Ex Parte Kelly et al

Patent Trial and Appeal Board

Jun 29, 2016

12433214 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/433,214 0413012009 Nelson A. Kelly
104102 7590 06/29/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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.
P006755-R&D-MJL 8620
EXAMINER
COHEN, BRIAN W
ART UNIT PAPER NUMBER
1754
MAILDATE DELIVERY MODE
06/29/2016 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 NELSON A. KELLY, THOMAS L. GIBSON, and
DAVID B. OUWERKERK
Appeal2014-006529
Application 12/433,214
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 3---6
and 21-26.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellants state that the real party in interest is "General Motors LLC"
(Appeal Brief filed January 16, 2014, hereinafter "Appeal Br.," 4).
2 See Appeal Br. 4; Final Office Action mailed July 26, 2013, hereinafter
"Final Act.," 1.
Appeal2014-006529
Application 12/433,214
BACKGROl.J1'-JD
The subject matter on appeal relates to a method for improving the
electrolysis efficiency of a high-pressure alkaline electrolysis cell for
producing hydrogen and oxygen from water (Specification, hereinafter
"Spec.," i-fi-f l-2, 4--5). Figures 2A and 2B depict different views of an
embodiment of the claimed subject matter, as follows:
134
112a
.136
J?JG. 28
FI&: lA
Figures 2A and 2B above are schematic and top cutaway views,
respectively, of an electrolysis cell 110 including, inter alia, an anode 118, a
cathode 112, and a membrane 32 that divides the cell chamber into a cathode
chamber 13 6 and an anode chamber 134 that is substantially greater in
volume than the cathode chamber 136 (id. i-fi-19-10, 32-34). According to
the Appellants (id. i132), this "new cell geometry may be achieved by
simply reversing the polarity of the anode and the cathode of a prior-art
electrolysis cell 10 as illustrated in Figure[s IA and IB]."
Representative claim 3 is reproduced from page 47 of the Appeal
Brief (Claims App.), with key limitations indicated in italicized text, as
follows:
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Appeal2014-006529
Application 12/433,214
3. A method for increasing the efficiency of a high-
pressure electrolysis cell having an anode and a cathode
defining an interior portion there between, the method
compnsmg:
providing a high-pressure electrolysis cell configured
such that the electrode area of the anode is substantially larger
than the electrode area of the cathode;
providing a liquid electrolyte comprising water in said
interior portion;
electrolyzing the water by operating said cell by
connecting said anode and cathode to a direct current power
source having a positive terminal and a negative terminal;
wherein the negative terminal is connected to the cathode and
the positive terminal is connected to the anode; and the anode
has a substantially larger electrode area than the electrode
area of the cathode to produce hydrogen gas at said cathode
and oxygen gas at said anode, and
wherein said cell further comprises a cell membrane
disposed between the anode and the cathode to define an anode
chamber between the anode and the membrane, and a cathode
chamber between the cathode and the membrane, and wherein
the volume of the anode chamber is substantially larger than
that of the cathode chamber.
Claims 21 and 26, the other independent claims on appeal, recite the
same or similar key limitations (Appeal Br. 48-50).
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows: (i) claims 3, 5, 6, and 26 as unpatentable over Weinberg et al. 3
(hereinafter "Weinberg"), Shimko et al. 4 (hereinafter "Shimko"), and Ross; 5
and (ii) claims 21-25 as unpatentable over Shimko, Ross, and Weinberg
3 US 2004/0084325 Al published May 6, 2004.
4 US 2007/0151865 Al published July 5, 2007.
5 US 6,896,789 B2 issued May 24, 2005.
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Appeal2014-006529
Application 12/433,214
(Examiner's Answer mailed ivfarch 25, 2014, hereinafter "Ans.,'' 2-31; Final
Act. 1, 3-21).6
DISCUSSION
The Examiner found that, in contrast to the Appellants' claimed
subject matter, Weinberg does not disclose "a cell membrane disposed
between the anode and the cathode to define an anode chamber between the
anode and the membrane and a cathode chamber between the cathode and
the membrane such that the volume of the anode chamber is substantially
larger than that of the cathode chamber" (Ans. 4--5). Although the Examiner
found that Shimko discloses a cell membrane (id. at 5), the Examiner
acknowledged that Shimko teaches "the opposite configuration [of the
relative positions of the anode and the cathode] than that of the claimed
invention" (id. at 5). In addition, the Examiner also acknowledged that
"Shimko does not teach that the cell is configured to provide an anode
chamber volume substantially larger than the cathode chamber volume" (id.
at 16-17). In an attempt to resolve these differences, the Examiner relied on
Ross (id. at 6-7, 18).
The Examiner's reliance on Ross is misplaced. Ross's Figure 3 is
reproduced below:
6 The rejections as stated in the Final Office Action and the Answer did not
mention claim 4, although the Final Office Action Summary indicated that
claim 4 was also rejected (Final Act. 1, 3-21; Ans. 3-31 ). The error,
however, was harmless because the Appellants understood claim 4 to be
rejected and appealed its rejection, relying on arguments offered in support
of claim 3 from which claim 4 depends (Appeal Br. 4, 13; Reply Brief filed
May 16, 2014 at 1-2, 13).
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Appeal2014-006529
Application 12/433,214
. . . . ~"'-,__~. . . - ,.
104
Figure 3
Ross's Figure 3 depicts a perspective view of an electrolysis cell including,
inter alia, a cathode 80 comprising two parts (i.e., an outer shell 100 and an
inner mesh 102), an anode 82, spacers 104 for keeping the cathode 80 and
the anode 82 safely apart, and tensioner 84 for exerting an outward pressure
against the anode 82 and spacer 104 to cause spacer 104 to firmly press
inner mesh 102 into outer shell 100 at two points of contact 105 (col. 4, 11.
66----67; col. 9, 1. 42---col. 10, 1. 13).
As found by the Examiner (Ans. 6), Ross teaches that "the positions
of the cathode 80 and anode 82 could be reversed, with the anode 82
becoming the outer electrode having an outer shell 100 and inner mesh 102,
and the cathode 80 becoming the inner electrode, without any effect on the
efficiency of the cell" (col. 11, 11. 14--23) (bolding omitted). But Ross
provides no indication that the reversed anode-cathode configuration could
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Appeal2014-006529
Application 12/433,214
be implemented in a system such as that suggested by the combination of
Weinberg and Shimko, in which: (1) a cell membrane defines a cathode
chamber and an anode chamber that is substantially larger in volume than
the cathode chamber; and (2) one of the electrodes is positioned in a core
area of the cell (Weinberg Fig. 5, element 26; Shimko Fig. lB, cathode 12).
In Ross, "outer shell 100, inner mesh 102, and the anode 82 are all
cylindrical in shape, have the same or approximately the same height, and
are of approximately the same width" (col. 9, 11. 44--48) (bolding omitted)
and "[b ]y virtue of their similar diameters, the outer cylindrical surface of
inner mesh 102 essentially makes contact all along its surface of outer shell
100, in effect forming cathode 80 as a single physical unit" (col. 10, 11. 1-5).
Thus, although Ross teaches that the positions of the cathode and the anode
may be reversed, it does not overcome the strong teaching away in Shimko
that "the respective surface areas of cathode inner surface 12a and anode
outer surface 16a ideally should have the same 2: 1 ratio, or at least an
approximation thereof, to allow the maximum gas-generation rate for a cell
of given dimensions" (Shimko i-f 33; Fig. lB). As stated by the Appellants,
"[t]he use of only select portions of multiple references to piece together the
claimed invention, while ignoring the remaining disclosures, is not a proper
basis for judging obviousness" (Appeal Br. 26) (citing In re Wesslau,
353 F.2d 238, 241(CCPA1965)).
For these reasons, we do not uphold the Examiner's rejections.
REVERSED
6