Ex Parte Okuyama et al

Patent Trial and Appeal Board

Jun 11, 2013

10584267 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/584,267 06/23/2006 Ryoichi Okuyama KPO-001 5649
32628 7590 06/11/2013
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
WIESE, NOAH S
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
06/11/2013 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 RYOICHI OKUYAMA, YOSHIHIRO YAMAMOTO,
MASASHI MOTOI, and KATSUJI ASHIDA
____________

Appeal 2012-003324
Application 10/584,267
Technology Center 1700
____________

Before PETER F. KRATZ, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/584,267

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 13, 14, 58-66, and 68-76 under 35 U.S.C. § 102(e) as
anticipated by Cropley (US 6,811,905 B1, issued Nov. 2, 2004), and claims 67 and
77 under 35 U.S.C. § 103(a) as unpatentable over Cropley in view of Quang
(US 4,840,783, issued Jun. 20, 1989).2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
“The present invention relates to a method for decomposing fuel comprising
an organic compound into a hydrogen-containing gas at a low temperature, and a
hydrogen generating system based on the method.” (Spec.3 [0001].) Claims 13
and 67 are representative of the invention and are reproduced below from the
Claims Appendix to the Appeal Brief:
13. A hydrogen generating system for generating hydrogen-
containing gas by decomposing fuel containing an organic compound,
the system comprising:
a partition membrane,
a fuel electrode provided on one surface of the partition
membrane,
means for supplying fuel containing an organic compound and
water to the fuel electrode,
an oxidizing electrode provided on the other surface of the
partition membrane,
means for supplying an oxidizing agent to the oxidizing
electrode, and

1 Final Office Action mailed Jan. 4, 2011 (“Final”).
2 Appeal Brief filed May 31, 2011 (“App. Br.”).
3 Specification filed Jun. 23, 2006, as subsequently amended.
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means for collecting hydrogen-containing gas generated on the
fuel electrode and wherein the system is configured to operate in a
plurality of configurations wherein one of said configurations
comprises an open circuit configuration wherein no current is supplied
to either the fuel electrode or the oxidizing electrode,
wherein, in a first closed circuit configuration the oxidizing
electrode and the fuel electrode are connected to means for
withdrawing electric energy from the hydrogen generating cell with
the fuel electrode serving as a negative electrode and the oxidizing
electrode as a positive electrode, and
voltage between the fuel electrode and the oxidizing electrode
is adjusted to 200 to 600 mV by varying volume of electric energy
withdrawn from the hydrogen generating unit so that evolution
volume of the hydrogen-containing gas from the fuel electrode is
adjusted.
67. The hydrogen generating system as described in claim 13
comprising a carbon dioxide absorbing portion for absorbing carbon
dioxide contained in the hydrogen-containing gas.

Rejection of claims 13, 14, 58-66, and 68-76
under 35 U.S.C. § 102(e) as anticipated by Cropley
Appellants’ traversal of this ground of rejection is based on limitations found
in the independent claims, i.e., claims 13 and 14. Accordingly, the remaining
claims subject to this ground of rejection stand or fall with claim 13 or claim 14.
See 37 C.F.R. § 41.37(c)(1)(vii).
The arguments advanced by Appellants raise the following issues for our
consideration:
1. Does a preponderance of the evidence support the Examiner’s findings
that Cropley’s system includes (a) “means for collecting hydrogen-containing gas
generated on the fuel electrode” (claims 13 and 14), (b) “means for withdrawing
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electric energy” (claim 13), and (c) “means for providing external electric energy”
(claim 14)?
2. Does a preponderance of the evidence support the Examiner’s findings
that Cropley’s system is capable of functioning in the manner recited in the
wherein clauses of claims 13 and 14?
We answer both of these questions in the affirmative for the reasons
expressed in the Answer and below.
Figure 1 of the ’267 Application is reproduced below.

Figure 1, above, is a schematic diagram of a hydrogen generating system in
accordance with the invention. (Spec. [0022].)
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The hydrogen generating cell constituting the hydrogen
generating system of the invention is basically composed of a partition
membrane (11), a fuel electrode (12) provided on one surface of
partition membrane (11) and an oxidizing electrode (14) provided on
the other surface of partition membrane as described above. The
element configured as described above may be represented by an
MEA (membrane/electrode assembly) used in a direct methanol fuel
cell.
(Spec. [0104].) Fuel, e.g., methanol, is mixed with water in a fuel control vessel
(21) and supplied to the fuel electrode (12) via feed channel (13). (Id. at [0095].)
Air is supplied to the oxidizing electrode (14) via feed channel (15). (Id.)
The evolution volume of hydrogen-containing gas is adjusted
by providing a voltage controller (22) for monitoring the voltage
(open-circuit voltage or running voltage) of hydrogen generating cell
(10), and by controlling as appropriate the supply volume or
concentration of fuel and air, or the magnitude of electric energy
withdrawn from or provided to the cell based on the monitor result.
Hydrogen-containing gas is allowed to pass through a
gas/liquid separator (23) so that hydrogen-containing gas is separated
from unreacted aqueous solution of methanol, and part or all of the
unreacted aqueous solution of methanol may be returned to fuel
control vessel (21) by means of a circulating means comprising a
guide tube (24).
(Id. at [0102-0103].) The hydrogen gas can be provided “to a fuel cell, hydrogen
storage container, or the like.” (Id. at [0255].) The “means for withdrawing
hydrogen-containing gas . . . is preferably . . . constructed . . . to be able to recover
carbon dioxide as well as hydrogen. . . . [I]t is possible to attach a carbon dioxide
absorbing portion for absorbing carbon dioxide contained in [the] hydrogen-
containing gas to the system by simple means.” (Id. at [0153].) Varying the
energy withdrawn or supplied to the system may be effected using “a constant-
voltage power source, for example . . . [a] potentiostat.” (Id. at [0146].)
Figure 1 of Cropley is reproduced below:
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Cropley Figure 1, above, is a schematic view of a conventional direct methanol
fuel cell (11). (Cropley col. 6, ll. 33-34.)
“Proton exchange membrane 13, anode 15 and cathode 17 together form . . .
a membrane electrode assembly.” (Id. at col. 7, ll. 20-23.) “Fuel cell 11 further
includes an external electrical load 31 connected between anode 15 and cathode
17.” (Id. at ll. 34-35.) Anode chamber 19 is provided with an input port 23 for
receiving a mixture of methanol and water and is additionally provided with an
output port 25 for discharging methanol, water and carbon dioxide. (Id. at ll. 27-
30.) “The carbon dioxide is then typically separated from the methanol/water
mixture, and the methanol/water mixture is then typically recirculated to input port
23 using a pump.” (Id. at ll. 45-48.) “Cathode chamber 21 is provided with an
input port 27 for admitting gaseous oxygen (or air) and is additionally provided
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with an output port 29 for releasing excess oxygen (or air) and water.” (Id. at
ll. 30-33.) “The water may be recovered from the effluent air steam by a water/gas
separator and/or by a condensor.” (Id. at ll. 58-60.)
[T]he fuel cell . . . could alternatively be operated so that pure H2 or a
value-added organic product is generated at the cathode, instead of
water. This may be done by electrochemically oxidizing the fuel at the
anode to form protons, electrons and CO2 and then by providing an
electrical current to the electrochemical cell to pump the protons
through the proton exchange membrane and the electrons through an
external circuit to the cathode of the cell, where the protons are
reduced in the absence of oxygen to form gaseous H2 or, alternatively,
are reacted with a reducible species to produce a hydrogen-containing
species.
(Id. at col. 15, ll. 23-35.)
As an initial matter, we note Appellants do not dispute that Cropley teaches
a system comprising a partition membrane, a fuel electrode, an oxidizing electrode,
and means for supplying fuel and an oxidizing agent as recited in the first five
paragraphs of the bodies of appealed claims 13 and 14. (See generally, App. Br. 6-
11.)
The Examiner finds Cropley describes means, located at the anode (fuel
electrode) side of the fuel cell, for collecting methanol, water, and carbon dioxide
(Ans.4 4.) The Examiner finds this means “would be capable of collecting
hydrogen if it w[ere] generated on this electrode.” (Id. at 5.) The Examiner
similarly finds Cropley’s “electrodes are configured to be part of a circuit, with
electricity flowing from said electrodes to said circuit” (id. at 9) and would be
capable of withdrawing electric energy or providing external electric energy (id. at
9-10). The Examiner further finds Cropley’s system is capable of being operated

4 Examiner’s Answer mailed Aug. 26, 2011.
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in the manner recited in the claims, and capable of generating hydrogen-containing
gas on the fuel electrode. (Id. at 8.)
A claim element that contains the word “means” and recites a function is
presumed to be drafted in means-plus-function format under 35 U.S.C. § 112 ¶ 6.
Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000).
“While a ‘means-plus-function’ limitation may appear to include all means capable
of achieving the desired function, the statute requires that it be ‘construed to cover
the corresponding structure, material, or acts described in the specification and
equivalents thereof.’” In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (quoting
35 U.S.C. § 112 ¶ 6 (emphasis added)). Functional recitations in an apparatus
claim are given weight in that the corresponding prior art structures must possess
the capability of performing the recited function. See Intel Corp. v. U.S. Int’l
Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991).
In certain circumstances functional language may be used to add
limitations to an apparatus claim. See K–2 Corp. v. Salomon S.A., 191
F.3d 1356, 1363 (Fed. Cir. 1999); Wright Med. Tech., Inc. v.
Osteonics Corp., 122 F.3d 1440, 1443–44 (Fed. Cir. 1997). In cases
in which functional language adds a structural limitation to an
apparatus claim, however, it does so because the language describes
something about the structure of the apparatus rather than merely
listing its intended or preferred uses. See, e.g., K–2, 191 F.3d at 1363
(“[T]he functional language tells us something about the structural
requirements of the attachment between the bootie and the base [of an
inline skate] . . . .”).
Textron Innovations Inc. v. Am. Eurocopter Corp., 498 Fed. App’x 23, 28 (Fed.
Cir. 2012) (unpublished).
Appellants argue Cropley’s means for collecting is not functionally
equivalent to Appellants’ claimed means because Cropley’s “‘methanol, water, and
carbon dioxide’ [] are unreacted reactants or wastes [] collected in order to be used
as the DMFC [(direct methanol fuel cell)]” while the hydrogen in Appellants’
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system is “a product [] collected in order to be used as ‘a hydrogen generating
system.’” (App. Br. 9.) We agree with the Examiner’s assessment of this
argument as insufficient to establish that Cropley fails to teach an equivalent
structure for collecting hydrogen-containing gas disclosed in Appellants’
Specification, e.g., “a hydrogen storage container, or the like” (see Spec. [0255]
supra p. 5.) As argued by the Examiner (Ans. 8), Appellants have not provided
persuasive argument or evidence which establishes a difference in the claimed and
Cropley apparatuses/structures used for collecting gases exiting the fuel cells. (Cf.
Reply Br. 3 (arguing, without further explanation, that “‘a means for collecting’
differs if materials to be collected differ”).) Appellants have not refuted the
Examiner’s finding that Cropley’s collection device would be capable of collecting
a hydrogen-containing gas. We determine this finding is reasonable, particularly in
light of Cropley’s disclosure that the device can be operated to produce and collect
different gases, at least on the cathode side, e.g., “pure H2 or a value-added organic
product []generated at the cathode, instead of water.” (Cropley col. 15, ll. 24-27
supra p. 7.)
Appellants argue the Examiner has not set forth specific rationale with
respect to the “means for withdrawing electric energy” (claim 13) and “means for
providing external electric energy” (claim 14). (See App. Br. 10-11; Reply Br. 5.)
We agree with the Examiner that the recited means are not limited to a potentiostat
as suggested by Appellants (see e.g. App. Br. 10 (“the claimed means
(potentiostat)”)). (Ans. 9; Spec. [0146] (“for example . . . [a] potentiostat”) supra
p. 5.) Appellants have not explained why the Examiner erred in finding Cropley’s
“external electrical load 31” (Cropley col. 7, ll. 34-35) is not a structure equivalent
to a constant-voltage power source (i.e., a means for withdrawing and providing
external electric energy (see Spec. [0146] supra p. 5)), and have not provided
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argument or evidence to refute the Examiner’s finding that Cropley’s external
electrical load 31 would be capable of performing the functions recited in the
wherein clauses of claims 13 and 14. (Compare Ans. 9-10 with App. 11 and Reply
Br. 5.) Appellants have not met their burden to explain why the Examiner erred in
finding Cropley’s system would be capable of functioning in both open and closed
circuit configurations as claimed. As the Federal Circuit has explained:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart,
439 F.2d 210, 213 (CCPA1971)).
In sum, for the reasons stated above and in the Answer, we find a
preponderance of the evidence supports the Examiner’s finding of anticipation as
to appealed claims 13 and 14. Accordingly, we sustain the rejection of claims 13,
14, 58-66, and 68-76 under 35 U.S.C. § 102(e) as anticipated by Cropley.

Rejection of claims 67 and 77 under 35 U.S.C. § 103(a)
as unpatentable over Cropley in view of Quang
The arguments advanced by Appellants raise the following issue for our
consideration: does a preponderance of the evidence support the Examiner’s
finding that one of ordinary skill in the art would have been motivated to modify
Cropley’s system to include “a carbon dioxide absorbing portion for absorbing
carbon dioxide contained in the hydrogen-containing gas” (appealed claims 67 and
77) based on Quang’s use thereof in a method of producing hydrogen from
methanol?
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We answer this question in the negative for the following reasons.
The Specification discloses separating the hydrogen-containing gas from the
unreacted aqueous solution of methanol by allowing the gas to pass through a
gas/liquid separator (23). (Spec. [0103] supra p. 5.) The Specification further
states that the “means for withdrawing hydrogen-containing gas . . . is preferably []
constructed [] to be able to recover carbon dioxide as well as hydrogen,” and that
the carbon dioxide can be separated from the hydrogen by attaching “a carbon
dioxide absorbing portion for absorbing carbon dioxide contained in [the]
hydrogen-containing gas.” (Id. at [0153] supra p. 5.)
While Appellants have not refuted the Examiner’s finding that Cropley’s
system could be used to generate a hydrogen-containing gas on the fuel electrode
(see Ans. 5 supra p.7), we agree with Appellants that the Examiner has failed to
identify evidence which establishes one of ordinary skill in the art would have
recognized that Cropley’s system could be used in this manner. (App. Br. 8; Reply
Br. 1-3.) As such, we agree the evidence of record fails to support a finding that
one of ordinary skill in the art would have been motivated to include a carbon
dioxide absorbing device in Cropley since the applied prior art fails to teach or
suggest the presence of hydrogen gas at the output port 25 of Cropley’s anode
chamber 19 (cf. Cropley col. 7, ll. 45-47 (stating that carbon dioxide is separated
from the methanol/water mixture)) and, therefore, a need to separate carbon
dioxide therefrom.
Because the evidence of record fails to support a finding that one of ordinary
skill in the art would have been motivated to modify Cropley’s system to include a
carbon dioxide absorbing portion as claimed in claims 67 and 77, we do not sustain
the rejection of claims 67 and 77 under 35 U.S.C. § 103(a) as unpatentable over
Cropley in view of Quang.
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ORDER
The Examiner’s decision to reject claims 13, 14, 58-66, and 68-76 is
AFFIRMED.
The Examiner’s decision to reject claims 67 and 77 is REVERSED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART

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