Ex Parte Kamai et al

Patent Trials and Appeals Board

Apr 5, 2019

14360766 - (D) (P.T.A.B. Apr. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/360,766 05/27/2014
51921 7590 04/09/2019
MARK D. SARALINO (PAN)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19THFLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Ryo Kamai
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.
HOKUP0232WOUS 5221
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
04/09/2019 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYO KAMAI, MICHIO SUZUKA, SHUJINAKANISHI,
KAZUHITO HASHIMOTO, and ADAM HELLER
Appeal 2018-002930
Application 14/360, 766
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
non-fmal rejection of claims 1-15, which constitute all the claims pending in
this application. We have jurisdiction under35 U.S.C. §6(b).
We AFFIRM.
Appellant's 1 invention is generally directed to the extraction of carbon
dioxide from gas by allowing permeation of carbon dioxide using a low
energy consumption device. Spec. ,r,r 4, 7, 10. Appellant achieves this by
1 Panasonic Corporation is the Applicant/ Appellant. Panasonic Corporation
and Japan Science and Technology Agency, joint assignees of the present
application, are identified as the real party in interest. App. Br. 2.
Appeal 2018-002930
Application 14/360, 766
means of a carbon dioxide permeation device configured to ( 1) accelerate
absorption of carbon dioxide into the electrolyte membrane from gas in a
vicinity of the frrst gas diffusion electrode and (2) accelerate emission of
carbon dioxide from the electrolyte membrane to gas in a vicinity of the
second gas diffusion electrode. Id. ,r 11. Claim 1 illustrates the invention
(formatting added):
1. A carbon dioxide permeation device, comprising:
a frrst gas diffusion electrode;
a second gas diffusion electrode;
an electrolyte membrane which is in contact with and
between the frrst gas diffusion electrode and the second
diffusion electrode and includes an anion-conducting resin; and
a DC power source configured to apply a voltage
between the frrst gas diffusion electrode and the second
diffusion electrode,
at the frrst gas diffusion electrode, an interface of the frrst
gas diffusion electrode, the electrolyte membrane, and gas
containing carbon dioxide and oxygen being present,
at the second gas diffusion electrode, an interface of the
second gas diffusion electrode, the electrolyte membrane, and
gas containing carbon dioxide and oxygen being present,
the carbon dioxide permeation device being configured
to:
accelerate absorption of carbon dioxide into the
electrolyte membrane from gas in a vicinity of the frrst gas
diffusion electrode so as to decrease a carbon dioxide
concentration of the gas in the vicinity of the frrst gas diffusion
electrode; and
accelerate emission of carbon dioxide from the
electrolyte membrane to gas in a vicinity of the second gas
diffusion electrode by causing an oxidation reaction of water in
the electrolyte membrane so as to enrich carbon dioxide in the
gas in the vicinity of the second gas diffusion electrode.
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Appeal 2018-002930
Application 14/360, 766
Independent claim 10 is essentially directed to a method of
transporting carbon dioxide using the carbon dioxide permeation device of
claim 1.
Appellant (see generally App. Br.) requests review of the following
rejections from the Examiner's Non-Final Office Action:
I. Claims 1-5, 7-10, and 12-15 rejected underpre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Teamey (US 2011/0114501 Al, published
May 19, 2011), Masel(WO 2011/120021 Al, published September 29,
2011 ), and Littau (US 2009/0159456 Al, published June 25, 2009). 2
II. Claim 6 rejected underpre-AIA 35 U.S.C. § 103(a) as
unpatentable over Teamey, Mase 1, Littau, and Stumper (US 2002/01873 8 8
Al, published December 12, 2002).
III. Claims 5 and 11 rejected underpre-AIA 35 U.S.C. § 103(a) as
unpatentable over Teamey, Masel, Littau, and Molter (US 6,168,705 B 1,
issued January 2, 2001 ).
Appellant relies on the same line of arguments to address independent
claims 1 and 10 and presents separate arguments for dependent claims 13-
15. See generally App. Br. Appellant does not present arguments for
dependent claims 2-5, 7-9, 12, and separately rejected claims 5, 6, and 11.
Id. Accordingly, we select claim 1 as representative of the subject matter
claimed. Claims 2-12 stand or fall with claim 1. We address the arguments
for claims 13-15 separately.
2 The Examiner erroneously omitted claims 13-15 from the rejection
statement in the Non-Final Office Action of April 6, 2017. Non-Final Act.
3. However, the Examiner discussed these claims in the context of this
rejection and Appellant addressed the Examiner's discussion of these claims.
Non-Final Act. 7; App. Br. 21. Accordingly, we find this omission to be a
harmless error, and the claims are considered as included in the statement of
rejection presented for review on appeal.
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Appeal 2018-002930
Application 14/360, 766
OPINION
After review of Appellant's Appeal and Reply Briefs and the
Examiner's Non-Final Office Action and Answer, we affrrm the Examiner's
rejections of claims 1-15 under 35 U.S.C. § 103(a) for the reasons the
Examiner presents. We add the following for emphasis.
Claim 1
The Examiner finds T eamey teaches a carbon dioxide permeation
device that differs from the claimed invention in that T eamey does not teach
that the electrodes are gas diffusion electrodes in contact with the
membrane. Non-Final Act. 3--4; Teamey Figure 1, ,r,r 19-28, 36. The
Examiner relies on Masel and Littau, both directed to purification/separation
of carbon dioxide (Masel ,r 16; Littau ,r 16), as teaching that it is known to
use an electrode assembly where the electrodes are in contact with an
electrolyte for the purpose of separating carbon dioxide from a gas.
Non-Final Act. 4--5; Masel Figure 1, ,r,r 4--9; Littau Figures 4--6; ,r,r 25, 26,
29, 34, 35. The Examiner determines that it would have been obvious to a
person of ordinary skill in the art to modify Teamey's carbon dioxide
permeation device to use gas diffusion electrode layers in contact with the
electrolyte membrane, as taught by Masel and Littau, because the
configuration allows for carbon dioxide conversion at the interface of the
membrane and electrode. Non-Final Act. 5; Littau ,r,r 26, 29; Masel ,r,r 4--9.
Appellant argues that Teamey's invention uses the generation and
oxidation of oxalate, which includes minimal oxidation of water, while the
claimed invention uses an oxidation reaction of water in the electrolyte
membrane. App.Br. IO, 12;seeTeameyif28. AccordingtoAppellant,
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Appeal 2018-002930
Application 14/360, 766
T eamey is directed to an apparatus and method for purifying carbon dioxide
from a mixture of gases by reducing the carbon dioxide to one or more
compounds at a cathode and by oxidizing the compounds at an anode to
form carbon dioxide, where CO2 is dissolved in the electrolyte and reduced
at the cathode to generate the oxalate ions and the like. App. Br. 10-11;
Teamey ,r,r 2, 17, 21-25. Appellant also argues that Teamey' s device
operates at a solution pH range where carbon dioxide exists neither in a state
of carbonate ion nor in a state of hydrogen carbonate ion, but exists as a CO2
hydrate. App. Br. 11. Thus, Appellant contends that Teamey' s device does
not accelerate emission of carbon dioxide from the electrolyte membrane as
claimed because any oxidation of water produced in T eamey' s device is
incidental. Id. at 10, 14--15.
Appellant's arguments do not persuade us of error in the Examiner's
rejection for the reasons the Examiner provides. The premise of Appellant's
arguments is that Teamey's invention and the claimed invention extract
carbon dioxide from a gas using different chemical mechanisms. As a
preliminary matter, claim 1 is directed to an apparatus-not a process.
Consistent with the Examiner's position, Ans. 12, we emphasize that "[a]
patent applicant is free to recite features of an apparatus either structurally or
functionally ... Yet, choosing to defme an element functionally, i.e., by what
it does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997).
Moreover, as the Examiner notes, claim 1 does not recite any
particular chemical mechanism that results in the acceleration of the
absorption/emission of carbon dioxide into/from the electrolyte membrane.
Ans. 13. As a further matter, Appellant's argument that the claimed
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Application 14/360, 766
acceleration steps are tied to a disclosed oxidation reaction of water in the
electrolyte membrane (App. Br. 10, 14--15) is inconsistent with the
Specification's statements that the term "acceleration" means that an amount
of absorption/emission of carbon dioxide becomes greater than an amount of
normal absorption/emission of carbon dioxide into an electrolyte membrane
in a condition where no voltage is applied between the frrst and second gas
diffusion electrodes (Spec. ,r,r 76, 80). That is, the Specification discloses
that acceleration of the absorption/emission of carbon dioxide from the
chemical reactions depends on the voltage applied to the electrodes.
Teamey suggests this concept. Teameyifif 25, 28 ("The overall process is
generally driven by the [DC] power source 106"). Therefore, given that
both Teamey's invention and the claimed invention rely on applying a
voltage potential to the electrodes to drive the carbon dioxide extraction
process, Appellant has not explained adequately why Teamey's device and
process do not also accelerate absorption and emission of carbon dioxide.
Appellant has not explained adequately how the claimed acceleration
processes for absorption and emission of carbon dioxide, driven by the DC
power source, are different from Teamey's process.
Claims 13-15
Claims 13 recites a device in which the acceleration of the absorption
of carbon dioxide into the electrolyte membrane comprises producing
HCQ3-(bicarbonate). Claims 14 and 15 recite that the acceleration of the
emission of carbon dioxide from the electrolyte membrane comprises
reacting a hydrogen ion with the HCQ3-.
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Application 14/360, 766
The Examiner fmds that Littau teaches a carbon dioxide separation
process involving a reduction reaction of carbon dioxide yields bicarbonate
ions and a subsequent reaction of the bicarbonate ion back to carbon dioxide
after the bicarbonate ion is transported across an electrode assembly. Non-
Final Act. 7; Littau ,r,r 16-19, 32.
Appellant argues that carbon dioxide exists as a CO2 hydrate at the pH
range of the solution at which Teamey's device is operated and not as a
carbonate ion or hydrogen carbonate ion. App. Br. 22. Appellant also
argues that, while Littau may disclose use of the bicarbonate ion, there is no
disclosure or suggestion that Teamey's device would be modified to arrive at
the claimed invention because such a modification would significantly alter
the configuration and operation in Teamey. Id. at 23.
Appellant's arguments do not persuade us of Examiner error. As the
Examiner fmds, Littau discloses a device for separating carbon dioxide using
a membrane separation electrode process of reducing the molecule at a
cathode for transport through a membrane for reformation at an anode
involving production and reaction of bicarbonate ions using platinum
catalysts, which is one of the catalysts disclosed in Appellant's
Specification. Non-Final Act. 5; Littau ,r,r 18, 25; Spec. ,r,r 53, 62.
Appellant does not explain adequately why one skilled in the art, using no
more than ordinary creativity, would not have been capable of adapting the
carbon dioxide transport device from the combined teachings of T eamey and
Mas el to utilize the bicarbonate reactions and catalysts of Littau for the
process of separating carbon dioxide from a gas and benefit from T eamey' s
power source to drive the separation process. Teameyif28. KSRint'l Co. v.
Teleflex Inc., 550 U.S. 398,421 (2007) ("A person of ordinary skill is also a
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Application 14/360, 766
person of ordinary creativity, not an automaton."); see also In re Sovish, 769
F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of
ordinary skill in the art.).
In summary, Appellant's arguments do not point to error in the
Examiner's conclusion of obviousness.
Accordingly, we affirm the Examiner's prior art rejections of claims
1-15 under 35 U.S.C. § 103(a) for the reasons the Examiner provides and
those given above.
DECISION
The Examiner's prior art rejections under 35 U.S.C. § 103(a) of
claims 1-15 are affrrmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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