Ex Parte Sahu

Patent Trials and Appeals BoardJun 21, 2019

14472195 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/472,195 08/28/2014 61962 7590 06/24/2019 FAY SHARPELLP /XEROX-PARC 1228 EUCLID A VENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115 FIRST NAMED INVENTOR Saroj Sahu 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. 20130741US01-XER3056US01 1511 EXAMINER EGGERDING, ALIX ECHELMEYER ART UNIT PAPER NUMBER 1729 MAIL DATE DELIVERY MODE 06/24/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAROJ SAHU Appeal2018-007799 Application 14/472,195 Technology Center 1700 Before ROMULO H. DELMENDO, RAEL YNN P. GUEST, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-007799 Application 14/472,195 The Applicant1 ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 1-3, 5-7, and 9. 2, 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. I. BACKGROUND The subject matter on appeal relates to an electrolyte membrane for a reformer-less fuel cell (Spec. ,-J 2). Claim 1, the only independent claim on appeal, is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. An apparatus for a reformer-less fuel cell, comprising: an electrolyte membrane configured to be assembled with a fuel manifold and an air manifold to form a reformer-less fuel cell, wherein the fuel manifold is configured to receive an oxidizable fuel from a fuel supply in at least one of a gaseous form, a liquid form, and a slurry form, wherein the air manifold is configured to receive air from an air supply, the air comprising at least oxygen, wherein the electrolyte membrane is configured to conduct oxygen in an ionic superoxide form when the reformer- 1 The Applicant is "Palo Alto Research Center Incorporated" (Application Data Sheet filed August 28, 2014, 4), which is also identified as the real party in interest (Appeal Brief filed April 23, 2018 ("Appeal Br."), 1). According to the Inventor, the "invention was made with government support under Contract Number POl 7.2012.40 HSL-IPI-DCFuelCells awarded by the U.S. Department of Energy (DoE)" and that "[t]he government has certain rights in this invention" (Specification filed August 28, 2014 ("Spec."), ,-i 1 ). 2 Appeal Br. 5-15; Reply Brief filed July 25, 2018 ("Reply Br."), 2-14; Final Office Action entered October 12, 2017 ("Final Act."), 2-5; Examiner's Answer entered June 12, 2018 ("Ans."), 3-6. 3 Claims 4, 8, and 10-25, which are listed erroneously in the Claims Appendix (Appeal Br. 16-23), were previously withdrawn from further consideration (id. at 5; Final Act. 2) and, therefore, not before us. 2 Appeal2018-007799 Application 14/472,195 less fuel cell is exposed to operating temperatures above the boiling point of water to electrochemically combine the oxygen with the oxidizable fuel to produce electricity, the electrolyte membrane comprising: a porous electrically non-conductive substrate; an anode catalyst layer deposited along a fuel manifold side of the porous substrate; a cathode catalyst layer deposited along an a1r manifold side of the porous substrate; and an ionic liquid filling the porous substrate between the anode and cathode catalyst layers to form the electrolyte membrane. (Appeal Br. 16 (emphasis added).) II. REJECTION ON APPEAL Claims 1-3, 5-7, and 9 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Korin et al. 4 ("Korin") in view of Fujita et al. 5 ("Fujita") (Ans. 3-6; Final Act. 2-6). III. DISCUSSION The Examiner finds that Korin describes an electrolyte membrane that includes every limitation recited in claim 1 except it "fails to teach specifically an anode catalyst layer and cathode catalyst layer deposited on [a] porous substrate" (Final Act. 3 (relying on Korin, Abstract and ,i,i 2, 22, 35)). To resolve these differences, the Examiner relies on Fujita (id.). According to the Examiner, "Fujita teaches a fuel cell stack including an ionic liquid electrolyte membrane including a cathode catalyst layer and an anode catalyst layer disposed directly next to the membrane" and "further 4 US 2007/0160889 Al, published July 12, 2007. 5 US 2010/0221633 Al, published September 2, 2010. 3 Appeal2018-007799 Application 14/472,195 teaches the use of manifolds to direct reactants to the electrodes" (id. (relying on Fujita, Figs. 2, 56, and ,i,i 94, 131 )). Based on these findings, the Examiner concludes: It would have been obvious to the person having ordinary skill in the art at the time of the invention to provide catalysts and manifolds for the electrodes ofKorin such as suggested by Fujita in order to ensure that reactants are properly provided and catalyzed at the membrane such that the fuel cell functions to produce electricity. (Final Act. 3.) The Examiner further asserts that "the limitation 'deposited on [sic]' is a product by process limitation" and "that the structure of Korin in view of Fujita functions in the same manner as the claimed structure" (id.). The Appellant contends that Korin and Fujita do not disclose or suggest the functional limitations highlighted in reproduced claim 1 above (Appeal Br. 6, 9 (relying on Exhibits 1-4 (Evidence Appendix) including Skinner et al. 6 ("Skinner")). 7 Specifically, the Appellant argues that both Korin and Fujita describe proton (hydrogen)-conducting electrolyte membranes, which differ from the oxygen-conducting membrane as specified in the claims (Appeal Br. 7-8, 9-10 (relying on Spec. ,i,i 6-7)). Referring to Skinner, the Appellant argues that general considerations for 6 Stephen J. Skinner & John A. Kilner, Oxygen Ion Conductors, MATERIALS TODAY 30 (2003). 7 In an Advisory Action entered February 8, 2018 (item 9), the Examiner appears to indicate that Exhibits 1-4 will not be entered. But, as the Appellant points out (Appeal Br. 5), these documents are either necessarily part of the record (e.g., the Specification or Drawings) or were entered and considered before final rejection (see, e.g., Information Disclosure Statement filed August 28, 2014; Office Action entered June 12, 2017). 4 Appeal2018-007799 Application 14/472,195 oxygen ion conductors include a crystal lattice that must contain unoccupied sites equivalent to those occupied by lattice oxygen ions, in which the energy involved in migration from one site to an unoccupied equivalent site must be small (Appeal Br. 12-13). The Appellant argues that, based on these facts, the functional limitations are not inherently disclosed in Korin and Fujita (id. at 14). We agree with the Appellant that the Examiner's rejection is not well- founded, because the Examiner's factual findings are insufficient to demonstrate that the prior art structure resulting from the combination of Korin and Fujita would inherently or necessarily be configured to perform the contested functional limitations recited in claim 1. In re Giannelli, 739 F.3d 1375, 1379-80 (Fed. Cir. 2014). The Inventor explains that proton-exchange membrane fuel cells (PEMFC), which are proton (hydrogen)-conducting fuel cells, and solid- oxide fuel cells (SOFC), which are oxygen-conducting fuel cells, are two predominant fuel cell classes in commercial production (Spec. ,-J,-J 6-7; Fig. 1 (prior art)). Against this background, we consider Korin and Fujita. Korin describes a polymer electrolyte membrane comprising a polysiloxane-based R TV (room temperature vulcanized) flexible network and an ionic liquid entrapped within the network (Korin ,-J,-J 14, 22). According to Korin, the membrane provides "high proton conductivity" (id. ,-J 22). In the examples, Korin describes mixing silicon-RTV, diluting agent, ionic liquid, and R TV-9162 catalyst, casting the mixture on a teflon plate, and air drying to form a self-standing membrane (id. ,-i 89). Fujita discloses an electrolyte membrane 201 provided with an anode catalyst layer 202 on one surface of the membrane 201 and a cathode 5 Appeal2018-007799 Application 14/472,195 catalyst layer 203 provided on the other side (Fujita, Fig. 2 and ,i 131 ). Fujita teaches that the "[ e ]lectrolyte membrane 201 is not particularly limited so long as a material having proton conductivity and electrically insulating property is employed" and lists various polymer, inorganic, and composite membranes as examples (id. ,i 146). Skinner teaches that in oxygen ion conductors, current flow occurs by movement of the ions through a crystal lattice structure (Skinner 31 ). Skinner further teaches that "the crystal must contain unoccupied sites equivalent to those occupied by the lattice oxygen ions" and that "the energy involved in the process of migration from one site to the unoccupied equivalent site must be small, certainly less than about 1 e V" (id.). Thus, neither Korin nor Fujita has been shown to describe-either explicitly or inherently-an electrolyte membrane that is capable of conducting oxygen ions in a superoxide form when subjected to the conditions specified in claim 1. Instead, these references explicitly state that the disclosed membranes are proton (hydrogen)-conducting, as we found above. By contrast, the Specification repeatedly states that the membrane must be configured to be capable of performing the function recited in the claims (e.g., Spec. ,i,i 39, 65-66). Although the Examiner states that "Skinner is not commensurate in scope with the invention because Skinner does not teach the composite membrane where ionic liquid is provided in the pores of a substrate" (Ans. 5), the presence or absence of an ionic liquid does not negate Skinner's teaching that, e.g., the lattice structure must 6 Appeal2018-007799 Application 14/472,195 contain unoccupied sites equivalent to those occupied by the lattice oxygen ions. 8 Because the Examiner does not direct us to sufficient evidence that Korin's polysilicon membrane or Fujita's membranes are configured to have the requisite lattice structure or porosity to be capable of conducting oxygen ions, we cannot sustain the Examiner's rejection of claim 1.9 In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (inherency cannot be established by mere possibilities or probabilities). As claim 1 is the only independent claim on appeal, our reasoning applies to all rejected claims. IV. SUMMARY The Examiner's final decision to reject claims 1-3, 5-7, and 9 is reversed. REVERSED 8 The Examiner asserts that "Skinner specifically teaches that the oxygen conduction occurs by the movement of oxide ions through the crystal lattice ... in direct contrast to the instant [S]pecification which teaches ... oxygen conduction occurs in the ionic liquid" (Ans. 5 (relying on Spec. ,-J 39)). Consistent with the Appellant's position (Reply Br. 5-6), we do not read the Specification to disclose that the ability to conduct oxide ions depends on the ionic liquid irrespective of lattice structure. 9 While the Examiner asserts that "the composite membrane of Korin . . . is structurally the same as the disclosed composite membrane and therefore is configured to conduct oxygen in an ionic superoxide form since the ionic liquid would function in the same manner as the claimed ionic liquid" (Ans. 4), the Examiner has not made sufficient findings of either of the structure described in the Specification or the teachings of the allegedly identical structure in Korin to support this assertion. See Final Act. 3. 7