Ex Parte Shmueli et alDownload PDFPatent Trial and Appeal BoardSep 16, 201613098553 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/098,553 05/02/2011 22440 7590 09/20/2016 GOTTLIEB RACKMAN & REISMAN PC 270 MADISON A VENUE 8THFLOOR NEW YORK, NY 10016-0601 FIRST NAMED INVENTOR Y ehuda Shmueli 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. 5987/002 9023 EXAMINER MENDEZ, ZULMARIAM ART UNIT PAPER NUMBER 1754 NOTIFICATION DATE DELIVERY MODE 09/20/2016 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): patenteaction@grr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YEHUDA SHMUEL!, EITAN SHMUEL!, and DORON SHMUEL! Appeal2015-002033 Application 13/098,553 Technology Center 1700 Before CHUNG K. PAK, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, and 4-17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We cite to the Specification ("Spec.") filed May 2, 2011; Final Office Action ("Final Act.") mailed Nov. 6, 2013; Examiner's Answer ("Ans."); and Appellants' Amended Appeal Brief ("App. Br.") and Reply Brief ("Reply Br."). 2 Appellants identify Maymaan Research as the real party in interest. App. Br. 2. Appeal2015-002033 Application 13/098,553 BACKGROUND The subject matter involved in this appeal relates to a system for generating hydrogen gas. Spec. 1. Claims 1 and 15-the only independent claims-illustrate the subject matter on appeal and are reproduced from the Claims Appendix of the Appeal Brief as follows: 1. A system for producing hydrogen gas used in powering an internal combustion engine of a vehicle, said system compnsmg: a hydrogen reactor having a chamber and a set of electrode plates arranged in a predetermined stacked array within said chamber, said electrode plates including a plurality of positively charged and negatively charged plates disposed in a predetermined spaced position relative to one another to define said predetermined stacked array, a plurality of nozzles arranged and constructed to direct an electrolyte between said set of electrode plates, said electrolyte including water and metallic particles suspended in said water, whereby said hydrogen reactor produces hydrogen gas through electrolytic decomposition of the water; and a delivery pipe collecting said hydrogen for delivery to the internal combustion engine. 15. A system for generating a mixture of oxygen and hydrogen for enriching the fuel in an internal combustion engine by injecting said mixture into an intake manifold of said engine while said engine is running, said system comprising: a reactor formed of a closed chamber, a plurality of parallel plates secured within said chamber, an electrolyte inlet including a plurality of nozzles, an electrolyte outlet and a gas mixture outlet, said nozzles being arranged and constructed to direct jets of an electrolyte under pressure along said plates; a circulator connected to said electrolyte inlet and electrolyte outlet and circulating therebetween, said electrolyte being formed of a water, hydrogen peroxide and a plurality 2 Appeal2015-002033 Application 13/098,553 metallic particles sized and shaped to promote the formation of gas bubbles as said electrolyte flows between said plates; an electric power source connected to some of said plates to charge said plates to one of a positive and negative polarity; and a conduit connecting said reactor to the internal combustion engine; wherein a gas mixture of hydrogen and oxygen is collected at said outlet, said gas mixture resulting from the electrolysis of said electrolyte between said plates, said gas mixture being fed through said conduit to the internal combustion engine. REJECTIONS The Examiner maintained the following grounds of rejection: 3 I. Claims 1, 2, and 5-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Klein, 4 Kim, 5 and Spaziante. 6 II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Klein, Kim, Spaziante, and Tzanavaras. 7 III. Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Klein, Spaziante, and Tzanavaras. 3 Ans. 2-9; Final Act. 4--11. The Examiner withdrew a provisional double patenting rejection. Ans. 9. 4 US 6,866,756 B2, issued Mar. 15, 2005 ("Klein"). 5 US 7,014,740 B2, issued Mar. 21, 2006 ("Kim"). 6 US 4,019 ,968, issued Apr. 26, 1977 ("Spaziante"). 7 US 5,421,987, issued Jun. 6, 1995 ("Tzanavaras"). 3 Appeal2015-002033 Application 13/098,553 DISCUSSION Appellants do not distinguish between Rejections I, II and III in their arguments. App. Br. 2-9; Reply Br. 2-5. Generally, Appellants direct their arguments toward independent claims 1 and 15, and separately argue claim 7. Id. We address each of Rejections I-III in tum. I With regard to Rejection I, we select claim 1 as representative and decide the propriety of Rejection I as to claims 1, 2, 5, 6, and 8-14 based on the representative claim alone. See 37 C.F.R. § 41.37(c)(l)(iv). Separately argued claim 7 is separately addressed. Appellants do not dispute the Examiner's finding that Klein discloses a system for generating hydrogen gas which includes all of the features recited in claim 1, except that Klein does not provide a plurality of nozzles arranged and constructed to direct a metal particle-containing electrolyte between electrode plates. Compare Final Act. 4--5 with App. Br. 2-9; Reply Br. 2-5. Neither do Appellants dispute the Examiner's determination that it would have been obvious to one of ordinary skill, in light of the teachings of Kim, to provide Klein's system with "a forced electrolyte circulating device" including "a plurality of jets" in order to "flow electrolyte under pressure between the electrode plates," and thereby enhance the electrolysis efficiency. Compare Final Act. 5---6 with App. Br. 2-9; Reply Br. 2-5. Appellants argue that the Examiner incorrectly determined that Spaziante would have led one of ordinary skill in the art to add metal particles to the electrolyte used in Klein's hydrogen generator. App. Br. 8- 12. Claims directed to an apparatus must be distinguished from the prior art based on recited structure. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. 4 Appeal2015-002033 Application 13/098,553 Cir. 1997); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) ("[A]pparatus claims cover what a device is, not what a device does."). The material worked upon by an apparatus ordinarily does not limit an apparatus claim. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) ("expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim"). Here, Appellants do not point us to any evidence or claim language that would support a finding that the particle-containing electrolyte is a structural element of the claims, or structurally limits the recited nozzles. To the contrary, the Appellants identify the nozzles only generically as "a plurality of jets or nozzles," Spec. 13, and that it is the metal particles which are to be "dimensioned and configured" for passage through the nozzles, id. at 15. On this record, we are persuaded by the Examiner's reasoning, Ans. 12, that it would have been obvious to provide Klein;s apparatus with Kim;s nozzles, and that such nozzles would have been capable of delivering electrolyte with suitably sized particles. 8 Accordingly, we are persuaded that the Examiner's findings based on Klein and Kim are sufficient to support Rejection I. Because we do not rely upon any teaching from Spaziante in reaching our determination, Appellants' arguments directed to purported deficiencies in the Examiner's reliance on Spaziante are not persuasive. 8 The Examiner identified the particle-containing electrolyte as a non- limiting recitation in the Answer. Appellants do not address this point in their Reply Brief. 5 Appeal2015-002033 Application 13/098,553 Claim 7 Claim 7 depends from claim 1 and recites that, in use, the electrolyte is under "sufficient pressure to sweep gas bubbles formed on at least some of said plurality of electrode plates." The Examiner found, and Appellants do not dispute, that Kim teaches providing a "forced electrolyte circulating device ( 43)" including a "pump ( 41) ... to flow electrolyte under pressure between the electrode plates in order to make the bubbles generated between the electrode plates flow at a rapid speed." Compare Final Act. 5 with App. Br. 2-9; Reply Br. 2-5. Appellants contend that adding metal particles to the circulating electrolyte aids in sweeping bubbles off the electrode plates and improves process efficiency. App. Br. 12. That fact, however, does not refute the Examiner's finding that Kim's electrolyte circulating device would be capable of delivering electrolyte under a pressure sufficient to sweep gas bubbles, as is recited in claim 7. We sustain Rejection I. II Appellants do not present any separate argument against Rejection II. Accordingly, we sustain Rejection II for the same reasons given in connection with Rejection I. III With regard to Rejection III, we select claim 15 as representative and decide the propriety of Rejection III based on the representative claim alone. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner did not rely upon Kim in 6 Appeal2015-002033 Application 13/098,553 support of Rejection III. Instead, the Examiner determined that, in light of Tzanavaras, it would have been obvious to "direct a respective jet of electrolyte toward one of the plurality [of] electrode plates." Final Act. 11 (citing Tzanavaras col. 4, 11. 60-68). Tzanavaras discloses an electroplating apparatus, in which electrolyte jets facilitate turbulent agitation at a substrate surface during an electroplating operation. Tzanavaras, Abstract. The Examiner failed to articulate a reason why one of ordinary skill would have modified Klein's hydrogen generator to include nozzles taught solely in connection with electroplating. For that reason, we do not sustain the Examiner's obviousness determination based on Klein, Tzanavaras, and Spaziante. New Ground of Rejection Each of claims 15-17 is rejected on a new ground under 35 U.S.C. § 103(a) as unpatentable over Klein and Kim. The apparatus recited in claim 15 includes all the features recited in claim 1 and further requires "a circulator connected to said electrolyte inlet and electrolyte outlet," "an electric power source," and a conduit connecting the hydrogen reactor to an internal combustion engine. See App. Br. 14, 16 (Claims Appendix). Claim 16 specifies that some plates are neutral, and claim 17 adds that the reactor, circulator and power source "are sized and shaped for mounting" on the engine. Id. at 17. The above-mentioned features also are recited in claims 6 and 9, which the Examiner rejected under Rejection III and which we sustained, supra, based on the Examiner's findings made in reliance on Klein and Kim. Particularly, in connection with Rejection I, the Examiner found that Klein 7 Appeal2015-002033 Application 13/098,553 teaches a DC power source and a delivery pipe connecting the hydrogen generator to an internal combustion engine. Final Act. 5. The Examiner further found that Kim teaches an electrolyte circulating device to control electrolyte temperature, and that it would have been obvious to provide Kim's circulating device in Klein's reactor for that purpose. Id. These findings are supported by substantial evidence as cited by the Examiner, Final Act. 4---6, and not contested by Appellants, see App. Br. 2-9; Reply Br. 2-5. Accordingly, we find each of claims 15-17 to be unpatentable over Klein and Kim based on the Examiner's undisputed findings regarding those references in connection with Rejection I of claims 6 and 9. CONCLUSION We sustain the Examiner's rejection of claims 1, 2, and 4--14 under 35 U.S.C. § 103(a). We do not sustain the Examiner's rejection of any of claims 15-17 under 35 U.S.C. § 103(a). We enter a new ground of rejection, rejecting claims 15-17 under 35 U.S.C. § 103(a). DECISION The Examiner's decision is affirmed-in-part and a new ground of rejection entered. TIME PERIOD FOR RESPONSE Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides 8 Appeal2015-002033 Application 13/098,553 "Appellant may file a single request for rehearing within two months from the date of the original decision of the Board." In addition to affirming the Examiner's rejection(s) of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 9 Appeal2015-002033 Application 13/098,553 AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 10 Copy with citationCopy as parenthetical citation