Ex Parte Logan et alDownload PDFPatent Trial and Appeal BoardSep 15, 201612649945 (P.T.A.B. Sep. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/649,945 12/30/2009 Bruce Logan 25006 7590 09/19/2016 DINSMORE & SHOHL LLP 900 Wilshire Drive Suite 300 TROY, MI 48084 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. PST-44902/36 6442 EXAMINER ARCIERO, ADAM A ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 09/19/2016 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): docket@patlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE LOGAN, DOUGLAS CALL, MATTHEW MERRILL, and SHAOAN CHENG Appeal2015-003147 Application 12/649,945 Technology Center 1700 Before: CHUNG K. PAK, PETER F. KRATZ, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134 from a rejection2 of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as The Penn State Research Foundation (Appeal Brief, filed June 23, 2014 ("App. Br."), 1.) 2 Final Office Action mailed January 30, 2014 ("Final Act.") Appeal2015-003147 Application 12/649,945 CLAIMED SUBJECT MATTER "The invention relates to cathodes used in microbial fuel cells (MF Cs), which are used for producing electricity; and microbial electrolysis cells (MECs ), which are used to produce hydrogen." (Spec. iJ 6. )3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus, comprising: a reaction chamber having a wall defining an interior of the reaction chamber and an exterior of the reaction chamber; exoelectrogenic bacteria disposed in the interior of the reaction chamber; an aqueous medium having a pH in the range of 3-9, inclusive, the aqueous medium comprising an organic substrate oxidizable by exoelectrogenic bacteria, the aqueous medium disposed in the interior of the reaction chamber; an anode at least partially contained within the interior of the reaction chamber; and a brush or mesh cathode comprising stainless steel, nickel or titanium, the cathode at least partially contained within the interior of the reaction chamber. REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Logan Tomita US 2006/0011491 Al US 200710196722 A 1 Jan. 19,2006 Aug. 23, 2007 3 Application 12/649,945, Cathodes for Microbial Electrolysis Cells and Microbial Fuel Cells, filed December 30 2009. We refer to the '"945 Specification," which we cite as "Spec." 2 Appeal2015-003147 Application 12/649,945 REJECTIONS4 Claims 1-17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Logan and Tomita. (Ans. 3.) Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1--4 and 6-29 of U.S. Patent No. 7,491,453 in view of Tomita. (Id. at 7.) OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The dispositive issue in this appeal is whether the Examiner has shown that a "mesh cathode" is present in or would have been obvious in view of the applied prior art. (See App. Br. 3.) It is undisputed that Logan teaches every limitation of claim 1 except a "mesh cathode." (See App. Br. 2-3.) The Examiner finds that Tomita discloses a fuel cell having "first and second cathodes" which "may be formed" from "porous metallic materials" such as "foamed metal or alloy prepared from nickel, copper, silver, gold, nickel-chrome alloy, and stainless steel." (Final Act. 3 (citing various portions of Tomita including iJ 25).) Finding that the claim limitation "mesh cathode" is not defined in the '945 Specification and that the recited "mesh cathode" and the prior art foamed 4 Examiner's Answer mailed November 10, 2014 ("Ans."). The Examiner has withdrawn the indefiniteness rejection of claims 9 and 16 and they are therefore not subject to this appeal. (See Ans. 6.) Examiner's Answer mailed November 10, 2014 corrects a previous version mailed October 23, 2014 which contains an incorrect filing date of Appellants' Brief. (See PT0- 90C form attached to Ans.) 3 Appeal2015-003147 Application 12/649,945 metal are "both ... porous structures," the Examiner concludes that a skilled artisan would have found the claim obvious. (Ans. 8.) Because neither the '945 Specification nor Appellants defines the claim term "mesh cathode," we apply the broadest reasonable interpretation of claim terms, consistent with the specification, as would be understood by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations omitted). Where, as here, the Specification does not explicitly define a term, the term should be given its ordinary meaning consistent with the Specification. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In this case, the '945 Specification provides that a mesh cathode such as "titanium mesh cathode 30" includes"[ w ]ires 32." (Spec. ,-i 86.) Figure 3 illustrating a cross section view of titanium mesh cathode 30 is reproduced below. 34 30 Figure 3 4 Appeal2015-003147 Application 12/649,945 Figure 4 of the '945 Specification, illustrating "a tubular embodiment of a stainless steel, nickel or titanium mesh cathode" 50 in which the "mesh is shown at 56" is also reproduced below. (Id. iii! 32, 89.) FIG. 4 Consistent with the texts and drawings in the '945 Specification, the claim term "mesh" is ordinarily understood to mean "an interwoven or interlocked structure." (See Academic Press Dictionary of Science & Technology, 1992.) Given the ordinary meaning of this term and the fact that the Examiner has not explained why the prior art "foamed metal" would have suggested a metal "mesh" - "an interwoven or interlocked structure" of metal - to the skilled artisan, we find that the Examiner committed reversible error in rejecting claim 1 on this basis. 5 Appeal2015-003147 Application 12/649,945 To the extent that Tomita additionally teaches using "a mesh of metal such as titanium" to form a current collector of a fuel cell (Tomita iJ 53 (cited in Ans. 8)), the Examiner has not explained why a titanium mesh current collector would have suggested to a skilled artisan a titanium mesh cathode as recited in claim 1. The Examiner argues that Example 6 of the '945 Specification shows that a "cathode" should be defined "as including a current collector (stainless steel mesh, SS)" to form "a single cathode structure." (Ans. 8 (citing Spec. iJ 233).) The Examiner, however, does not explain why his definition is consistent with other embodiments in the '945 Specification which do not expressly include a current collector as part of a single cathode structure. We accordingly decline to read into claim 1 the particular embodiment of Example 6. We further note that Tomita teaches using "foamed nickel, foamed stainless steel" for forming a cathode as well as using "a mesh of metal such as titanium" for forming a current collector. (Tomita iii! 25, 53 (cited in Ans. 8).) Tomita's disclosure of "foamed metal" and metal mesh as distinct terms for distinct parts of a fuel cell indicates that they are different structures each serving a unique purpose in Tomita's fuel cell. Appellants do not argue that the double patenting rejection is in error and express a willingness to file a terminal disclaimer. (App. Br. 4.) The obviousness-type double patenting rejection is therefore summarily affirmed. DECISION The Examiner's obviousness rejection of claims 1-17 is reversed. The Examiner's double patenting rejection of claims 1-17 is affirmed. 6 Appeal2015-003147 Application 12/649,945 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation