Ex Parte Dopp

Patent Trial and Appeal Board

Jan 9, 2019

13630776 (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/630,776 09/28/2012
24504 7590 01/11/2019
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Robert Brian Dopp
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.
510403-1010 7389
EXAMINER
JAIN, SAUL
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
01/11/2019 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):
uspatents@tkhr.com
ozzie. liggins@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BRIAN DOPP
Appeal 2018-003030
Application 13/630,776
Technology Center 1700
Before TERRY J. OWENS, SHELDON M. McGEE, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-10, 12-27, 42, 45, 46, and 48-
51. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellant's invention is generally directed to a method for
electrochemical digestion of organic molecules. Spec. ,r 18. Claim 1
1 Appellant identifies RF Advanced Technology Group, LLC as the real
party in interest. Appeal Brief filed June 19, 2017 ("App. Br."), 1.
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Application 13/630,776
illustrates the subject matter on appeal and is reproduced below with
emphasis added to highlight contested language:
1. A method, comprising:
providing an electrolyte fluid including organic
molecules to a reaction vessel, the electrolyte fluid flowing
between and in contact with electrodes of the reaction vessel
where no separator exists between the electrodes, the electrodes
defining parallel flow paths through which the electrolyte fluid
flows, where the electrodes consist of two monofunctional
electrodes comprising a single porous metal component secured
to one side of a substrate and at least one bifunctional electrode
between the two monofunctional electrodes, the at least one
bifunctional electrode comprising two porous metal
components secured to opposite sides of a substrate, where the
porous metal components of the monofunctional and
bifunctional electrodes are formed of the same materials and
the electrolyte fluid is less than 100 degrees Celsius; and
applying a voltage wave shape to the two monofunctional
electrodes and not to the at least one bifunctional electrode of
the reaction vessel to digest the organic molecules by a
breakdown of chains of the organic molecules, where the
voltage wave shape reverses polarity applied to the two
monofunctional electrodes at a frequency less than 1 Hz.
App. Br. 28 (Claims Appendix) ( emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered August 15, 2016 ("Final Act."), and maintains the rejections
in the Examiner's Answer entered November 27, 2017 ("Ans."):
I. Claims 1-10, 12-27, 42, 45, 46, and 48-51 under 35 U.S.C. §
112, first paragraph for failing to comply with the written description
requirement;
II. Claims 1--4, 7, 13, 25-27, and 42 under 35 U.S.C. § 103(a) as
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unpatentable over Weres2 in view ofMaekawa3 and Ninolakis4;
III. Claim 5 under 35 U.S.C. § I03(a) as unpatentable over Weres
in view ofMaekawa, Ninolakis, and Kelsey5;
IV. Claim 6 under 35 U.S.C. § I03(a) as unpatentable over under
35 U.S.C. § I03(a) as unpatentable over Weres in view ofMaekawa,
Ninolakis, and Lavelle6;
V. Claims 8-10, 12, 14, 247, 46, and 49 under 35 U.S.C. § I03(a)
as unpatentable over under 35 U.S.C. § I03(a) as unpatentable over Weres in
view ofMaekawa, Ninolakis, and Griffis8;
VI. Claims 15, 16, 50, and 51 under 35 U.S.C. § I03(a) as
unpatentable over under 35 U.S.C. § I03(a) as unpatentable over Weres in
view of Maekawa, Ninolakis, and Gimenez9;
VII. Claims 17-19 under 35 U.S.C. § I03(a) as unpatentable over
under 35 U.S.C. § I03(a) as unpatentable over Weres in view of Maekawa,
Ninolakis, and Nishimura 10;
VIII. Claim 20 under 35 U.S.C. § I03(a) as unpatentable over Weres
in view of Maekawa, Ninolakis, and Xiuquan 11 ;
2 Weres et al. US 5,419,824, issued May 30, 1995.
3 Maekawa US 6,811,660 B2, issued November 2, 2004.
4 Ninolakis WO 03/104152 Al, published December 18, 2003.
5 Kelsey et al. US 2009/0152212 Al, published June 18, 2009.
6 Lavelle et al. US 2006/0027463 Al, published February 9, 2006.
7 Although the Examiner omits claim 24 from the heading of this rejection
(Final Act. 13), the Examiner addresses claim 24 on page 16 of the Final
Action.
8 Griffis et al. US 5,282,940, issued February 1, 1994.
9 Gimenez et al. US 6,224,744 B 1, issued May 1, 2001.
10 Nishimura et al. US 6,572,759 Bl, issued June 3, 2003.
11 Xiuquan CNI01041488 (A), published September 26, 2007.
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Application 13/630,776
IX. Claim 21 under 35 U.S.C. § I03(a) as unpatentable over Weres
in view of Maekawa, Ninolakis, and Egorova 12;
X. Claims 22 and 23 under 35 U.S.C. § I03(a) as unpatentable
over Weres in view ofMaekawa, Ninolakis, and Herbst 13 ;
XI. Claim 45 under 35 U.S.C. § I03(a) as unpatentable over Weres
in view ofMaekawa, Ninolakis, and Weres II 14; and
XII. Claim 48 under 35 U.S.C. § I03(a) as unpatentable over Weres
in view of Maekawa, Ninolakis, and Andrews 15 .
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejection of
claims 1-10, 12-27, 42, 45, 46, and 48-51 under 35 U.S.C. § 112, first
paragraph, and rejections of claims 1-10, 12-27, 42, 45, 46, and48-5I
under 35 U.S.C. § I03(a), for the reasons set forth in the Appeal Brief and
below.
Rejection I
The Examiner finds that the Specification does not provide written
description support for porous metal components of mono functional and
bifunctional electrodes that are formed of the same materials, as recited in
claim 1. Final Act. 3--4. The Examiner finds that the Specification
describes mono functional electrodes 1012, 1014 and bifunctional electrodes
1016 that are each formed of stainless steel 316 plate 1018 onto which nickel
12 Egorova et al. SU 1692503 Al, published November 23, 1991.
13 Herbst US 6,179,977 Bl, issued January 30, 2001.
14 Weres et al. US 5,439,577, issued August 8, 1995.
15 Andrews et al. US 2002/0134674 Al, published September 26, 2002.
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Application 13/630,776
foam 1020 is welded. Id. The Examiner finds that claim 1, however,
"encompasses within its scope all electrode materials and the claim scope is
not limited to specific materials like stainless steel and nickel foam." Ans.
29. The Examiner finds that the Specification therefore provides written
description support for "the same electrode materials only when the
electrodes comprise stainless steel and nickel foam." Id.
In rejecting a claim under the first paragraph of 35 U.S.C. § 112 for
lack of adequate descriptive support, it is incumbent upon the Examiner to
establish that the originally-filed disclosure would not have reasonably
conveyed to one having ordinary skill in the art that Appellant had
possession of the subject matter now claimed. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Adequate
description under the first paragraph of 35 U.S.C. § 112 does not require
literal support for the claimed invention. In re Herschler, 591 F.2d 693, 701
(CCPA 1979); In re Edwards, 568 F.2d 1349, 1351-52 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is sufficient if the
originally-filed disclosure would have conveyed to one having ordinary skill
in the art that an appellant had possession of the concept of what is claimed.
In re Anderson, 471 F.2d 1237, 1242 (CCPA 1973).
On this appeal record, the Examiner does not establish that the
Specification fails to convey with reasonable clarity to those skilled in the
art that the inventor had possession of porous metal components of
mono functional and bifunctional electrodes that are formed of the same
materials, as recited in claim 1, for reasons that follow.
The Specification explains that the electrodes of Appellant's invention
may include three components: ( 1) a substrate consisting of transition
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Application 13/630,776
metals including, among others, nickel, iron, stainless steel, or silver; (2) one
or more transition metals such as, for example, nickel, gold, silver, and/or
other metals attached to (or disposed on) the substrate by, for example,
electroplating; and (3) metal particles such as, for example, nano-sized metal
particles and/or mixed nano-micron sized particles of transition metals
including, but not limited to, iron, tin, nickel, silver, manganese, cobalt, and
alloys and oxides of these metals. Spec. ,r,r 22-23. The Specification
explains that an electrode may be formed by applying the transition metal
component to all surfaces of a complex porous material such as, for
example, a foam; partially embedding and entrapping the metal particles
within the transition metal component; and welding the foam material onto
the substrate. Spec. ,r,r 24--26. Significantly, the Specification explains that
an electrode thus formed may function as either an anode or a cathode.
Spec. ,r 27.
As Appellant points out (App. Br. 5---6), the Specification describes
exemplary monofunctional electrodes 1012, 104 and three bifunctional
electrodes 1016 that are each formed of a mixture of Co, Ni, and Sn 806
nano catalysts adhered to nickel foam 1020, which is welded to stainless
steel 316 plate 1018 (substrate). Spec. ,r 44; Fig. 10.
In view of these disclosures in Appellant's Specification, the
Examiner does not establish that one of ordinary skill in the art would not
understand that Appellant was in possession of porous metal components of
mono functional and bifunctional electrodes that are formed of the same
materials, as recited in claim 1.
The Examiner also finds that "while there is written description
support for the limitation that a voltage wave shape is applied to the two
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monofunctional electrodes (see paragraph 0065), there appears to be no
written description support for the limitation that the voltage wave shape is
not applied to the at least one bifunctional electrode." Final Act. 4.
As Appellant points out (App. Br. 6-7), however, the Specification
describes operation of the electrodes in reaction vessel 1000 of Figure 10,
and in so doing, explains that electrical contacts are provided for
monofunctional electrodes 1012 and 1014, and an electrical connection is
made at the two monofunctional electrodes. Spec. ,r,r 44, 45; Fig. 10. The
Specification explains that bifunctional electrodes "receive their electrons
from the ions involved in the electrochemical reactions" (Spec. ,r 45), as
described in paragraph 4 7 of the Specification:
During the cycle in which electrode 1012 is negatively charged,
hydrogen gas and hydroxyl ions are evolved from that electrode
while consuming two water molecules and two electrons (2H20
+ 2e-----+ 2QH- + H2). That hydroxyl molecule diffuses to the first
bifunctional plate 1016 where that hydroxyl liberates its electron
into the plate while creating a singlet oxygen ( or nascent or
atomic oxygen) and one water molecule (2QH- ----+ 1h 0 2 + H20 +
2e} The electrons pass through the bifunctional plate 1016
where it behaves as it did on the initial monofunctional plate
1012, producing an H2 and two hydroxyl ions. The process
continues until reaching the last mono functional plate 1014
where the electrons exit to this positive plate.
In view of these disclosures, the Examiner does not establish that the
Specification fails to convey with reasonable clarity to those skilled in the
art that the inventor had possession of applying a voltage wave shape to the
two monofunctional electrodes and not to the at least one bifunctional
electrode, as recited in claim 1.
We accordingly do not sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 112, first paragraph for failing to comply with the written
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description requirement, and also of claims 2-10, 12-27, 42, 45, 46, and 48-
51, which each depend from claim 1.
Rejections II-XII
Claim 1 requires, in part, the voltage wave shape applied to the two
mono functional electrodes to reverse polarity at a frequency of less than 1
Hz.
The Examiner finds that W eres discloses a method and apparatus for
the treatment of organic matter-containing wastewater, but does not disclose
applying a voltage wave shape to two monofunctional electrodes that
reverses polarity at a frequency of less than 1 Hz. Final Act. 5---6. The
Examiner finds, however, that Maekawa, like W eres, also discloses a
method and apparatus for the treatment of organic matter-containing
wastewater. Final Act. 7. The Examiner finds that Maekawa discloses
submerging an anode and a cathode in water and connecting the electrodes
to an oscillator that generates a pulsed voltage having a frequency of 5 Hz to
50 MHz. Id. (citing col. 5, 11. 34--47). The Examiner finds that Maekawa
teaches that the electrodes act as a radical generating zone for wastewater
flowing between the electrodes, and the radicals oxidatively-reductively
decompose organic matter dissolved in water. Id. ( citing paragraph
spanning col. 2-3). The Examiner finds that "Maekawa thus teaches that the
frequency of the pulsed voltage causes generation of radicals that
oxidatively-reductively decompose organic matters dissolved in water,"
which the Examiner finds "shows that the frequency of the pulsed voltage is
a result-effective variable." Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellant's invention "to modify the
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method taught by Weres by applying a voltage wave shape to the two
monofunctional electrodes at a frequency of 5 Hz to 50 MHz as taught by
Maekawa." Id. The Examiner acknowledges that claim 1 differs from the
teachings of W eres in view of Maekawa because "claim 1 recites that the
frequency of the voltage wave shape is less than 1 Hz." Final Act. 8. The
Examiner determines, however, that "modification of a result-effective
variable like frequency of the voltage wave shape will not support the
patentability of subject matter encompassed by the prior art unless there is
evidence indicating that such modification is critical," which Applicant has
the burden of proving. Id.
A preponderance of the evidence relied upon in this appeal does not
support the Examiner's conclusion of obviousness, however, for reasons
expressed by Appellant and discussed below.
The disclosure in Maekawa cited by the Examiner as showing that
"the frequency of the pulsed voltage is a result-effective variable" is a
discussion in the background section of Maekawa of an invention disclosed
in Japanese Patent Application (11-68862). Col. 2, 11. 27-58. Maekawa
indicates that the invention described in this Japanese Patent Application
"poses a problem that generation of superoxide radicals is insufficient in a
high frequency region and excessive in a low frequency region." Col. 2, 11.
49-58. The background section ofMaekawa goes on to describe another
patent application (2000-29570) that "solve[ s] the problems" of the
invention described in the Japanese Patent Application. Col. 2, 11. 59---65.
Maekawa explains that the 2000-29570 application discloses a water
purifying method that involves flowing wastewater between electrodes, and
causing pulse discharge between the electrodes under conditions of a
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Application 13/630,776
"voltage of 0.2 kV/cm to 20 kV/cm, an average current of 1 µA/cm2 to 10
µA/cm2, and a frequency of 5 Hz to 50 MHz, thereby generating radicals by
partial decomposition of water and oxidatively-reductively decomposing
organic matters and intermediate products thereof dissolved in water." Col.
2, 1. 66-col. 3, 1. 22. Thus, the background section of Maekawa discloses
that the solution to the problem of insufficient generation of superoxide
radicals in a high frequency region, and excessive generation of radicals in a
low frequency region, involves, in part, application of pulsed voltage and
current having a frequency of 5 Hz to 50 MHz.
The disclosure of Maekawa's invention describes "an apparatus for
cleaning dissolved organic matters" consisting of an anode and a cathode
submerged in water and connected to "an oscillator which oscillates an
average current density of 1 µA/cm2 to 10 µA/cm2 at a frequency of 5 Hz to
50 MHz and a voltage of0.2 kV/cm to 20 kV." Col. 5, 11. 16-23, 41--47.
Maekawa discloses a particular embodiment in which "anode 1 and the
cathode 2 are kept in a condition submerged in water and connected to the
oscillator 4 which oscillates a current having a frequency of 10 to 100 kHz."
Col. 7, 11. 53---66; Fig. 2. Maekawa thus describes a particular embodiment
ofMaekawa's invention in which a frequency is used-IO to 100 kHz-that
lies within the disclosed range of 5 Hz to 50 MHz.
As Appellant points out (App. Br. 11-13), although Maekawa may
recognize that frequency is a result-effective variable, the Examiner does not
identify any disclosure in Maekawa, or provide any other evidence, that
establishes an apparent reason or suggestion to decrease the frequency used
in Maekawa's apparatus more than five times below the lower limit of the
disclosed range (5 Hz to 50 MHz), to less than 1 Hz as recited in claim 1.
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Rather, Maekawa discloses using a frequency (10 to 100 kHz) that lies
within the disclosed range of 5 Hz to 50 MHz. In re Sebek, 465 F.2d 904,
907 (CCP A 1972) ("Where, as here, the prior art disclosure suggests the
outer limits of the range of suitable values, and that the optimum resides
within that range, and where there are indications elsewhere that in fact the
optimum should be sought within that range, the determination of optimum
values outside that range may not be obvious.").
As discussed above, Maekawa suggests that frequencies below 5 Hz
are problematic because such frequencies result in excessive generation of
superoxide radicals. The Examiner does not provide any evidence or
reasoning demonstrating that the benefits of a frequency of 5 Hz to 50 MHz
taught by Maekawa (preventing insufficient or excessive generation of
superoxide radicals) would be retained, more likely than not, when going
below the disclosed lower frequency limit; or demonstrating that any
disadvantages arising from going below the lower frequency limit would,
more likely than not, be outweighed by other advantages.
Thus, on this appeal record, the Examiner does not provide a
persuasive, reasoned explanation, supported by objective evidence, for why
one of ordinary skill in the art would have been led to apply a voltage wave
shape to two monofunctional electrodes to reverse polarity at a frequency of
less than 1 Hz, as required by claim 1. We accordingly do not sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 103(a), and also of claims
2-10, 12-27, 42, 45, 46, and 48-51, which each depend from claim 1.
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DECISION
We reverse the Examiner's rejection of claims 1-10, 12-27, 42, 45,
46, and 48-51 under 35 U.S.C. § 112, first paragraph, and rejections of
claims 1-10, 12-27, 42, 45, 46, and 48-51 under 35 U.S.C. § 103(a).
REVERSED
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