Ex Parte KramerDownload PDFPatent Trial and Appeal BoardDec 28, 201613354140 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 13/354,140 01/19/2012 Edward Kramer 127-P0001US 4111 121347 7590 12/30/2016 Tnhnsinn T eaal PT T .P EXAMINER 12545 White Drive Fairfax, VA 22030 WILKINS III, HARRY D ART UNIT PAPER NUMBER 1754 NOTIFICATION DATE DELIVERY MODE 12/30/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@lgjlegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD KRAMER Appeal 2015-007463 Application 13/354,140 Technology Center 1700 Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. JDECISION ON APPEAL1 Appellant2 appeals the Examiner’s final rejection of claims 21, 25, 28, 29, and 36-40. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). 1 In this decision, we refer to the Final Office Action appealed from, mailed September 10, 2014 (“Final Act.”); the Advisory Action dated November 24, 2014 (“Adv. Act.); the Appeal Brief dated February 9, 2015 (“App. Br.”); the Examiner’s Answer to the Appeal Brief dated June 12, 2015 (“Ans.”); and the Appellant’s Reply Brief dated August 5, 2015 (“Reply Br.”). 2 Appellant identifies Edward Kramer as the Real Party in Interest. App. Br. 3. Appeal 2015-007463 Application 13/354,140 We AFFIRM. The Claimed Invention Appellant’s disclosure relates to a water electrolyzer system and water electrolysis method for internal combustion engines. Spec. 12; Abstract. Claim 21 is illustrative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 13): 21. A water electrolyzer comprising: a casing, one or more plate anodes and one or more plate cathodes disposed within said casing and submerged in a solution consisting of distilled water that is filled to a level to forms a headspace above said water level, wherein said casing further comprises: (a) a negative terminal connector that is connected within said casing to said one or more anodes, (b) a positive terminal connector that is connected within said casing to said one or more cathodes, (c) a removable aperture on a top side of said casing, (d) an outlet fitting in said top side of said casing that is in fluid communication with said headspace, (e) an inlet fitting and an outlet fitting on said casing that communicate with a closed loop of tubing disposed within said casing to form thereby a cooling system that is capable of cooling said distilled water in said electrolyzer when cooling liquid is passed through said closed loop tubing, and (f) a controller comprising a temperature sensor that measures water temperature in said casing; wherein said one or more anodes comprises a ruthenium coating over a titanium substrate. 2 Appeal 2015-007463 Application 13/354,140 The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Gotz Kawasaki Brown et al., (hereinafter “Brown”) Klotz Khodabakhsh Finffock et al., (hereinafter “Finfrock”) Senftle et al., Low-voltage DC/AC electrolysis of water using porous graphite electrodes, 55 Electrochimica Acta 5148—5153 (2010) (hereinafter “Senftle”). US 3,990,962 US 4,331,523 US 2007/0163877 Al Nov. 9, 1976 May 25, 1982 July 19, 2007 US 2010/0275859 Al US 2010/0175941 Al US 2011/0220516 Al Nov. 4, 2010 July 15,2010 Sept. 15,2011 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 21 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Brown in view of Kawasaki, Gotz, and Klotz. Final Act. 3. 2. Claims 25,39, and 40 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Brown in view of Kawasaki, Gotz, and Klotz as applied to claims 21 and 29 above, and further in view of Khodabakhsh. Final Act. 5. 3. Claims 28 and 36 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Brown in view of Kawasaki, Gotz, and Klotz as applied to claims 21 and 29 above, and further in view of Senftle. Final Act. 6. 4. Claims 37 and 38 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Brown in view of Kawasaki, 3 Appeal 2015-007463 Application 13/354,140 Gotz, and Klotz as applied to claims 21 and 29 above, and further in view of Finfrock. Final Act. 7. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner’s rejections for the reasons set forth in the Answer to the Appeal Brief and Final Office Action appealed from, which we adopt as our own. We highlight and address specific findings and arguments for emphasis as follows. Rejection 1 Appellant argues claims 21 and 29 as a group. We select claim 21 as representative and claim 29 stands or fall with claim 21. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the combination of Brown, Kawasaki, Gotz, and Klotz suggests a water electrolyzer satisfying all of the limitations of claim 21, and concludes that the combination would have rendered claim 21 obvious. Final Act. 3—5. Appellant argues that the Examiner’s rejection should be reversed because there is no “reasonable expectation from the prior art that one could use a magnet to drive/conduct current through a plate rather than a wire in distilled water rather than an electrolytic solution” and “[njone of the references cited against claims 21 and 29 teach or suggest. . . extended performance under actual conditions without corrosion.” App. Br. 10, 11. Appellant further argues that based on the prior art’s teaching, “those skilled 4 Appeal 2015-007463 Application 13/354,140 in the art would be discouraged from using a ruthenium electrode in an electrolysis system at a neutral pH.” Id. at 6 n. 2. We are not persuaded by Appellant’s arguments. On the record before us, we find that a preponderance of the evidence and sound technical reasoning support the Examiner’s conclusion and finding (Final Act. 3—5) that the combination of Brown, Kawasaki, Gotz, and Klotz suggests all of claim 21’s limitations, including plate anodes and plate cathodes being submerged in a solution of distilled water. Brown, Abstract, Figs. 1, 2, || 29—32, 34, 40; Kawasaki, col. 1,11. 22—33, col. 4,11. 7-42, col. 5,11. 41—55; Gotz, Abstract, col. 1,11. 49-52, col. 2,1. 56-col. 3,1. 2, col. 3,1. 66—col. 4,1. 2; Klotz, Abstract, 135. As the Examiner finds (Ans. 2), and contrary to Appellant’s argument, Brown explicitly teaches that the electrodes could be wire mesh, porous sintered metals, or metal plates or sheets. Brown, 134 (“Preferred electrodes include, but are not limited to metal plate or sheet with holes punched or drilled therethrough, wire mesh, and porous sintered metals.”) (emphasis added). Brown also teaches the use of a permanent “magnet 36” to provide a magnetic field—and not an electromagnet, i.e., a wire with current passing through, as Appellant’s argument suggests. Brown, 123 (“In preferred embodiments, the magnet component comprises a permanent magnet.”); 124 (“Permanent magnets differ from electromagnets in that they do not require any electrical stimulant to generate their magnetic field.”); 1 30 (disclosing that “magnet 36 . . . rests on the bottom of the container 10”). Moreover, as the Examiner correctly points out (Ans. 3), Brown’s apparatus includes the permanent magnet 36 in conjunction with the plate shaped anode and cathodes to provide the magnetic field (Brown, || 23, 24, 5 Appeal 2015-007463 Application 13/354,140 30) and the presence of the magnet is not excluded by the claims. Appellant’s arguments reveals no reversible error in the Examiner’s analysis and factual findings in this regard. We do not find Appellant’s argument that the prior art does not teach or suggest “extended performance under actual conditions without corrosion” (App. Br. 11) persuasive because the alleged “extended performance” is not recited in the claims. Appellant’s argument that “those skilled in the art would be discouraged from using a ruthenium electrode in an electrolysis system at a neutral pH” (App. Br. 6 n. 2) is equally unpersuasive because it is conclusory, and Appellant does not identify sufficient evidence or provide an adequate technical explanation to support it. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, Appellant does not identify any teaching in the cited references which discourages one of ordinary skill in the art from using an anode comprising a ruthenium coating over a titanium substrate as found by the Examiner (Final Act. 4). In re Fulton, 391 F.3d 1195, 1201 (finding that there is no teaching away where the prior art’s disclosure “does not criticize, discredit, or otherwise discourage the solution claimed”); see also Kawasaki, col. 4,11. 7—42, col. 5,11. 41—55. Appellant argues that the claimed invention yields unexpected results. App. Br. 10 n.3. In particular, relying on his declaration, Appellant contends that the: The inventor in the present case has found that distilled water works best in his invention (Kramer Declaration || 13—14) and claimed the device and process accordingly. Such a discovery alone is unexpected and patentable and even more so when combined with the technological deficiencies in the rejections for obviousness. 6 Appeal 2015-007463 Application 13/354,140 Id. We are not persuaded by this argument. De Blauwe, 736 F.2d at 705 (“It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements . . . does not suffice.”). In attempting to overcome a prima facie case of obviousness by showing unexpected results, the burden rests with Appellant to establish: (1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of the invention. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests on he who asserts them”). Appellant has failed to satisfy the requisite burden. Appellant does not identify sufficient evidence to show that there actually is a difference between the results obtained through the claimed invention and those of the closest prior art. In particular, Appellant does not adequately explain or provide data sufficient to show how Brown’s prior art water electrolyzer would have performed or been expected to perform by one skilled in the art if subject to the same testing set forth in the Kramer Declaration and referenced in footnote 3 of the Appeal Brief. Appellant also does not identify sufficient evidence that the alleged difference actually obtained would not have been expected by one skilled in the art at the time of the invention. As the Examiner correctly points out (Ans. 3, 4), Brown teaches that additives such as dissolved metals, chlorine or “other chemicals” cause corrosion of electrodes in water electrolysis and thus, that the absence of electrolytes would have been expected to result in 7 Appeal 2015-007463 Application 13/354,140 reduced corrosion of the electrodes. Brown, 141 (“The water may be treated to remove dissolved metals, chlorine, or other chemicals that could cause degradation, corrosion or otherwise possibly interfere with the functioning or useful lifetime of the apparatus and/or its components.”), 140 (explaining “that an electrolyte is not needed to operate the apparatus as described herein” and that “in certain embodiments, the water does not include any added electrolyte”). Accordingly, we affirm the Examiner’s rejection of claims 21 and 29 under 35 U.S.C. § 103(a) as being unpatentable over the combination Brown, Kawasaki, Gotz, and Klotz. Rejections 2, 3, and 4 In response to the Examiner’s Rejections 2 through 4, stated above, Appellant does not present any additional substantive arguments. Rather, with respect to Rejection 2, Appellant argues that “Khodabakhsh does not fill in the gaps left from the fundamental combination of Brown et al., Kawasaki et al., Gotz and Klotz that were noted above” and that “Khodabakhsh thus fails to provide the required prima facie case of obviousness to sustain the examiner’s rejection of apparatus claim 25 and method of operation claims 39 and 40.” App. Br. 11. Similarly, with respect to Rejection 3 and claims 28 and 36, Appellant states only that the Senftle “reference is silent regarding the fundamental issue of whether one skilled in the art would have found the claimed invention obvious in light of the combined teachings of Brown et al., Kawasaki et al., Gotz and Klotz” and “cannot, therefore, be combined with the other references so as to form a prima facie case for obviousness.” App. 8 Appeal 2015-007463 Application 13/354,140 Br. 11, 12. Also, with respect to Rejection 4 and claims 37 and 38, Appellant asserts only that “Applicant respectfully traverses.” Id. at 12. We do not find Appellant’s arguments persuasive because they are conclusory and, without more, insufficient to establish reversible error in the Examiner’s analysis and findings in this regard. De Blauwe, 736 F.2d at 705. Accordingly, we affirm the Examiner’s Rejections 2, 3, and 4 stated above. DECISION/ORDER The Examiner’s rejections of claims 21, 25, 28, 29, and 36-40 are affirmed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation