Ex Parte Swalla et al

Patent Trials and Appeals BoardMay 23, 2014

12136383 - (D) (P.T.A.B. May. 23, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/136,383 06/10/2008 Dana Ray Swalla 226674-1/YOD (GELC:0003) 5483 62204 7590 05/23/2014 GE Licensing ATTN: Brandon, K1-2A62A 1 Research Circle Niskayuna, NY 12309 EXAMINER THOMAS, CIEL P ART UNIT PAPER NUMBER 1754 MAIL DATE DELIVERY MODE 05/23/2014 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 DANA RAY SWALLA, RICHARD SCOTT BOURGEOIS, STEVEN PARASZCZAK, and DONALD JOSEPH BUCKLEY ________________ Appeal 2012-011916 Application 12/136,383 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-011916 Application 12/136,383 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim an electrolyzer and methods for making the electrolyzer and assembling an electrolyzer stack. Claim 1 is illustrative: 1. A method for forming an electrolyzer comprising: disposing a heat-generating element adjacent to a surface of an electrolyzer cell component; positioning the surface of the electrolyzer cell component in contact with a surface of an adjoining electrolyzer cell component; and heating the heat-generating element to soften the surface of the electrolyzer cell component and form a fused interface between the electrolyzer cell components. The References Buck (Winkless)1 US 3,450,856 Jun. 17, 1969 Shaw US 4,586,624 May 6, 1986 Roberts US 4,605,475 Aug. 12, 1986 Cuomo US 5,284,566 Feb. 8, 1994 Towe US 6,235,166 B1 May 22, 2001 Clark US 6,524,452 B1 Feb. 25, 2003 Martin US 2005/0058878 A1 Mar. 17, 2005 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 4, 6-8, 10-13, 15, and 18-20 over Clark in view of Shaw, claims 5 and 14 over Clark in view of Shaw and Winkless, claim 9 over Clark in view of 1 The Examiner (final rejection mailed Sep. 21, 2011, p. 10) and the Appellants (Br. 4) refer to Buck as “Winkless”. For consistency we likewise do so. Appeal 2012-011916 Application 12/136,383 3 Shaw and Cuomo, claim 16 over Clark in view of Shaw, Martin, and Roberts and claim 17 over Clark in view of Shaw and Towe. OPINION We affirm the rejections. The Appellants rely upon the same arguments with respect to claims 1-4, 6-13, and 15-20 and rely upon the same argument as to the separate patentability of dependent claims 5 and 14 (Br. 5-15). We therefore limit our discussion to one claim in each of those groups, i.e., claims 1 and 5. Claims 2-4, 6-13 and 15-20 stand or fall with claim 1, and claim 14 stands or falls with claim 5. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 1 Clark discloses, for use in an electrochemical system which can be an electrolyzer, a subassembly comprising an electrically insulating polymeric flow-frame, a bipolar electrode and an ion-selective membrane defining separate anolyte and catholyte chambers (col. 1, ll. 3-11, 23-27; col. 2, ll. 42- 52; col. 6, ll. 5-13). The subassembly is stackable with other such subassemblies to form an array of electrochemical cells (col. 3, ll. 45-47). The perimeters of chamber-defining portions of the stacked flow-frames can be welded to form an efficient seal which ensures substantial isolation of the anolyte and catholyte chambers within each flow-frame (col. 4, ll. 7-14). Shaw economically welds two thermoplastic materials by placing between them a pair of flat resistance wires encased in a plastic sheath and passing electrical current through the wires until enough heat has been generated to weld the materials together (abstract; col. 1, l. 6; col. 2, ll. 16- 30, 57-62). Appeal 2012-011916 Application 12/136,383 4 The Appellants argue that Shaw is nonanalogous art because it is directed primarily toward sealing together thermoplastic lids and drums (col. 1, ll. 6-10), not to the problems associated with complex electrolyzer structures (Br. 9-10). The test of whether a reference is from an analogous art is first, whether it is within the field of the inventor’s endeavor, and second, if it is not, whether it is reasonably pertinent to the particular problem with which the inventor was involved. See In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). A reference is reasonably pertinent if, even though it may be in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Shaw pertains broadly to heat sealing together thermoplastic materials (abstract; col. 1, ll. 6-10) and, therefore, would have commended itself to the inventor’s attention in considering the inventor’s problem regarding heat sealing together plastic electrolyzer cells (Spec. ¶¶ 0009-10). Shaw, therefore, is analogous art. The Appellants argue that one of ordinary skill in the art would not have used Shaw’s wires to seal the labyrinthine anolyte/catholyte passageways within Clark’s flow-frames (abstract; col. 3, ll. 10-18; col. 7, ll. 11-30) because doing so would block the passageways, thereby rendering the electrolyzer inoperable and changing the electrolyzer’s principle of operation (Br. 11; Reply Br. 2-3). The rejection is based upon using Shaw’s wires to seal the perimeters of the chamber-defining portions of Clark’s flow-frames, not to seal the Appeal 2012-011916 Application 12/136,383 5 labyrinthine anolyte/catholyte passageways (final rejection mailed Sep. 21, 2011, pp. 3-4). The Appellants argue that Clark’s welding “is akin to sealing the electrolyzer stack 18 of the present application and not the electrolyzer cells 36 therein” (Reply Br. 3). The Appellants’ claim 1 requires fusing the interface between adjoining electrolyzer cell components. Each of Clark’s stackable subassemblies comprising a flow-frame, a bipolar electrode and an ion- selective membrane defining separate anolyte and catholyte chambers (col. 1, ll. 23-27; col. 2, ll. 42-50) is an electrolyzer cell as that term is used by the Appellants (Spec. ¶ 0022). Thus, Clark’s flow-frame is an electrolyzer cell component. Clark’s welding of adjoining flow-frame perimeters (col. 4, ll. 7-14), therefore, fuses the interface between adjoining electrolyzer cell components. Accordingly, we are not persuaded of reversible error in the rejections of claims 1-4, 6-13, and 15-20. Claim 5 Claim 5 requires heating by inducing electrical current in a conductor. Winkless discloses an induction heating method that is useful in many diverse applications, one of which is heat sealing cartons, and indicates that resistance heating and induction heating are alternative heating techniques (col. 1, ll. 14-10, 26-29; col. 1, l. 64 – col. 2, l. 25). The Appellants argue that one of ordinary skill in the art would not have replaced Shaw’s resistance heating with Winkless’ induction heating because Shaw’s desires economy (col. 2, ll. 16-23) whereas induction Appeal 2012-011916 Application 12/136,383 6 heating may require additional elements that would add complexity and cost while performing the same function (Br. 13; Reply Br. 4-5). The Appellants have not provided evidence that induction heating would add complexity and cost that would prevent one of ordinary skill in the art from using it as an alternative to Shaw’s resistance heating. The Appellants have provided mere attorney argument to that effect, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Hence, we are not convinced of reversible error in the rejection of claims 5 and 14. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1-4, 6-8, 10-13, 15, and 18-20 over Clark in view of Shaw, claims 5 and 14 over Clark in view of Shaw and Winkless, claim 9 over Clark in view of Shaw and Cuomo, claim 16 over Clark in view of Shaw, Martin, and Roberts and claim 17 over Clark in view of Shaw and Towe are affirmed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED bar