 15TH FLOOR NEW YORK NY 10016