Fedorov, Andrei G. et al.

Patent Trials and Appeals Board

Mar 24, 2020

14669583 - (D) (P.T.A.B. Mar. 24, 2020)

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.
14/669,583 03/26/2015 Andrei G. Fedorov 62021-1190 2626
24504 7590 03/24/2020
THOMAS | HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
CALL, DOUGLAS BRYANT
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
03/24/2020 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):
docketing@thomashorstemeyer.com
ozzie.liggins@tkhr.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ANDREI G. FEDOROV and DAVID M. ANDERSON1

Appeal 2019-000611
Application 14/669,583
Technology Center 1700

Before ROMULO H. DELMENDO, MICHELLE N. ANKENBRAND, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–35. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of producing H2 using
variable volume reactors. E.g., Spec. 1; Claim 1. Claim 1 is reproduced
below from page 10 (Claims Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Georgia
Tech Research Corporation. App. Br. 2.
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1. A method of generating H2 in a variable volume reactor,
comprising a cycle with the following steps executed in
sequence:
a) introducing a hydrocarbon fuel and a gas at a ratio into the
variable volume reactor;
b) causing the fuel and gas to react with assistance of a
catalyst to produce H2 and CO2 products;
c) increasing a rate of fuel conversion reaction by actively
decreasing a volume of the variable volume reactor,
wherein H2 permeates through a selectively H2 permeable
membrane and is removed from the variable volume
reactor, wherein CO2 is adsorbed by a sorbent material;
d) increasing the volume of the variable volume reactor
causing the CO2 to be desorbed from the sorbent material
by decreasing the partial pressure of CO2; and
e) decreasing the volume of the variable volume reactor
causing the CO2 to be flowed out of the variable volume
reactor through a valve.
ANALYSIS
The claims stand rejected under 35 U.S.C § 103 as unpatentable over
the combination of Damm,2 Halabi,3 and Boulet.4 The Appellant argues the
claims as a group. We select claim 1 as representative, and the remaining
claims will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

2 David L. Damm & Andrei G. Fedorov, Comparative Assessment of Batch
Reactors for Scalable Hydrogen Production, 47 Ind. Eng. Chem. Res. 4665
(2008).
3 M.H. Halabi et al., A novel catalyst-sorbent system for an efficient H2
production with in-situ CO2 capture, 37 Int’l J. Hydrogen Energy 4987
(2012).
4 US 2014/0137780 A1, published May 22, 2014.
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After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated February 7, 2018, and in the Examiner’s Answer.
The Examiner finds, inter alia, that Damm teaches a method of
producing H2 using a variable volume reactor that has steps corresponding to
most of the claimed steps. Final Act. 3–4. As to step (c), the Examiner
finds that “Damm does not disclose providing a sorbent into which CO2 is
adsorbed.” Id. at 4. The Examiner finds, however, that Halabi “teaches that
co-generated CO2 [during H2 production] can be selectively removed from
the product gas mixture by an efficient sorbent material which provides
efficient H2 production with in situ CO2 capture.” Id. The Examiner
further finds that “[s]orption enhanced catalytic reforming,” as Halabi
discloses, “circumvents thermodynamic equilibrium limitations and can
significantly improve CH4 conversion and H2 purity at lower temperature
and using much smaller reactor size.” Id. (citing Halabi at 4987–88, 4995).
The Examiner determines that it would have been obvious to control the
concentration of CO2 in Damm’s reactor by using a sorbent such as that
Halabi discloses to optimize thermodynamic equilibrium of the reaction. Id.
As to steps (d) and (e), the Examiner finds that “Damm does teach
increasing reactor volume and Halabi teaches regenerating the sorbent by
pressure swing operation,” but that the references “do not teach increasing
the volume of the reactor to desorb CO2 by decreasing partial pressure of
CO2 before decreasing volume to flow CO2 out of the reactor.” Id. at 4–5
(internal citation omitted). However, the Examiner finds that Boulet
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“teaches that carbon dioxide can be desorbed from an adsorbent material by
at least one of thermal swing desorption, pressure swing desorption or partial
pressure swing desorption (PPSA), [the] PPSA process being where the
desorption step is driven by the swing or differen[ce] in partial pressure or
concentration of the adsorptive gas component.” Id. at 5. The Examiner
finds that it would have been obvious to use the known PPSA method of
desorption to desorb CO2 from the sorbent of Damm as modified by Halabi
to regenerate the sorbent material, “followed by then decreasing the volume
of the reactor to flow the CO2 out of the reactor.” Id.
In view of those and other findings less material to the issues on
appeal, the Examiner concludes that the subject matter of claim 1 would
have been obvious to a person of ordinary skill in the art.
The Appellant first argues that “the Examiner has not provided a
reasonable explanation for why one of ordinary skill in the art would have
been motivated to replace the carbon dioxide selective membrane [of
Damm] with a carbon dioxide sorbent.” App. Br. 7.
That argument is not persuasive. Not every embodiment of Damm
includes a CO2 selective membrane. For example, the uppermost figure of
page 4667 includes a permeable H2 membrane rather than a CO2 selective
membrane. The accompanying text of Damm indicates that, in that
embodiment, rather than using a carbon dioxide selective membrane, “the
exhaust valve is opened and the piston pushes the remaining mixture (mainly
preconcentrated CO2) out of the chamber.” Damm at 4667. Damm
describes a “CO2 selective” membrane as an optional modification. Id. We
do not understand the Examiner to be proposing the replacement of a carbon
dioxide permeable membrane in Damm; we understand the Examiner to be
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proposing the use of a carbon dioxide sorbent to improve reaction rates in an
embodiment of Damm that does not include a means of removing carbon
dioxide during the reaction.
The Examiner finds that a person of ordinary skill in the art would
have been motivated to use a material that adsorbs CO2 in Damm to
optimize the thermodynamic equilibrium of Damm’s reaction by reducing
the amount of CO2 in Damm’s reactor, thereby “significantly improv[ing]
CH4 conversion and H2 purity.” Final Act. 4. As the Examiner explains in
the Answer, Damm itself “discloses that the key operating principles of a
membrane reactor is to enhance the reaction rate and shift the reaction
equilibrium in a favorable direction by selectively removing the reaction
product(s) from the reaction chamber.” Ans. 15; see Damm at 4665. Damm
specifically teaches removal of H2, and the Examiner finds that “[i]t is
known by the ordinary skilled artisan that . . . removal of both products
(hydrogen and carbon dioxide) from the reaction mixture would further
improve the overall process yield (efficiency).” Ans. 15–16 (citing Damm at
4666); see also Halabi at 4987 (disclosing use of a CO2 sorbent in an H2
production process to improve the thermodynamics of the process). The
Examiner’s proposal of using Halabi’s sorbent to accomplish that goal
appears to be the use of a known element (CO2 sorbent) according to its
established function with predictable results. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416–21 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
In the Reply Brief, the Appellant for the first time disputes the
Examiner’s finding that Halabi teaches that its method “circumvents
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thermodynamic limitations and can significantly improve CH4 conversion
and H2 purity.” Reply Br. 3; see also Final Act. 4 (making the finding that
the Appellant addresses for the first time in the Reply Brief). Specifically,
the Appellant argues that, because conversion of methane to hydrogen yields
four moles of H2 for each mole of CO2, removal of “only” CO2 from the
reactor would not have a significant effect on the reaction thermodynamics.
Id. (“[R]emoval of only CO2 by adsorption (as taught by Halabi) would not
produce a substantial effect on CH4 conversion.”).
The Appellant’s argument is untimely because the Appellant did not
present it in the Appeal Brief, and the Appellant has not attempted to show
good cause for presenting it for the first time in the Reply Brief. See 37
C.F.R. § 41.41(b)(2). Even if it were timely, however, it would not be
persuasive because the Appellant fails to dispute that removing CO2 would
improve Damm’s reaction thermodynamics to at least some extent.
Additionally, the Examiner is not proposing the removal of “only” CO2 from
Damm’s reactor, see Reply Br. 3; as discussed above, the Examiner’s
proposal would result in a reactor that removes both H2 and CO2 during the
reaction.
The Appellant also argues that the Examiner’s proposed modification
“involves a complete redesign of [Damm’s] reactor and process.” App.
Br. 7; Reply Br. 4. That argument is not persuasive because, as set forth
above, the prior art teaches or suggests the desirability of the changes to
Damm’s reactor and process, and the Appellant fails to persuasively argue
that redesign of Damm’s reactor to achieve the desirable results the prior art
indicates would have been beyond the ordinary level of skill in the art.
Damm itself contemplates changes to Damm’s basic reactor design to
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achieve process improvements. See Damm at 4667 (“While this simple
design is useful for the fundamental analysis of the reactor operation and
performance, it is by no means the only possible or most practical
configuration.”). It appears that the only change necessary to Damm’s
reactor is the addition of a CO2 sorbent. See id.
The Appellant also argues that a person of ordinary skill in the art
would not have had a reasonable expectation of success in making the
proposed modifications to Damm because the reactor systems of Damm,
Halabi, and Boulet are fundamentally different from each other. App. Br. 8;
Reply Br. 4. That argument is unpersuasive because, even assuming that the
Appellant accurately identifies differences in the reactors of Damm, Halabi,
and Boulet, the Examiner is not proposing the physical combination of any
of the disclosed reactors. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA
1981), but whether “a skilled artisan would have been motivated to combine
the teachings of the prior art references to achieve the claimed invention,”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). The
Examiner’s proposal relies on (1) fundamental principles of
thermodynamics, reflected in Damm and Halabi, (2) the use of a known
method of reducing CO2 in a process of producing H2 that Halabi discloses,
and (3) the use of a known method of regenerating a CO2 sorbent, that
Boulet discloses, to achieve beneficial and predictable results in the process
of Damm. See Ans. 4–5. As noted above, Damm specifically contemplates
modification to its design. The Appellant has not shown that modifying
Damm as Halabi and Boulet teach or suggest would have been beyond the
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ordinary level of skill in the art, or that differences between the systems of
Damm, Halabi, and Boulet would have caused a person of ordinary skill to
doubt the combination that the Examiner proposes.
On this record, we are not persuaded of reversible error in the
Examiner’s rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–35 103 Damm, Halabi, Boulet 1–35
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