Ex Parte Perry et al

Patent Trial and Appeal Board

Dec 19, 2016

13023101 (P.T.A.B. Dec. 19, 2016)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/023,101 02/08/2011 Michael L. Perry PA-0013866-US 7981
50811 7590
0""Shea Getz P.C.
10 Waterside Drive, Suite 205
Farmington, CT 06032
12/21/2016 EXAMINER
DIGNAN, MICHAEL L
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
uspto @ osheagetz. com
shenry @ osheagetz. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL L. PERRY, ARUN PANDY, RACHID ZAFFOU, and
CRAIG R. WALKER
Appeal 2015-007250
Application 13/023,101
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5, 6, 9, 13, 15, 17, 19, and 21 through 24.1 We have jurisdiction
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellants’ invention is generally directed to a flow battery. App. Br.
4.
1 Claim 26 stands withdrawn from consideration. Final Office Action
entered November 18, 2014 (“Final Act.”), 2.
Appeal 2015-007250
Application 13/023,101
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A flow battery, comprising:
a plurality of adjacent flow battery cells, each comprising:
a first electrode and a second electrode;
a membrane having an area specific resistance of less
than approximately four hundred twenty five milliohms -
square centimeter across the membrane, and a thickness of less
than approximately one hundred twenty five micrometers,
wherein the membrane is configured to transfer ionic current
between the first electrode and the second electrode at a current
density greater than one hundred milliamps per square
centimeter; and
a solution having a reversible redox couple reactant,
wherein the solution wets the membrane.
App. Br. 12, Claims Appendix.
Appellants (see generally App. Br.) request review of the Examiner’s
final rejection of claims 1, 3, 5, 6, 9, 13, 15, 17, 19, and 21—24 under
35 U.S.C. § 103(a) as unpatentable over Kageyama et al. (US 5,656,390,
issued August 12, 1997, hereinafter “Kageyama”), Chen et al., Sulfonated
Poly(fluorenyl ether ketone) Membrane with Embedded Silica Rich Layer
and Enhanced Proton Selectivity for Vanadium Redox Flow Battery, 195 J.
Power Sources 7701 (2010) (hereinafter “Chen”), Denton (EP 0 875 524 A2,
published November 4, 1998, hereinafter “Denton”), Luo et al., Preparation
and Characterization of Nafion/SPEEK Layered Composite Membrane and
its Application in Vanadium Redox Flow Battery, 325 J. Membrane Science
553 (2008) (hereinafter “Luo”), and Home et al. (US 2010/0003545 Al,
published January 7, 2010, hereinafter “Home”).
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Application 13/023,101
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of claims 1, 3, 5, 6, 9,
13, 15, 17, 19, and 21—24 under 35 U.S.C. § 103(a). We add the following.
Claims 1, 3, 5, 6, 13, 15, 17, 19, and 21—242
Appellants’ Specification explains that a typical flow battery contains
a stack of flow battery cells that each include an ion-exchange membrane
that is disposed between negative and positive electrodes. Spec. 13. The
Specification further explains that during operation of a conventional flow
battery, a catholyte solution flows through the positive electrode, an anolyte
solution flows through the negative electrode, and the catholyte and anolyte
solutions each electrochemically react in a reversible reduction-oxidation
(“redox”) reaction. Id. Appellants’ Specification indicates that conventional
ion-exchange membranes for redox flow batteries are permeable to certain
non-redox couple reactants in the catholyte and anolyte solutions to facilitate
the electrochemical reactions, but can also be permeable to redox couple
reactants (called “crossover”), which decreases the overall energy efficiency
of the batteries. Spec. 14. According to Appellants’ Specification, the
permeability of an ion-exchange membrane is typically inversely related to
its thickness, with thicker membranes reducing or eliminating redox couple
reactant crossover, and thus decreasing the overall energy inefficiency of
flow batteries. Spec. 1 5.
2 Appellants argue claims 1,3, 5, 6, 13, 15, 17, 19, and 21—24 together. See
generally Appeal Brief. Therefore, we select claim 1 as representative, and
claims 3, 5, 6, 13, 15, 17, 19, and 21—24 will stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Application 13/023,101
The Examiner relies on numerous prior art references for their
disclosure of the properties and characteristics of ion-exchange membranes
used in redox flow batteries and electrochemical devices.3 Specifically, the
Examiner relies on Kageyama’s disclosure of a redox flow battery that
comprises a plurality of cells that each include positive and negative
electrodes on opposite surfaces of an ion exchange membrane and positive
and negative electrolytic solutions. Final Act. 3^4; Kageyama col. 1,11. 4—6;
col. 3,11. 28-41; col. 4,11. 12—23. Kageyama discloses that the redox flow
battery operates at a current density of 120 mA/cm2 or more. Kageyama col.
3,11. 16-19.
The Examiner also relies on Denton’s disclosure of a composite ion
exchange membrane for an electrochemical cell that comprises a porous
substrate embedded with an ion-conducting polymer. Final Act. 5—6;
Denton col. 1,11. 3—16; col. 3,11. 4—13. Denton discloses that the ion
exchange membrane can be used in any electrochemical device, such as a
battery, and exemplifies membranes comprising glass fiber/microfiber
substrates embedded with Nafion® (a copolymer of tetrafluoroethylene and
perfluoro-3,6-dioxa-4-methyl-7-octene-sulfonic acid) having thicknesses of
70 pm (Example 2) and 59 pm (Example 3). Denton col. 1,11. 3—16; col. 8,
11. 19-22; col. 9,11. 8—27; col. 9,1. 40-col. 10,1. 5. Denton discloses that
these exemplified ion exchange membranes were formed into membrane
electrode assemblies, which were evaluated at current densities ranging from
1 to 1500 mA/cm2. Denton col. 9,11. 28—36; col. 10,11. 7—13; Figs. 3 and 4.
Denton further exemplifies an ion exchange membrane comprising a quartz
3 For a complete recitation of the Examiner’s findings and statement of the
Examiner’s rejection, see the Final Office Action at pages 3—6.
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microfiber substrate embedded with Nafion® having a thickness of 80 pm,
and discloses that when this membrane was included in a membrane
electrode assembly of an electrochemical cell that was operated at a current
of 113 mQ-cm2. Denton col. 11,11. 3—31, 44—58.
The Examiner relies on Chen’s disclosure that the coloumbic
efficiency of a redox flow battery at high current density is affected by the
resistance of the battery’s ion exchange membranes (Chen 7707), which the
Examiner determines suggests that low resistance membranes beneficially
improve the efficiency of redox flow batteries. Final Act. 5.
The Examiner relies on Home’s disclosure of a membrane for a redox
flow battery that has an area specific resistance of 200 mQ-cm2 (Final Act.
5; Home till) and Luo’s disclosure of a Nafion®/sulfonated poly(ether
ketone) composite membrane useful for redox flow batteries that has a
thickness of 100 pm. Final Act. 5—6; Luo Abstract, Table 1.
As discussed above, the Specification teaches that the thickness of
ion-exchange membranes used in redox flow batteries affects the
membranes’ permeability to redox couple reactants, and ion-exchange
membrane thickness was thus a known, result-effective variable at the time
of Appellants’ invention. Spec. 1 5. In re Applied Materials, Inc., 692 F.3d
1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property
[or a result] is affected by the variable is sufficient to find the variable result-
effective.”).
We find no reversible error in the Examiner’s determination that the
combined disclosures of the applied prior art reasonably would have
suggested a flow battery as recited in claim 1 to one of ordinary skill in the
art at the time of the invention. Final Act. 5—6. In other words, one of
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ordinary skill in the art would have recognized from Chen’s disclosure that
ion-exchange membranes exhibiting low resistance improve the efficiency
of redox flow batteries, one of ordinary skill in the art reasonably would
have been led to use an ion exchange membrane having a low area specific
resistance, such as an ion exchange membrane as disclosed in Denton, in a
redox flow battery having a plurality of flow cells, such as the battery
described in Kageyama, particularly in view of Denton’s disclosure that the
ion exchange membrane can be used in any electrochemical device,
including a battery. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)(“[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”).
Determining the optimum thickness of the membrane, such as the
thickness recited in claim 1, would have been well within the ambit of one of
ordinary skill in the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[Discovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”). One of ordinary skill in the
art would have reasonably expected that when operating such a redox flow
battery having an ion-exchange membrane as suggested by Denton with the
optimal thickness at a current density as disclosed by Denton, which
overlaps the range recited in claim 1, that the ion exchange membrane would
have low area specific resistance as disclosed in Denton, and as recited in
claim 1.
Appellants argue that Kageyama does not disclose a redox battery that
includes a membrane having an area specific resistance of less than 425
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mOxm2 as recited in claim 1. App. Br. 6. However, we find this argument
lacking in persuasive merit because the Examiner acknowledges that
Kageyama lacks this explicit teaching, and cites to Home’s disclosure that
membranes for redox flow batteries having an area specific resistance of less
than 425 mQ-cm2 as recited in claim 1 were known in the art at the time of
the invention. Final Act. 4—5. In addition, as discussed above, Denton
discloses an ion exchange membrane for an electrochemical cell having a
thickness of 80 pm that exhibited an area specific resistance 113 mQ-cm2 at
a current density of 538 mA/cm2.
Appellants also argue that Chen provides no disclosure of area
specific resistance, and contend that it is unclear how Chen’s disclosure of a
multilayer membrane having a particular area, and separate disclosure of
membrane resistance values, could result in disclosure of an area specific
resistance. App. Br. 7. Appellants also argue that the membrane thicknesses
listed in Table 3 of Chen are outside the range recited in claim 1. Id.
However, we find these arguments unpersuasive of reversible error
because the Examiner relies on Chen’s suggestion that low resistance ion-
exchange membranes beneficially improve the efficiency of redox flow
batteries. Final Act. 5. In addition, the Examiner acknowledge that Chen
discloses membranes having a thickness outside the range recited in claim 1,
but relies on Chen for providing evidence that it was known in the art to vary
the thickness of ion-exchange membranes for redox flow batteries. Final
Act. 6.
Appellants also argue that Home teaches away from using the same
type of membrane in each cell within a flow cell stack, citing to paragraph
65 and Figure 6 of Home in support of this argument. App. Br. 8. However,
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Application 13/023,101
although paragraph 65 of Home describes the performance of a conventional
redox flow cell stack that apparently contained the same ion-exchange
membrane in each cell, and indicates that the performance of this flow cell
stack was “poor,” this characterization does not negate the fact that such a
conventional flow cell stack is still suitable for use in a redox flow battery.
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“That the ’813 patent discloses a multitude of effective combinations does
not render any particular formulation less obvious. This is especially tme
because the claimed composition is used for the identical purpose.”).
Appellants also argue that Denton is from a different field of endeavor
than the claimed flow battery because Denton discloses membranes for fuel
cells, and one of ordinary skill in the art would have recognized that a
membrane for a fuel cell could not be successfully used in a flow battery.
App. Br. 9. However, Denton discloses ion-exchange membranes that
comprise a substrate coated with Nafion®, and Chen, Luo, and Home all
disclose that Nafion® ion-exchange membranes are suitable for use in redox
flow batteries. Denton col. 9,11. 24—26, 52—53; col. 11,11. 17—18; Chen
Abstract, 7705—7707; Luo 556—557; Home 151. In addition, Denton
explicitly discloses that the ion-exchange membrane of Denton’s invention
is not limited to use in a fuel cell, and can be used in electrochemical devices
such as batteries. Denton col. 8,11. 19-22; col. 1,11. 3—16. As discussed
above, in view of the state of the art at the time of the invention, one of
ordinary skill in the art would have reasonably expected that a redox flow
battery having an ion-exchange membrane as suggested by Denton whose
thickness is optimized through routine experimentation, would have the low
area specific resistance disclosed in Denton, as recited in claim 1, when
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Application 13/023,101
operated at the current density disclosed in Denton, which overlaps the range
recited in claim 1.
Appellants further argue that Luo discloses a composite membrane for
a battery system that exhibits an area specific resistance far greater than the
area specific resistance recited in claim 1 when the battery is operating at a
current density well below that recited in claim 1. App. Br. 9. We find this
argument unpersuasive of reversible error because the Examiner relies on
Luo for providing further evidence that it was known in the art to vary the
thickness of ion-exchange membranes for redox flow batteries. Final Act.
5-6.
We accordingly sustain the Examiner’s rejection of claims 1, 3, 5, 6,
13, 15, 17, 19, and 21-24 under 35 U.S.C. § 103(a).
Claim 9
Claim 9 depends from claim 1 and recites that the membrane is
permeable to a non-redox couple reactant within the solution having a
reversible redox couple reactant. Appellants argue that Kageyama fails to
disclose a membrane that is permeable to a non-redox couple reactant. App.
Br. 10. However, as discussed above, Appellants’ Specification indicates
that ion-exchange membranes used in redox flow batteries were known in
the art at the time of the invention to be permeable to non-redox couple
reactants in the catholyte and anolyte solutions. Spec. 14. Appellants’
arguments regarding Kageyama are therefore unpersuasive of reversible
error, and we accordingly sustain the Examiner’s rejection of claim 9 under
35 U.S.C. § 103(a).
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ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner 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)(1).
AFFIRMED
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