Ex Parte Dopp

Patent Trials and Appeals BoardJan 9, 2019

13630776 - (D) (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. Â§ 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. Â§ 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. Appeal2018-003030 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. Â§ 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. Â§ 103(a) as 2 Appeal2018-003030 Application 13/630,776 unpatentable over Weres2 in view ofMaekawa3 and Ninolakis4; III. Claim 5 under 35 U.S.C. Â§ I03(a) as unpatentable over Weres in view ofMaekawa, Ninolakis, and Kelsey5; IV. Claim 6 under 35 U.S.C. Â§ I03(a) as unpatentable over under 35 U.S.C. Â§ 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. Â§ I03(a) as unpatentable over under 35 U.S.C. Â§ I03(a) as unpatentable over Weres in view ofMaekawa, Ninolakis, and Griffis8; VI. Claims 15, 16, 50, and 51 under 35 U.S.C. Â§ I03(a) as unpatentable over under 35 U.S.C. Â§ I03(a) as unpatentable over Weres in view of Maekawa, Ninolakis, and Gimenez9; VII. Claims 17-19 under 35 U.S.C. Â§ I03(a) as unpatentable over under 35 U.S.C. Â§ I03(a) as unpatentable over Weres in view of Maekawa, Ninolakis, and Nishimura 10; VIII. Claim 20 under 35 U.S.C. Â§ 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. 3 Appeal2018-003030 Application 13/630,776 IX. Claim 21 under 35 U.S.C. Â§ I03(a) as unpatentable over Weres in view of Maekawa, Ninolakis, and Egorova 12; X. Claims 22 and 23 under 35 U.S.C. Â§ I03(a) as unpatentable over Weres in view ofMaekawa, Ninolakis, and Herbst 13 ; XI. Claim 45 under 35 U.S.C. Â§ I03(a) as unpatentable over Weres in view ofMaekawa, Ninolakis, and Weres II 14; and XII. Claim 48 under 35 U.S.C. Â§ 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. Â§ 112, first paragraph, and rejections of claims 1-10, 12-27, 42, 45, 46, and48-5I under 35 U.S.C. Â§ 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. 4 Appeal2018-003030 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. Â§ 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. Â§ 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 5 Appeal2018-003030 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 6 Appeal2018-003030 Application 13/630,776 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. Â§ 112, first paragraph for failing to comply with the written 7 Appeal2018-003030 Application 13/630,776 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 8 Appeal2018-003030 Application 13/630,776 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 9 Appeal2018-003030 Application 13/630,776 "voltage of 0.2 kV/cm to 20 kV/cm, an average current of 1 ÂµA/cm2 to 10 ÂµA/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 ÂµA/cm2 to 10 ÂµA/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. 10 Appeal2018-003030 Application 13/630,776 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. Â§ 103(a), and also of claims 2-10, 12-27, 42, 45, 46, and 48-51, which each depend from claim 1. 11 Appeal2018-003030 Application 13/630,776 DECISION We reverse the Examiner's rejection of claims 1-10, 12-27, 42, 45, 46, and 48-51 under 35 U.S.C. Â§ 112, first paragraph, and rejections of claims 1-10, 12-27, 42, 45, 46, and 48-51 under 35 U.S.C. Â§ 103(a). REVERSED 12