Ex Parte Cooper

Board of Patent Appeals and Interferences

Sep 27, 2010

10942537 (B.P.A.I. Sep. 27, 2010)

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.
10/942,537 09/15/2004 John F. Cooper IL-10918 1179
24981 7590 09/27/2010
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
MAPLES, JOHN S
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN F. COOPER
____________

Appeal 2009-011733
Application 10/942,537
Technology Center 1700
____________

Before CHARLES F. WARREN, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.
KRATZ, 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 2009-011733
Application 10/942,537

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-5, 9-15, 19, and 20. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellant’s claimed invention is directed to a hybrid power
generation apparatus.
Claims 1 is illustrative and reproduced below:
1. A hybrid power generation apparatus for producing electrical
power from a heavy hydrocarbon fuel, comprising:

a hybrid power generation unit that includes

a pyrolysis unit for receiving the heavy hydrocarbon fuel and
pyrolyzing the heavy hydrocarbon fuel to form carbon and hydrogen,
wherein said pyrolysis unit produces carbon and wherein said pyrolysis unit
produces hydrogen,

a direct conversion fuel cell for converting said carbon into electrical
power, wherein said direct conversion fuel cell is connected to said pyrolysis
unit to receive carbon from said pyrolysis unit and wherein said direct
conversion fuel cell converts said carbon into electrical power, and

a solid oxide fuel cell for converting said hydrogen into electrical
power, wherein said solid oxide fuel cell is connected to said pyrolysis unit
to receive hydrogen from said pyrolysis unit and wherein said solid oxide
fuel cell converts said hydrogen into electrical power.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Singh 5,686,196 Nov. 11, 1997

Meyer Steinberg, High Efficiency Direct Carbon and Hydrogen Fuel Cells
for Fossil Fuel Power Generation, in American Institute of Chemical
Engineers 1-14 (2002) (hereafter “Steinberg”).

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Appeal 2009-011733
Application 10/942,537

Claims 1-5, 10-15, and 20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Steinberg. Claims 9 and 19 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Steinberg in view of Singh.
We affirm the stated rejections for substantially the reasons set forth in the
Examiner’s Answer. We add the following for emphasis.
The principal issue is:
Has Appellant indicated error in the Examiner’s anticipation rejection
and/or the Examiner’s obviousness rejection based on the arguments
furnished in the Appeal Brief? We answer this question in the negative and
we affirm both rejections.

Anticipation Rejection
The Examiner has found that Steinberg describes an apparatus that the
rejected claims read on. In this regard, the Examiner has found that
Steinberg describes a power generation apparatus including a molten salt
direct conversion fuel cell, a solid oxide fuel cell, and a pyrolysis unit
(hydro-pyrolyzer and methane decomposer) (Ans. 3-4; Steinberg, Fig. 4, pp.
2 and 6).
Appellant repeats claim language for several of the appealed claims
and generally argues that Steinberg does not show it but does not articulate
with any detail why it is that Appellant believes that the Examiner’s
application of Steinberg to the claimed subject matter is incorrect (App. Br.
9-20).2

2 The record reflects that Appellant has reviewed the Examiner’s Answer
and relies on the Appeal Brief in responding to the Examiner’s Answer
(Communication filed February 03, 2010). Appellant has not filed a Reply
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Appeal 2009-011733
Application 10/942,537

For example and with respect to rejected independent claim 1, the
Examiner has found that the claimed pyrolysis unit reads on the hydro-
pyrolyzer and methane decomposer apparatus unit of Steinberg, which
apparatus forms hydrogen and carbon from a heavy hydrocarbonaceous fuel
input (Fig. 4). The Examiner has found that the direct conversion fuel cell
for converting carbon to electrical power reads on the high temperature
molten carbon fuel cell of Steinberg, and that the solid oxide fuel cell of
claim 1 reads on the solid oxide high temperature hydrogen fuel cell of
Steinberg (Ans. 3-6; Steinberg, Fig. 4, pp. 2 and 6).
Appellant, on the other hand, argues that Steinberg does not show
Appellant’s “pyrolysis unit for receiving the heavy hydrocarbon fuel and
pyrolyzing the heavy hydrocarbon fuel to form carbon and hydrogen,” “a
direct conversion fuel cell for converting said carbon”, and “a solid oxide
fuel cell for converting said hydrogen” (App. Br. 13-14 quoting claim 1).
However, Appellant does not explain why Appellant believes the
Examiner’s specific application of Steinberg to the claim 1 apparatus
components is incorrect. In this regard, Appellant does not explain why
Steinberg’s solid oxide fuel cell (SOFC) does not describe the claimed
SOFC, why Steinberg’s direct conversion molten salt fuel cell (DOC) for
converting carbon to electricity does not describe the claimed DOC, and
why the claimed pyrolysis unit does not read on Steinberg’s two reactor
pyrolysis system (see generally App. Br.). Concerning the last item, a “unit”
can read on a group of related items; for example, a separation unit can
include a series of separators. Appellant does not point to any restrictive
Brief. A petition filed February 04, 2010 was dismissed in a Decision
mailed June 16, 2010.
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Appeal 2009-011733
Application 10/942,537

definition in the Specification for any of the claim terms that warrants a
different outcome. Indeed, the Specification indicates that the claimed
invention is intended to embrace “all modifications, equivalents, and
alternatives falling within the spirit and scope of the invention as defined by
the claims” (Spec. 0012).
Similarly, Appellant’s arguments that Steinberg does not show what is
claimed with respect to the Examiner’s anticipation rejection of claims 2-5,
10, 11-15, and 20 are not persuasive (App. Br. 14-20). Similarly as
discussed with claim 1 above, these arguments do not fairly address the
specific application of Steinberg and the reasoning set forth by the Examiner
in the Answer in maintaining the anticipation rejection of these later claims.
Appellant further argues that Steinberg is a general survey and is non-
enabling prior art. However, Appellant does not discharge the burden of
production associated with this non-enabling argument by substantiating
why one of ordinary skill in the art at the time of the invention would not
have been enabled to construct a workable combined fuel cell apparatus
including a pyrolysis unit, a direct conversion fuel cell and a solid oxide fuel
cell, as claimed based on the disclosure of Steinberg.
This is necessary because it is appropriate that a party asserting a lack
of enablement of an anticipatorily applied published scientific article (as
here) or a published patent application document should bear the burden of
production to establish a lack of enablement of that which is disclosed in the
applied document, particularly where the rejection opposed pertains to
claims of a patent application that is pending before the PTO. Moreover,
this is because the PTO lacks resources to test the written technical
publications on which they rely for enablement. See, e.g., Amgen Inc. v.
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Appeal 2009-011733
Application 10/942,537

Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355, n. 22 (Fed. Cir. 2003)
(relying on precedent the court held that "a presumption arises that both the
claimed and unclaimed disclosures in a prior art patent are enabled" and the
court instructed that, while not an issue before them, “by logical extension”
the same presumption should apply to prior art printed publications).
On this record, we affirm the Examiner’s anticipation rejection.
Obviousness Rejection
Dependent claims 9 and 19 each additionally require that the solid
oxide fuel cell of the claimed apparatus includes a water condenser.
The Examiner relies on Singh for teaching the use of a water
condenser in association with a SOFC (Ans. 4: Singh, col. 4, ll. 53-62).
Based on the combined disclosures of Steinberg and Singh, the Examiner
determined that the provision of a water condenser for use with the SOFC of
Steinberg would have been obvious to one of ordinary skill in the art to
implement for the purpose of condensing water vapor and increasing the
efficiency (heat recovery) of the hybrid power generation apparatus of
Steinberg.
Appellant argues that the combination of Singh and Steinberg is not
suggested, would not yield the combination of claimed elements set forth in
claims 9 and/or 19 and would not be attended by a reasonable expectation of
success (App. Br. 22-28). We agree with the Examiner that these arguments
are not persuasive for reasons set forth by the Examiner in the Answer (Ans.
4, 9, and 10).
On this record, we affirm the stated obviousness rejection.

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Appeal 2009-011733
Application 10/942,537

ORDER
The Examiner’s decision to reject claims 1-5, 10-15, and 20 under 35
U.S.C. § 102(b) as being anticipated by Steinberg; and to reject claims 9 and
19 under 35 U.S.C. § 103(a) as being unpatentable over Steinberg in view of
Singh is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(v).

AFFIRMED

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LAWRENCE LIVERMORE NATIONAL SECURITY, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
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