Ex Parte Botte

Patent Trials and Appeals Board

Aug 13, 2018

13802919 - (D) (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/802,919 03/14/2013
26875 7590 08/15/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Gerardine G. Botte
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.
OU-13001US 6119
EXAMINER
WILKINS III, HARRY D
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERARDINE G. BOTTE
Appeal2017-000256
Application 13/802,919
Technology Center 1700
Before BRADLEY R. GARRIS, GRACE KARAFFA OBERMANN, and
MONTE T. SQUIRE, Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks relief from the Examiner's final rejection of
claims 1, 2, and 4--20 under 35 U.S.C. § 103(a). Appeal Br. 1, 7-16. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant's invention relates to the recovery of metal ions. Spec. ,r 2.
According to the Specification, metal-containing wastes have a high portion
of metals with commercial value. Id. ,r 4. Current processes for the
recovery and reclaiming of such metals, however, are expensive, primarily
1 Appellant is the Applicant which is identified as Ohio University as the
real party in interest. Appeal Br. 3.
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Application 13/802,919
due to the high energy expended. Id. ,r 5. One such process is known as
electrowinning, which involves applying a current or voltage to an
electrochemical cell having an anode and cathode submersed in an aqueous
solution of a metal-containing waste. Id.
Appellant's invention seeks to efficiently remove metal ions from
aqueous solutions. Id. ,r 7. Appellant uses a divided electrolytic cell having
a basic pH anodic chamber, an acidic pH cathodic chamber, and an ion-
conducting separator that physically separates the anodic and cathodic
chambers. Id. The cathodic chamber contains the desired metal to be
recovered. Id. The anodic chamber contains an anolyte that includes a
sacrificial reductant, which effectively lowers the electrochemical potential
of the electrolytic cell. Id. ,r,r 7, 19.
In one exemplary embodiment, Appellant employs an electrowinning
process that achieves 83 % lower power consumption when compared to a
traditional electrowinning process. Id. ,r 42 Tbl. 1. According to the
description of this embodiment, the difference between Appellant's process
and the traditional process is that Appellant's process uses an anolyte that
includes ammonium hydroxide. See id. ,r 40.
Claims 1 and 16 are the only independent claims. Claim 1 is directed
to a method of recovering metals and claim 16 is directed to an
electrochemical cell. Claim 16 is reproduced below:
16. An electrochemical cell comprising:
an anode in an anodic chamber;
a cathode in a cathodic chamber;
a separator disposed between the anode and the cathode
to physically separate the anodic and cathodic chambers, the
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Application 13/802,919
separator allowing the transport of ions between the anodic and
cathodic chambers;
an anolyte disposed within the anodic chamber,
comprising a sacrificial reductant selected from the group
consisting of urea, ammonia, ethanol, methanol, and a
combination thereof, wherein the anolyte has a basic pH;
a catholyte disposed within the cathodic chamber,
comprising one or more metallic ions dissolved therein,
wherein the catholyte has an acidic pH; and
an electrical connection between the anode and the
cathode.
Claim 1 contains substantially the same limitations but includes
additional method steps.
OPINION
Claims 1, 2, 4-8, and 11-18
Appellant argues the nonobviousness of claims 1, 2, 4--8, and 11-18
as a group. Appeal Br. 7-15. Claims 2, 4--8, and 11-15 depend from
claim 1. Claims 17 and 18 depend from claim 16. We select claim 16 as
representative of the group. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects claims 1, 2, 4--8, and 11-18 under 35 U.S.C.
§ 103(a) as unpatentable over Juda2 in view ofMaskalick, 3 Remick, 4 and
2 U.S. Patent No. 3,262,868 (issued July 26, 1966).
3 U.S. Patent No. 4,460,444 (issued July 17, 1984).
4 U.S. Patent No. 4,431,496 (issued Feb. 14, 1984).
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Application 13/802,919
Vitse. 5 Final Act. 2--4. The Examiner relies on a second Juda reference
(Juda et al. 6) as evidence for claims 4, 17, and 18 only. Id. at 2, 4, 6.
The Examiner finds that Juda discloses each limitation of claim 16,
except for the anolyte having a basic pH. Id. at 2-3. The Examiner finds
that Vitse teaches that missing limitation. Id. at 4. The Examiner further
cites Maskalick and Remick as additional references that, like Juda and
Vitse, teach "anode depolarization"-that is, replacing an anode reaction
with a reaction that occurs at a lower potential than the conventional reaction
in order to reduce energy consumption. Answer 8, 11-12. Specifically, the
Examiner maintains that Maskalick and Remick provide evidence that anode
depolarization reactions were equally effective and interchangeable with
either hydrogen generating cathode reactions ( as taught in Vitse and
Maskalick) and electrowinning cathode reactions (as taught in Juda and
Remick). Final Act. 3; Answer 11.
Appellant argues that the Examiner fails to establish a prima facie
case of obviousness for four reasons. First, Appellant argues that one of
ordinary skill in the art would not have been motivated to combine Juda and
Vitse. Appeal Br. 8-10. Second, Appellant argues that modifying Juda with
Vitse would require substantial reconstruction and would change the
principle of operation of Juda. Id. at 10-12. Third, Appellant argues that
one of ordinary skill in the art would have lacked a reasonable expectation of
success when considering the combination of references. Id. at 12-14.
Fourth, Appellant argues that the energy savings obtained by Appellant is an
5 Frederic Vitse et al., On the Use of Ammonia Electrolysis for Hydrogen
Production, 142 J. Power Sources 18 (2005).
6 U.S. Patent No. Re. 24,865 (issued Sept. 6, 1960).
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unexpected result indicative of nonobviousness. Id. at 14--15. For reasons
that follow, however, we find that the Examiner establishes a prima facie
case of obviousness that is not overcome by Appellant.
1. Motivation to Combine
First, the Examiner provides rational reasons why a person of ordinary
skill in the art would have been motivated to combine the teachings of the
asserted references. As the Examiner explains, Juda discloses that in
conventional electrowinning, oxygen is formed as a byproduct at the anode
that, in tum, causes an increase in voltage requirements. Answer 2-3 ( citing
Juda 4:27-50). Juda teaches replacing the anode reaction, to avoid oxygen
formation, by using a "fuel." Id. The Examiner finds that it would have
been obvious to use Vitse's alkaline ammonia solution as such a "fuel,"
explaining that Vitse' s ammonia would likewise replace the typical oxygen-
generating anode reaction, thereby reducing the potential necessary to drive
the electrolytic reaction at the cathode. Id. at 4, 11. The Examiner further
explains that the reactions at the anode in Juda and Vitse both function in the
same way and are interchangeable with each other. Adv. Act. 2 ( explaining
that the individual anode reactions of Juda and Vitse are interchangeable
with each other in that each only interacts with the cathodic reactions by
providing electrons through the electrical circuit and protons through the
separator).
Appellant identifies differences between Juda and Vitse, including
that Vitse is not concerned with the electrowinning of metals, and instead
discloses a reaction that produces hydrogen. Appeal Br. 8-1 O; Reply Br. 3.
Appellant further argues that "[t]here is no teaching that the reaction in Vitse
could reduce the potential necessary to drive the electrolytic reaction to
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produce the desired metal at the cathode." Reply Br. 3. Appellant,
therefore, concludes that one of ordinary skill in the art, "reading the entire
Vitse reference, would not assume that this reaction could be used to reduce
the potential at the cathode in an electrowinning process, but would rather
think this reaction would be used to produce hydrogen." Id. at 4.
Appellant's arguments, concerning the individual disclosures of Juda
and Vitse, do not address the Examiner's rationale to combine, supported by
Juda, that replacing the typical oxygen-generating anode reaction serves to
lower voltage requirements. See Answer 2--4; Juda 4:27-50. One cannot
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. E.g., In re Keller, 642
F.2d 413,426 (CCPA 1981). Also, Appellant does not address the
Examiner's finding that the reactions at the anode in Juda and Vitse both
function in the same way and are interchangeable with each other. Adv.
Act. 2. Appellant's further contention that "[i]t seems totally illogical that
one would replace a reaction that required hydrogen as an input or a fuel
with the reaction that actually produces hydrogen" (Reply Br. 4), is
unsupported attorney argument.
2. Juda 's Principle of Operation
Second, according to Appellant, the Examiner's suggestion to modify
Juda with Vitse would eliminate the need for a gas electrode, which
Appellant contends is the principle of operation of Juda. Appeal Br. 10-12.
But, as the Examiner explains, although the anode reactant in Juda is
hydrogen gas in a primary embodiment, Juda also teaches that "[l]iquid
combustible[,] fuels, e.g., liquid hydrocarbons, methane, ethanol or the like
may also be used." Juda 3: 15-1 7; Answer 9. Appellant also acknowledges
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that Juda discloses using, for example, methanol as a fuel injected through
the electrode. Reply Br. 3 n.1. The Examiner, therefore, does not err in
finding that the use of a gas electrode was not critical to the operation and
design of Juda. Answer 9.
Appellant also argues that "modifying Juda to incorporate the
teachings of Vitse would require a complete change in both the anodic and
cathodic compartments of the electrolytic cell disclosed in Juda" and, by
way of support, directs us to the Declaration of Gerardine G. Botte ("Botte
Deel."). Appeal Br. 11. As the basis for this conclusion, Appellant states
that introducing the alkaline ammonia solution into the anolyte of Juda
would cause hydrogen ions from the gas electrode to react with hydroxide
ions present and prevent the reduction of ammonia. Botte Deel. 2; see also
Appeal Br. 13 ( asserting the same factual contention as a reason why one of
ordinary skill in the art would not have had a reasonable expectation of
success). In making that argument, however, Appellant misunderstands the
Examiner's rejection. The Examiner's rejection does not involve adding
Vitse's alkaline ammonia solution to Juda's gas electrode containing
hydrogen gas, but instead involves replacing the hydrogen gas of Juda with
the alkaline ammonia solution ofVitse. Answer 9-10.
Additionally, Appellant contends that the Examiner's suggested
modification would "defeat the purpose" of Vitse's reaction, which involves
making hydrogen. Appeal Br. 11. The Examiner's rejection, however,
involves a modification of Juda, such that the relevant issue is whether
Juda's principle of operation-not Vitse's-has been changed as a result of
the modification. See, e.g., In re Ratti, 270 F.2d 810, 812-13 (CCPA 1959)
(finding modification of Chinnery et al. with a feature from Jepson to
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"require a substantial reconstruction and redesign of the elements shown in
Chinnery et al. as well as a change in the basic principles under which the
Chinnery et al. construction was designed to operate" (emphasis added)).
3. Reasonable Expectation of Success
Third, the Examiner provides adequate reasoning supporting the
conclusion that one of ordinary skill in the art would have had a reasonable
expectation of success in combining Juda and Vitse. The Examiner explains
that Juda, Vitse, Maskalick, and Remick all relate to "anode depolarization"
(Answer 8), and Appellant does not specifically rebut that finding. The
Examiner also shows, through the teachings of Maskalick and Remick, that
the same anode depolarization reaction may be used to reduce the electrical
potential required for either (i) hydrogen generation at a cathode (as in
Maskalick) or (ii) metal electrowinning at a cathode (as in Remick). Answer
3, 11 ( citing Maskalick, Abstract, 1:52---62, and Remick, Abstract, 1:6-20,
1:49-2:42). In other words, the combined teachings ofMaskalick and
Remick support the conclusion that one of ordinary skill in the art would
have had a reasonable expectation of success in using a particular anode
depolarization reaction with either a hydrogen generating cathode reaction or
a metal electrowinning cathode reaction. See Answer 11-12.
Appellant argues that the Examiner makes too broad of a
generalization from the teachings of Maskalick and Remick. Appeal Br. 12-
13; Reply Br. 3. According to Appellant, one of ordinary skill in the art
would not have understood Maskalick and Remick "to suggest that any
depolarization reaction that lowers an electrical potential in a cell that
produces hydrogen would necessarily lower the electrical potential in an
electrowinning application." Appeal Br. 13. As Appellant seems to be
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indicating with this argument, the reactions of Maskalick and Remick
involve the use of iodide ions, while Vitse uses ammonia. Compare
Maskalick, Abstract, 1 :52-59, and Remick, 1 :53-55, with Vitse § 1.2.
Appellant, however, does not address the Examiner's explanation that the
anode reactions in each of Juda, Vitse, Maskalick, and Remick are
interchangeable because each "anode reaction only interacted with the
cathodic reaction by ( 1) providing electrons through the electrical circuit and
(2) providing protons through the separator." Adv. Act. 2.
Appellant further argues that "Vitse fails to make any suggestion as to
what would occur if ammonia is electrolyzed in the presence of metal ions."
Appeal Br. 13. Vitse itself does not explicitly indicate what would occur if
ammonia is electrolyzed in the presence of metal ions. But Appellant does
not rebut the Examiner's finding that in Juda, the anode chamber is
separated from the cathodic compartment by the ion exchange membrane,
such that no metal cations are present in the anodic chamber of Juda.
Answer 12; see Juda, Fig. 1. That finding supports the Examiner's position
that, in the modified process of Juda, ammonia would not have been
electrolyzed in the presence of metal ions as there were no metal ions in the
anodic chamber. Answer 12.
4. Unexpected Results
Fourth, as Appellant asserts that unexpected results have been
achieved (Appeal Br. 14--15), Appellant bears the burden of showing
unexpected results, In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). "Such
burden requires Appellant to provide a showing that is actually unexpected
and is reasonably commensurate with the scope of protection sought by the
claims on appeal." Ex parte Smith, Appeal 2011-003337, slip op. at 11
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Application 13/802,919
(BPAI Feb. 28, 2012) (informative). For the following reasons, we discern
no error in the Examiner's conclusion that Appellant's showing of
unexpected results is not reasonably commensurate in scope with the
claimed invention or the Examiner's finding that the results are not shown to
be unexpected. Answer 12-13.
As to whether the showing of unexpected results is reasonably
commensurate in scope with the claims, Appellant relies on a single example
involving the use of an anolyte including ammonium hydroxide in support of
the argument regarding unexpected results. Appeal Br. 14; Answer 12;
Spec. ,r 40. But Appellant's claims encompass numerous different anolytes
and sacrificial reductants ( and combinations thereof), as illustrated in
claims 1, 7-10, and 16. We are not presented with an adequate basis to
support a conclusion that those anolytes would behave similarly or cause a
cell to exhibit the same behavior as in Appellant's example, which uses one
particular anolyte solution.
Also, as the Examiner points out, both Juda and Remick disclose
reduced power consumption in electrowinning processes. Answer 3, 13. In
particular, Juda and Remick each discloses that avoiding oxygen production
at the anode results in reducing power consumption in electrowinning
processes. See Juda, 4:34--46; Remick, Abstract, 4:49-51. That evidence
supports the Examiner's finding that the results are not unexpected as
asserted by Applicant. Answer 13.
Appellant does not adequately rebut this finding by pointing to data
and disclosure in the Specification showing an 83 % reduction in power
consumption would be unexpected from the perspective of one with ordinary
skill in this art. Appeal Br. 14; Reply Br. 5. That is because Appellant only
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provides attorney argument characterizing this result as being "unexpected,"
which is insufficient to establish unexpected results. See In re Geisler, 116
F.3d 1465, 1470-71 (Fed. Cir. 1997).
Claims 9, 10, 19, and 20
The Examiner rejects claims 9 and 10 under 35 U.S.C. § I03(a) as
unpatentable over Juda in view of Maskalick, Remick, and Vitse, as applied
to claim 7, and further in view of Botte. 7 Final Act. 6-7. Also, the
Examiner rejects claims 19 and 20 under§ I03(a) as unpatentable over Juda
in view of Maskalick, Remick, and Vitse, as applied to claim 17, and further
in view of the Chemical Book webpage 8 and Beattie. 9 Final Act. 7-8.
Appellant does not argue any of these rejections separately. Appeal Br. 15-
16. Accordingly, our decision as to the Examiner's rejection of claims 1, 2,
4--8, and 11-18 applies equally to claims 9, 10, 19, and 20.
ORDER
The Examiner's decision to reject claims 1, 2, and 4--20 under
35 U.S.C. § I03(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
7 International Publication No. WO 2010/120882 Al (published Oct. 21,
2010).
8 E.I. du Pont de Nemours & Co., Nafion® PFSA Products Technical
Information (2002).
9 U.S. Patent No. 4,632,738 (issued Dec. 30, 1986).
11