Ex Parte Perry et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201713238921 (P.T.A.B. Feb. 24, 2017) 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. 13/238,921 09/21/2011 Michael L. Perry PA-0014978-US-AA 4791 50811 7590 0""Shea Getz P.C. 10 Waterside Drive, Suite 205 Farmington, CT 06032 EXAMINER CONLEY, OI K ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 02/28/2017 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, and JINLEI DING1 Appeal 2016-000270 Application 13/238,921 Technology Center 1700 Before: CHUNG K. PAK, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 1, 2, 6-19, and 21-23. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is identified as United Technologies Corporation of Hartford, Connecticut. (Appeal Brief, filed March 31, 2015 (“App. Br.”), 3.) 2 Final Office Action mailed October 15, 2014 (“Final Act.”). Appeal 2016-000270 Application 13/238,921 CLAIMED SUBJECT MATTER The claims are directed to a flow battery stack with an integrated heat exchanger. (Spec. ^ 12.)3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A flow battery stack, comprising: a stack of flow battery cells, each flow battery cell comprising an electrode layer that is wet by an electrolyte solution having a reversible redox couple reactant; a manifold comprising a solution passage that circulates the electrolyte solution through the flow battery cells, and a manifold plate, and wherein the solution passage is disposed with the manifold plate; and a heat exchanger comprising a heat exchange fluid passage, wherein the heat exchanger exchanges heat between the electrolyte solution in the solution passage and a heat exchange fluid directed through the heat exchange fluid passage; and wherein the flow battery cells, the manifold and the heat exchanger are connected between a first cover plate and a second cover plate; and wherein the heat exchanger and the manifold are arranged between the first cover plate and the flow battery cell stack. (Claims Appendix, App. Br. 14 (emphases added).) REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Gorbell US 5,486,430 Jan. 23, 1996 Chiang US 2010/0323264 A1 Dec. 23, 2010 3 Application 13/238,921, Flow Battery Stack with Integrated Heat Exchanger, filed September 21, 2011. We refer to the “’921 Specification,” which we cite as “Spec.” 2 Appeal 2016-000270 Application 13/238,921 REJECTIONS Claims 1, 2, 6-8, 13-15, 18, 19, and 21 are rejected under 35 U.S.C. § 102(e) as being anticipated by Chiang. (Final Act. 2.)4 Dependent claims 9-11, 16, 17, 22, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chiang. (Final Act. 6.) Dependent claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Chiang in view of Gorbell. (Final Act. 8.) OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The dispositive issue is whether the prior art device shown in Figure 10 of Chiang is a flow battery stack having a first and a second “cover plate,” “wherein the flow battery cells, the manifold and the heat exchanger are connected between [the] first cover plate and [the] second cover plate” and “wherein the heat exchanger and the manifold are arranged between the first cover plate and the flow battery cell stack” as recited in claim 1. Figure 10 of Chiang is reproduced below: 4 Although the Examiner lists claim 20 in a header as subject to Rejection 1 (Final Act. 2) and Appellants also list claim 20 in a header (App. Br. 9 Section VII A. heading), the record shows that claim 20 has been canceled and is therefore not before us. (See App. Br. 3, 10, 17 (Claims Appendix); see also Final Act. 2.) 3 Appeal 2016-000270 Application 13/238,921 Chiang Fig. 10: “a multi-redox flow cell stack device.” (Chiang 1 229.) In the Final Rejection, the Examiner broadly cites “Fig[sj. 10-12”5 for the claim limitations at issue. (Final Act. 3.) In the Answer, the Examiner specifies that “the manifold and the heat exchanger [being] connected between a first cover plate and a second cover plate” is disclosed by “Fig. 10, 1020, 1019; Fig. 11, Fig. 12, 1211, 1209.” (Ans. 8.)6 The Examiner also specifies in the Answer that because the “claimed manifold [is] synonymous to the connection of 1208 and 1206 at the inlet of the battery” in Chiang and that “the inlet is on and extends into the anode and cathode compartments,” the limitation “wherein the heat exchanger and the manifold are arranged between the first cover plate and the flow battery cell stack” is met. {Id. (emphasis removed).) 5 Figures 11 and 12 of Chiang illustrate “a multi-redox flow cell stack” and “a multi-cell semi-solid flow cell stack design,” respectively. (Chiang 11230, 231.) 6 Examiner’s Answer mailed July 31, 2015 (“Ans.”). 4 Appeal 2016-000270 Application 13/238,921 Appellants argue that electrodes 1019, 1029, 1209, and 1211 of Chiang do not disclose a first and second “cover plate” as recited in claim 1. (Reply 2.)7 Appellants also argue that the prior art heat sink 1028 and manifolds 1110/1115 are not arranged between “the first cover plate” and the flow battery cell stack. (App. Br. 9.) Appellants argue that the prior art heat sink 1028 and manifolds 1110/1115 are instead “substantially integrated with the flow battery cells.” {Id.) “[D] uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). The ’921 Specification does not expressly define the claim term “manifold” and we hold that the term has the following ordinary and customary meaning consistent with the ’921 Specification: “A pipe or chamber having multiple apertures for making connections.” (American Heritage Dictionary; see also Spec. 12, 18, 27- 29, 41, 42, FIGs. 1 & 4 (cited in App. Br. 4).) Although the claim term “cover plate” used in the context of covering a flow battery cell, a manifold, and a heat exchanger in claim 1 is not specifically defined in the ’921 Specification, it is distinguished from other components, including current collectors, that participate in the electrochemical reaction of the flow battery cell 44 {see Spec. ^ 12) in the ’921 Specification. Consistent with such written description in the ’921 Specification, the term has the following broadest ordinary and customary meaning: “A smooth, flat, relatively thin, rigid body of uniform thickness” used to “spread over a surface to protect or conceal something.” (American Heritage Dictionary; see also Spec. 12-14, 30, FIG. 1 (cited in App. Br. 7 Reply Brief filed September 29, 2015 (“Reply”). 5 Appeal 2016-000270 Application 13/238,921 5.).) Thus, we interpret “cover plate” as a smooth, flat, relatively thin, rigid body for concealing, protecting, or covering a stack of flow battery cells, a manifold, and a heat exchanger, without participating in the electrochemical reaction of the flow battery cell. Based on the above interpretation of the claim terms, we find that the Examiner reversibly erred in finding that the prior art electrodes (Chiang’s Fig. 10, cathode 1020 and anode 1019; Fig. 11, Fig. 12, end electrodes 1211 and 1209) constitute the first and second cover plates recited in claim 1. Unlike the electrodes (i.e., anode and cathode) in Chiang, the ’921 Specification discloses that cover plates 24 and 26 do not participate in the electrochemical reaction of the flow battery cell 44. (See Spec. ^ 12, FIG.l.) “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Nevertheless, the Examiner failed to demonstrate that Chiang discloses every limitation of claim 1. Moreover, unless “all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). In this case, even were we to agree with the Examiner that the recited manifold corresponds to Chiang’s manifolds 1017 and 1018 and the recited cover plates correspond to Chiang’s electrodes 1019 and 1020, respectively (Ans. 8-9), manifolds 1017 and 1018 are shown to be outside of electrodes 1019 and 1020 in Figure 10 of Chiang. The arrangement that “the heat exchanger and the manifold are arranged between the first cover plate and 6 Appeal 2016-000270 Application 13/238,921 the flow battery cell stack” recited in claim 1 is therefore also not met by Chiang. As a result, we find that the Examiner reversibly erred in rejecting claim 1 for anticipation. Because claims 2, 6-8, 13-15, 18, 19, and 21 either expressly or through claim dependencies include limitations that are the same as or similar to those discussed above, and the Examiner’s analysis of those claims does not remedy the errors identified above, we likewise reverse the Examiner’s anticipation rejection of claims of claims 2, 6-8, 13-15, 18, 19, and 21. (See App. Br. 9 (these claims stand or fall with claiml).) The Examiner’s obviousness rejections of dependent claims 9-12, 16, 17, 22, and 23 are also reversed as a result of the reversal of the anticipation rejection of the independent claims.8 DECISION The Examiner’s rejection of claims 1, 2, 6-8, 13-15, 18, 19, and 21 under 35 U.S.C. § 102(e) as being anticipated by Chiang is reversed. The Examiner’s rejection of dependent claims 9-11, 16, 17, 22, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Chiang is reversed. The Examiner’s rejection of dependent claim 12 under 35 U.S.C. § 103(a) as being unpatentable over Chiang in view of Gorbell 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). See 37 C.F.R. § 1.136(a)(l)(iv). 8 Appellants raise additional arguments for dependent claim 9. (App. Br. 10-11.) As the rejection of claim 9 is reversed based on its dependency from claim 1, we decline to reach these additional arguments for claim 9. 7 Appeal 2016-000270 Application 13/238,921 REVERSED 8 Copy with citationCopy as parenthetical citation