Ex Parte Zheng et al

Board of Patent Appeals and Interferences

Feb 24, 2011

11293873 (B.P.A.I. Feb. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YONGCHANG ZHENG, RUSSELL J.
MACDONALD, YUANDER A. JU and KEITH J. SIMS
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Appeal 2010-001421
Application 11/293,873
Technology Center 1700
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8 and 10-15, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001421
Application 11/293,873

The Invention
The Appellants claim a bipolar membrane and a process for making it.
Claims 1 and 14 are illustrative:
1. A process for forming a bipolar membrane, such process
comprising the steps of:
juxtaposing an anion exchange membrane and a cation
exchange membrane in face-to-face contact to form a two-membrane layered
assembly,
current bonding the layered assembly to join the anion
exchange membrane and cation exchange membrane together into a single
bipolar membrane with a layer separation tear strength comparable to or
greater than strength of said anion exchange membrane or said cation
exchange membrane.

14. A bipolar membrane comprising
a first layer of a first substrate having first ion exchange type
a second layer of said first substrate having a second, opposite,
ion exchange type,
the first and second layers being directly in contact with each
other and joined by electrochemical bridge bonding between the first and
second layers formed of said first substrate mediated by a multivalent
catalyst species.

The References
Simons 5,227,040 Jul. 13, 1993
Posar 5,849,167 Dec. 15, 1998
The Rejections
Claims 1-8 and 10-15 stand rejected under 35 U.S.C. § 102(b) or, in
the alternative, under 35 U.S.C. § 103 over Simons and over Posar.
OPINION
We affirm the rejections.

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Application 11/293,873

Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Simons or Posar discloses current bonding an anion
exchange membrane and a cation exchange membrane?2
Findings of Fact
Simons joins anion and cation exchange membranes by pressing them
together either at room temperature or under heat at a temperature below the
onset of deformation or degradation of the membrane (col. 4, ll. 45-50). The
conjoined membrane is placed in an electrodialysis cell with a solution to be
subjected to electrodialysis (col. 4, ll. 54-59; col. 5, ll. 1-3), and
electrodialysis is carried out at a current density of 100 mA/cm2 (col. 5,
ll. 29-32; Examples 1-11, 13, 14, 16) or 50 mA/cm2 (Examples 12, 15),
which are within the Appellants’ range of greater than 15 mA/cm2 (claim 8).
Posar joins anionic and cationic membranes side by side using any
appropriate means, preferably by applying them against each other in the
wet state at low pressure and either room temperature or a higher
temperature below the thermal degradation temperature of the anionic
membrane or the cationic membrane (col. 4, l. 61 – col. 5, l. 6; col. 5, l. 66 –
col. 6, l. 2). The conjoined membrane is used in an electrochemical cell at a
current of 1.0 kA/m2 (100 mA/cm2) which is within the Appellants’ range of
greater than 15 mA/cm2 (claim 8).

2 The Appellants argue that the Examiner does not address certain
limitations in claims 2 and 7 (Br. 14, 17). The Examiner addresses those
limitations in the Examiner’s Answer (Ans. 9-10) and the Appellants do not
argue in their Reply Brief that the Examiner is incorrect.
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Appeal 2010-001421
Application 11/293,873

Analysis
The Appellants argue that Simons’ and Posar’s two membrane layers
are already conjoined by pressing them together and, therefore, cannot be
bonded together using electricity (Br. 10, 15; Reply Br. 1, 3).
The Examiner argues that the Appellants’ Specification (Example 1)
states that the cation and anion exchange membranes are placed in facing
layers as a bipolar laminate and then placed in an electrodialysis cell
wherein current is applied (Ans. 6). The Examiner argues that by definition
a laminate is a union of layers of material by an adhesive or other means.
See id.
The Appellants respond that “Appellants respectfully fail to see the
relevance of the Examiner’s statements relating to the term ‘laminate’ as that
term is not used in the claims” (Reply Br. 2).
The Examiner’s point is that because, like Simons’ or Posar’s anion
and cation exchange membranes, the Appellants’ anion and cation exchange
membranes in the Appellants’ Example 1 are placed in contact with each
other and then subjected in an electrochemical cell to current up to
100 mA/cm2 (Spec. 11) which, as set forth above, is the same as that used by
Simons and Posar, it appears that Simons’ and Posar’s anion and cation
exchange membranes are bonded together in the same manner as those of
the Appellants.
The Appellants argue that “[a]s to membranes bonded together using
electricity being different, Appellant directs attention to pages 2-5 of
Appellant’s specification which outline just some of the example drawbacks
associated with existing devices and page 8, lines 11-22 of Appellant’s
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Application 11/293,873

specification outlines some of the benefits that are associated with bonding
the layers together using electricity as recited in the claims” (Reply Br. 2).
That response to the Examiner’s argument is not well taken because
there is no statement therein that the Examiner’s argument is wrong.
The Appellants state that their anion and cation exchange membranes
“are placed in a two-layered assembly or ‘laminate’” (Spec. 6) and that “the
bond formed between them, which appears somewhat similar to so-called
‘contact bonding’ in the field of polished surfaces of certain solids, involves
an intimate attachment of the surfaces of the two pieces” (Spec. 9). That
disclosure in combination with the Appellants’ disclosed belief that “the
electrical operation increases a field-induced interdiffusion of one sheet into
the other, and/or the formation of bonds, such as ionic bonds, at the
molecular or functional group level”, see id., indicates that the Appellants’
anion and cation exchange membranes are in intimate contact before the
electricity is applied, and that the electricity improves the bond between the
membranes.
Because, like the Appellants’ anion and cation exchange membranes,
Simons’ and Posar’s anion and cation exchange membranes are placed in
what appears to be intimate contact and then are subjected to electricity
within the greater than 30 mA/cm2 electrical current range used by the
Appellants (Spec. 7), i.e., 100 mA/cm2 (Simons, col. 5, l. 30; Posar, col. 6,
l. 22), the conjoined membranes made by Simons’ and Posar’s processes
appear to be the same or substantially the same as those of the Appellants.
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
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Application 11/293,873

showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
See also In re Best, 562 F.2d 1252, 1255 (CCPA 1977):
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. [citation omitted] Whether the
rejection is based on “inherency” under 35 USC 102, on “prima facie
obviousness” under 35 USC 103, jointly or alternatively, the burden
of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.

The Appellants have not carried that burden.
Conclusion
The Appellants have not indicated reversible error in the Examiner’s
determination that Simons or Posar discloses current bonding an anion
exchange membrane and a cation exchange membrane.
DECISION/ORDER
The rejections of claims 1-8 and 10-15 under 35 U.S.C. §§ 102(b)
and 103 over Simons and over Posar 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

tc
SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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