Ex Parte Murdoch

Board of Patent Appeals and Interferences

Jul 28, 2008

10320912 (B.P.A.I. Jul. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAREN E. MURDOCH
____________

Appeal 2008-2583
Application 10/320,912
Technology Center 1700
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Decided: July 28, 2008
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1- 6, and 13-19. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.

Appeal 2008-2583
Application 10/320,912

BACKGROUND
The invention relates to an electrochemical device for a gas
production method which acts as a separator for the gaseous components of
gaseous stream, for example, to remove excess hydrogen and water vapor
from methane gas (Spec. 1-2, ¶ [5] ). The electrochemical device can also
act as a water pump (Spec. 2, ¶ ¶ [6]. [10]). Claims 1 and 5 are illustrative:
1. An electrochemical device for a gas production system,
comprising:

a first electrochemical cell that receives a mixed gas stream
from a first feed, the mixed gas stream containing at least a desired
gas, hydrogen and water, wherein the first electrochemical cell
removes at least a portion of the water from the mixed gas stream
such that the mixed gas stream has residual water; and

a second electrochemical cell that receives the mixed gas
stream having the residual water and a dry feed stream from a second
feed, wherein the second electrochemical cell removes the residual
water from the mixed gas stream and wherein the dry feed stream
absorbs the residual water to obtain the desired gas.

5. The electrochemical device of claim 1, further comprising a
third electrochemical cell that receives the dry feed stream after the
dry feed stream has absorbed the residual water from the mixed gas
stream, wherein the third electrochemical cell acts as a metering
device to output the dry feed stream and the residual water in a
metered fashion.

The Examiner relies upon the following references in the rejections of
the claims:
Giner 4,167,457 Sep. 11, 1979
Reiss 4,354,857 Oct. 19, 1982
Hersey 4,829,785 May 16, 1989
McElroy 5,505,824 Apr. 9, 1996

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Claims 1-4, 6, 13, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over McElroy in view of Reiss and Giner. To reject
dependent claims 5, 14, and 16-19 under 35 U.S.C. § 103(a), the Examiner
adds Hersey to the combination of McElroy, Reiss, and Giner.
Appellant does not separately argue with any reasonable specificity
the individual claims rejected in each rejection under 35 U.S.C. § 103(a)
(App. Br. 3-6; Reply Br. 1-3). Therefore, we select independent claim 1 and
dependent claim 5 to decide the issues on appeal.

ISSUES
The main issues raised by this appeal are whether Appellant has
overcome the rejections by showing that the applied reference evidence does
not support the Examiner’s conclusion of obviousness.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) secondary considerations, if
any. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
See also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions
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might be reordered in any particular case, the [Graham] factors continue to
define the inquiry that controls.”)
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See, In
re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740. The Supreme Court
also noted in KSR that an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741.
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).
OPINION
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejection for essentially those
reasons expressed in the Answer, as well as the reasons discussed below.
The Obviousness Rejection of Claims 1-4, 6, 13, and 15
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We choose independent claim 1 to represent this claim grouping1.
We agree with the Examiner’s finding that McElroy teaches an
electrochemical separator to separate hydrogen from a
methane/hydrogen/water vapor mixture, followed by a gravity phase
separator to separate water vapor from the methane/water mixture (McElroy,
e.g., Fig. 2; Ans. 3). We also agree with the Examiner that Reiss teaches
multiple constituents of a gaseous stream may be separated using
electrochemical cells arranged in stages (Reiss, col. 5, ll. 34-41; col. 6, ll. 4-
10; Ans. 4).
Therefore, each of McElroy and Reiss exemplifies well established
techniques for separating gaseous material components. We agree with the
Examiner that to modify McElroy to use a (second) electrochemical
separator as in Reiss, in place of the gravity phase separator, would have
been prima facie obvious. We find that using an electrochemical separator
as in Reiss achieves the predictable result of separating gaseous constituents
and was a known alternative way of separating components of a gaseous
stream versus the gravity separator as taught in McElroy. This is further
bolstered by Reiss’s teaching, as pointed out by the Examiner, that multiple
separators may be used in series to provide separation of other materials
from the same gaseous mixture. Thus, the claimed improvement appears to
be no more than the predictable use of prior art elements according to their
established functions. KSR, 127 S. Ct. at 1739, 1740. Appellant has not
shown that there is more than a predictable result flowing from separating
the water vapor using an electrochemical molecular sieve as in Reiss versus

1 Appellant makes the same argument directed to the same limitation found
in both independent claim 1 and independent claim 13 (Br. 3).
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condensing the water vapor in a heat exchanger followed by a gravity phase
separator as set forth in McElroy.
Appellant has not disputed the Examiner’s findings and conclusion of
obviousness with respect to the teachings of Giner (Ans. 5). Thus, we adopt
the Examiner’s findings and conclusion of obviousness based on the
combined teachings of McElroy, Reiss, and Giner.
Appellant’s first contention is that McElroy does not teach removing a
portion of the water as required in claim 1, and that the capabilities (i.e.,
inherent possession of the functionalities) of an apparatus is only a
consideration in anticipation rejections, not obviousness rejections (App. Br.
3-4; Reply Br. 2). Appellant further argues that there is no motivation to
substitute the electrochemical separator of Reiss for the gravity phase
separator of McElroy since the Examiner’s proposed rationale that it would
achieve a more complete separation is unsupported by any evidence (App.
Br. 4-5; Reply Br. 2). We disagree.
First, the principles of inherency and obviousness are not necessarily
incompatible. See, In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The
inherent teachings of a prior art reference, a question of fact, arises both in
the context of anticipation and obviousness.” (citation omitted)).
Second, it is axiomatic that claims are given their broadest reasonable
interpretation in light of the specification as they would be interpreted by
one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Claim 1 merely recites two electrochemical
cells in series, with each cell described only by functional language. As
such, we are only required to give such language weight to the extent that
the prior art combination is or is not capable of meeting the functional
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limitation. See e.g., In re Schreiber, 128 F.3d 1473, at 1478-1479 (Fed. Cir.
1995) (the functional limitations at issue were found to be inherent in the
prior art reference). Claim 1 recites in pertinent part that “…the first
electrochemical cell removes at least a portion of the water from the mixed
gas stream...” (emphasis provided). This language plainly does not set forth
any minimum portion of water that must be removed.
Appellant’s Specification states that the “…[t]he [electrochemical]
device 106 acts as both a water pump and a hydrogen separator. As is known
in the art, the excess hydrogen can be easily separated from the stream
using an electrochemical cell …To remove excess water from the wet
methane stream 110, the electrochemical device 106 incorporates a second
electrochemical cell …” (Spec. 3, [12],[13]; emphasis provided). The
Specification never defines any minimum amount of water (that is, water
vapor) to be removed in the first cell; rather, it focuses on the ability of the
first cell to remove the hydrogen. Thus, we determine that claim 1
encompasses a first electrochemical cell that is capable of removing as little
as a trace amount of water vapor from the gas stream.
The Examiner found that “…the electrochemical separator of
McElroy would have been capable of …[removing] at least a portion of the
water from the mixed gas stream.” (Ans. 3). At this point, the burden shifts
to Appellant to show that the prior art structure does not inherently possess
the functionality of the claimed apparatus. In re Schreiber at 1478, citing
In re Spada, 911 F.2d at 708 (Fed.Cir. 1990); see also In re Best, 562 F.2d
1252, 1254-55 (CCPA 1976). Appellants have not made any showing, nor
provided any line of technical reasoning, why the prior art structure of the
electrochemical separator of McElroy does not inherently possess the
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functionality recited in claim 1, and hence Appellant fails to meet their
burden of rebutting the prima facie case of unpatentability established by
the Examiner in this regard.
Indeed, Appellant admits that the “typical electrochemical separators”
of the prior art separate out a “little” of the water from the
methane/hydrogen/water vapor mixture (App. Br. 2). The Specification
does not describe how the first electrochemical cell of the claims differs in
any way from the prior art electrochemical cells, or from the electrochemical
cell of McElroy, used to separate hydrogen from methane/hydrogen/water
gas mixture.
Thus, even assuming arguendo that the claim requires that the
electrochemical separator separates out a portion of the water, we determine
that at least a portion of the water vapor would have been so separated out in
McElroy’s electrochemical separator. This is further bolstered by the
Examiner’s discussion of EP 0389263 (Ans. 7) which shows that protonic
pumping of water across the membrane in addition to hydrogen occurs in an
electrochemical cell that appears to be structurally indistinguishable from the
cell taught in McElroy. We again note that a broadest reasonable
interpretation of the claim language “a portion” encompasses removing a
minimum amount, for example as little as .0001%, of the water vapor in the
first cell.
These circumstances support our determination that the
electrochemical separator of McElroy appears to be indistinguishable from
the first electrochemical separator of Appellant’s. Thus, we determine that
the teaching of the electrochemical separator of McElroy that separates the
hydrogen from the methane/hydrogen/water vapor mixture is also sufficient
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to meet the functional claim language that the first electrochemical separator
“removes a portion of the water” (emphasis provided).
Appellant’s further argument, that there is no motivation to substitute
the electrochemical separator of Reiss for the gravity phase separator of
McElroy since the Examiner’s proposed rationale that it would achieve a
more complete separation is unsupported by any evidence (App. Br. 4-5;
Reply Br. 2), is also not persuasive of any error in the Examiner’s
obviousness determination.
First, we do not find it necessary to rely upon the Examiner’s
proposed advantage, namely, “for a more complete separation”, to support
the obviousness of the proposed modification of McElroy, since the claimed
improvement appears to be no more than the predictable use of prior art
elements according to their established functions, as discussed previously.
Second, although not necessary for our decision, we agree with the
Examiner that one of ordinary skill in the art would have appreciated that a
“molecular sieve” separation as taught in Reiss would have resulted in a
more complete (i.e., at a molecular level) separation than a gravity phase
separator (Ans. 4, 8 ).
Appellant has not provided any sound scientific rationale to dispute
the Examiner’s determination that a more complete separation would take
place in an electrochemical cell; rather, they state that the cell (i.e., the
molecular sieve) of Reiss is not capable of separating liquid water from gas.
That argument is not on point, since the Examiner’s proposed modification
includes a gas from gas separation (for example, separating water vapor
from a mixture of methane with water vapor) as discussed previously.
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The obviousness of the proposed combination is supported by the
basic principle that both devices are known alternative separation devices
being used for their intended purpose. Appellant’s claimed invention
appears to be no more than the predictable use of prior art elements (namely,
electrochemical separators) according to their established function (namely,
to separate gaseous components) to solve a known problem (namely, to
remove the hydrogen and water vapor from the methane stream to produce a
dry methane). See KSR, 127 S. Ct. at 1739.
Thus, we fully agree with the Examiner that one of ordinary skill in
the art would have used the familiar alternative gaseous constituents
separation device of Reiss in place of gravity phase separator (along with its
preceding heat exchanger) described in McElroy with the results being
predictable. See KSR, 127 S. Ct. at 1739 (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
While Appellant may be correct that other modifications need to be
made to McElroy, such as removing the heat exchanger 40 (App. Br. 5;
Reply Br. 2), we do not find this persuasive of error. We agree with the
Examiner that one of ordinary skill in the art would have readily appreciated
that an electrochemical molecular sieve that separates components of a
gaseous stream would not require the gaseous component(s) to be cooled
down in a heat exchanger to condense water prior to separation from the
methane, since that would be contrary to the operation and purpose of using
such a separation device. “A person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 127 S. Ct. at 1742. Appellant
has not convinced us that the Examiner reversibly erred in finding that there
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was a reason originating in the prior art to substitute a separation device as
taught by Reiss for the gravity separator with its preceding heat exchanger as
taught by McElroy.
We have considered Appellant’s other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.
Appellant has failed to successfully rebut the prima facie case of
obviousness with argument or evidence of nonobviousness. We note that
Appellant bases no argument upon objective evidence of nonobviousness,
such as unexpected results.
Accordingly, we hereby sustain the rejection under 35 U.S.C. § 103 of
claims 1-4, 6, 13, and 15 over McElroy, Reiss, and Giner.
The Obviousness Rejection of Dependent Claims 5, 14, 16-19
We choose claim 5 to represent this claim grouping. We agree with
the Examiner’s findings of facts based on Hersey and conclusion of
obviousness (Ans. 6, 9).
Appellant contends there is no motivation to make the proposed
combination with Hersey to obtain the claimed third electrochemical cell
required in claim 5. We disagree.
One of ordinary skill in the art is also a person of ordinary creativity,
not an automaton. KSR, 127 S. Ct. at 1742. Thus, to add a known
electrochemical cell “pump” such as taught in Hersey to recycle the streams
(e.g., a hydrogen stream that also contains water vapor) as explained by the
Examiner would have been prima facie obvious to one of ordinary skill in
the art (Ans. 6, 9). Appellant’s argument that one would not use the
electrochemical cell of Hersey to pump liquid water is not on point, since
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the prior art combination as proposed by the Examiner would have resulted
in a gaseous stream of hydrogen and water vapor.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 5,
14, and 16-19 based on the combined teachings of McElroy, Reiss, Giner,
and Hersey.
DECISION
We sustain the Examiner’s § 103 rejection of claims 1-4, 6, 13, and 15
based on the combined teachings of McElroy, Reiss, and Giner.
We sustain the Examiner’s § 103 rejection of claims 5, 14, and 16-19
based on the combined teachings of McElroy, Reiss, Giner, and Hersey.
The Examiner’s decision is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

PL Initial:
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