Ex Parte Swalla et al

Patent Trials and Appeals Board

May 23, 2014

12136383 - (D) (P.T.A.B. May. 23, 2014)

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.
12/136,383 06/10/2008 Dana Ray Swalla 226674-1/YOD
(GELC:0003)
5483
62204 7590 05/23/2014
GE Licensing
ATTN: Brandon, K1-2A62A
1 Research Circle
Niskayuna, NY 12309
EXAMINER
THOMAS, CIEL P
ART UNIT PAPER NUMBER
1754
MAIL DATE DELIVERY MODE
05/23/2014 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 DANA RAY SWALLA,
RICHARD SCOTT BOURGEOIS, STEVEN PARASZCZAK,
and DONALD JOSEPH BUCKLEY
________________

Appeal 2012-011916
Application 12/136,383
Technology Center 1700
________________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-011916
Application 12/136,383

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an electrolyzer and methods for making the
electrolyzer and assembling an electrolyzer stack. Claim 1 is illustrative:
1. A method for forming an electrolyzer comprising:
disposing a heat-generating element adjacent to a surface
of an electrolyzer cell component;
positioning the surface of the electrolyzer cell component
in contact with a surface of an adjoining electrolyzer cell
component; and
heating the heat-generating element to soften the surface
of the electrolyzer cell component and form a fused interface
between the electrolyzer cell components.
The References
Buck (Winkless)1 US 3,450,856 Jun. 17, 1969
Shaw US 4,586,624 May 6, 1986
Roberts US 4,605,475 Aug. 12, 1986
Cuomo US 5,284,566 Feb. 8, 1994
Towe US 6,235,166 B1 May 22, 2001
Clark US 6,524,452 B1 Feb. 25, 2003
Martin US 2005/0058878 A1 Mar. 17, 2005
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
4, 6-8, 10-13, 15, and 18-20 over Clark in view of Shaw, claims 5 and 14
over Clark in view of Shaw and Winkless, claim 9 over Clark in view of

1 The Examiner (final rejection mailed Sep. 21, 2011, p. 10) and the
Appellants (Br. 4) refer to Buck as “Winkless”. For consistency we likewise
do so.
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Shaw and Cuomo, claim 16 over Clark in view of Shaw, Martin, and
Roberts and claim 17 over Clark in view of Shaw and Towe.
OPINION
We affirm the rejections.
The Appellants rely upon the same arguments with respect to
claims 1-4, 6-13, and 15-20 and rely upon the same argument as to the
separate patentability of dependent claims 5 and 14 (Br. 5-15). We therefore
limit our discussion to one claim in each of those groups, i.e., claims 1
and 5. Claims 2-4, 6-13 and 15-20 stand or fall with claim 1, and claim 14
stands or falls with claim 5. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 1
Clark discloses, for use in an electrochemical system which can be an
electrolyzer, a subassembly comprising an electrically insulating polymeric
flow-frame, a bipolar electrode and an ion-selective membrane defining
separate anolyte and catholyte chambers (col. 1, ll. 3-11, 23-27; col. 2, ll. 42-
52; col. 6, ll. 5-13). The subassembly is stackable with other such
subassemblies to form an array of electrochemical cells (col. 3, ll. 45-47).
The perimeters of chamber-defining portions of the stacked flow-frames can
be welded to form an efficient seal which ensures substantial isolation of the
anolyte and catholyte chambers within each flow-frame (col. 4, ll. 7-14).
Shaw economically welds two thermoplastic materials by placing
between them a pair of flat resistance wires encased in a plastic sheath and
passing electrical current through the wires until enough heat has been
generated to weld the materials together (abstract; col. 1, l. 6; col. 2, ll. 16-
30, 57-62).
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The Appellants argue that Shaw is nonanalogous art because it is
directed primarily toward sealing together thermoplastic lids and drums
(col. 1, ll. 6-10), not to the problems associated with complex electrolyzer
structures (Br. 9-10).
The test of whether a reference is from an analogous art is first,
whether it is within the field of the inventor’s endeavor, and second, if it is
not, whether it is reasonably pertinent to the particular problem with which
the inventor was involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA
1979). A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). Shaw pertains broadly to heat sealing together thermoplastic
materials (abstract; col. 1, ll. 6-10) and, therefore, would have commended
itself to the inventor’s attention in considering the inventor’s problem
regarding heat sealing together plastic electrolyzer cells (Spec. ¶¶ 0009-10).
Shaw, therefore, is analogous art.
The Appellants argue that one of ordinary skill in the art would not
have used Shaw’s wires to seal the labyrinthine anolyte/catholyte
passageways within Clark’s flow-frames (abstract; col. 3, ll. 10-18; col. 7,
ll. 11-30) because doing so would block the passageways, thereby rendering
the electrolyzer inoperable and changing the electrolyzer’s principle of
operation (Br. 11; Reply Br. 2-3).
The rejection is based upon using Shaw’s wires to seal the perimeters
of the chamber-defining portions of Clark’s flow-frames, not to seal the
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Application 12/136,383

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labyrinthine anolyte/catholyte passageways (final rejection mailed Sep. 21,
2011, pp. 3-4).
The Appellants argue that Clark’s welding “is akin to sealing the
electrolyzer stack 18 of the present application and not the electrolyzer
cells 36 therein” (Reply Br. 3).
The Appellants’ claim 1 requires fusing the interface between
adjoining electrolyzer cell components. Each of Clark’s stackable
subassemblies comprising a flow-frame, a bipolar electrode and an ion-
selective membrane defining separate anolyte and catholyte chambers
(col. 1, ll. 23-27; col. 2, ll. 42-50) is an electrolyzer cell as that term is used
by the Appellants (Spec. ¶ 0022). Thus, Clark’s flow-frame is an
electrolyzer cell component. Clark’s welding of adjoining flow-frame
perimeters (col. 4, ll. 7-14), therefore, fuses the interface between adjoining
electrolyzer cell components.
Accordingly, we are not persuaded of reversible error in the rejections
of claims 1-4, 6-13, and 15-20.
Claim 5
Claim 5 requires heating by inducing electrical current in a conductor.
Winkless discloses an induction heating method that is useful in many
diverse applications, one of which is heat sealing cartons, and indicates that
resistance heating and induction heating are alternative heating techniques
(col. 1, ll. 14-10, 26-29; col. 1, l. 64 – col. 2, l. 25).
The Appellants argue that one of ordinary skill in the art would not
have replaced Shaw’s resistance heating with Winkless’ induction heating
because Shaw’s desires economy (col. 2, ll. 16-23) whereas induction
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heating may require additional elements that would add complexity and cost
while performing the same function (Br. 13; Reply Br. 4-5).
The Appellants have not provided evidence that induction heating
would add complexity and cost that would prevent one of ordinary skill in
the art from using it as an alternative to Shaw’s resistance heating. The
Appellants have provided mere attorney argument to that effect, and
arguments of counsel cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Hence, we are not convinced of reversible error in the rejection of
claims 5 and 14.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1-4, 6-8, 10-13, 15,
and 18-20 over Clark in view of Shaw, claims 5 and 14 over Clark in view
of Shaw and Winkless, claim 9 over Clark in view of Shaw and Cuomo,
claim 16 over Clark in view of Shaw, Martin, and Roberts and claim 17 over
Clark in view of Shaw and Towe are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

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