Ex Parte Tender

Patent Trial and Appeal Board

Aug 10, 2016

12716118 (P.T.A.B. Aug. 10, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/716,118 03/02/2010 Leonard M. Tender 99030-US2 1098
26384 7590 08/10/2016
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
MCCONNELL, MARLA D
ART UNIT PAPER NUMBER
1758
MAIL DATE DELIVERY MODE
08/10/2016 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 LEONARD M. TENDER
____________________

Appeal 2015-001711
Application 12/716,118
Technology Center 1700
____________________

Before CHUNG K. PAK, AVELYN M. ROSS, and JEFFREY R. SNAY,
Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1–20, 26–29, and 31. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In our decision below, we refer to the Specification filed March 2, 2010
(Spec.), the Final Office Action appealed from, mailed March 21, 2014
(Final Act.), the Appeal Brief filed August 29, 2014 (Appeal Br.), the
Examiner’s Answer mailed October 2, 2014 (Ans.), and the Reply Brief
filed November 19, 2014 (Reply Br.).
2 Appellant identifies the real party in interest as the Government of the
United States of America, as represented by the Secretary of the Navy.
Appeal Br. 2.
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STATEMENT OF CASE
The claims are directed to an apparatus for generating electrical power
using sunlight and microorganisms. Spec. ¶ 2. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. An apparatus for storing sunlight-derived energy and
providing electrical power comprising:
a container structure, comprising:
at least one wall defining an interior including a first
interior portion, and a second interior portion, the at least
one wall including at least one transparent or translucent
portion allowing external light to enter the first interior
portion; and
first and second electrical connectors mounted to
the at least one wall and electrically coupleable to an
external circuit;
an aqueous catholyte comprising seawater and
photosynthetic organisms collected from a coastal environment
in the first interior portion;
an anolyte in the second interior portion; wherein the
anolyte comprises marine sediment collected from the same
coastal environment as the seawater;
a semi-permeable barrier separating the catholyte from the
anolyte;
a cathode electrode within the catholyte in the first interior
portion;
a first electrical conductor coupled between the cathode
electrode and the first electrical connector; an anode electrode
within the anolyte in the second interior portion; and
a second electrical conductor coupled between the anode
electrode and the second electrical connector.
Claims Appendix at Appeal Br. 10.

REJECTIONS
The Examiner made the following rejections:
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A. Claims 1 and 26, as well as claims depending therefrom,
stand rejected under 35 U.S.C. §112 second paragraph as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards
as the invention. Final Act. 2.

B. Claim 26 and 28 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Berk,3 as evidenced by Conlan.4
Id. at 3.

C. Claims 1–21 and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Berk in view of Beck,5
as evidenced by Conlan. Id. at 7.

D. Claims 29 and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Berk in view of Beck, as
evidenced by Conlan, or Berk, as evidenced by Conlan, in
view of Rosenbaum,6 as evidenced by LaLiberte7 and
Nandi.8 Id. at 13.

3 Richard S. Berk & James H. Canfield, Bioelectrochemical Energy
Conversion 12 APPLIED MICROBIOLOGY 10–12 (January 1964) (hereinafter
“Berk”).
4 Conlan et al., Rhodopseudomonas palustris Regulons Detected by Cross-
Species Analysis of Alphaproteobacterial Genomes 71 APPLIED AND
ENVIRONMENTAL MICROBIOLOGY 7442–7452 (November 2005) (hereinafter
“Conlan”).
5 Beck, US 4,117,202, issued September 26, 1978 (hereinafter “Beck”).
6 Rosenbaum et al., In Situ Electrooxidation of Photobiological Hydrogen in
a Photobioelectrochemical Fuel Cell Based on Rhodbacter sphaeroides 39
ENVIRONMENTAL SCIENCE & TECHNOLOGY 6328–6333 (November 16, 2005)
(hereinafter “Rosenbaum”).
7 P. LaLiberte & D.J. Grimes, Survival of Escherichia coli in lake bottom
sediment 43 APPLIED AND ENVIRONMENTAL MICROBIOLOGY 623–628
(March 1982) (hereinafter “LaLiberte”).
8 R. Nandi & S. Sengupta, Microbial Production of Hydrogen: An Overview
24 CRITICAL REVIEWS IN MICROBIOLOGY 61–84 (1998) (hereinafter
“Nandi”).
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E. Claims 1–20 and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Berk in view of Beck,
as evidenced by Conlan, and Rosenbaum, as evidenced by
LaLiberte and Nandi. Id. at 15.

F. Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Berk, as evidenced by Conlan,
in view of Rosenbaum, as evidenced by LaLiberte and
Nandi. Id. at 20.

OPINION
Rejection A — Indefiniteness
The Examiner rejects independent claims 1 and 26 (and claims
depending therefrom) as being indefinite for failing to particularly point out
and distinctly claim the subject matter of Appellant’s invention. Final Act.
2. The Examiner finds that “marine sediment,” as used in claims 1 and 26,
is not defined by the specification and “could vary considerably from one
marine sediment in another part of the world, as well as in different marine
environments (i.e. lakes, rivers, oceans and the various depths of each) . . . .”
Id. In addition, the Examiner explains that “it is unclear what materials are
present in the sediment” and, by its very nature, “marine sediments can be
constantly changing.” Id. at 2–3. The Examiner explains that the
Appellant’s definition that includes “any insoluble material” provides little
guidance and “could potentially comprise anything insoluble.” Id. at 3. As
a result, the Examiner concludes claims 1 and 26 are indefinite. Id.
Appellant argues that “marine sediment” is a term of art and means
“any deposit of insoluble material, primarily rock and soil particles,
transported from land areas to the ocean by wind, ice, and rivers, as well as
the remains of marine organisms, products of submarine volcanism,
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chemical precipitates from seawater, and materials from outer space (e.g.,
meteorites) that accumulate on the seafloor.” Appeal Br. 4 (quoting
Encyclopædia Britannica Online (Appendix B, pages 1–2)). Appellant
contends the Examiner’s definition is overbroad in that it omits “that the
insoluble material is ‘primarily rock and soil particles.’” Id. Appellant also
urges that the Examiner’s interpretation that “marine sediment” may include
only microorganisms is arbitrary and inaccurate because that definition
would exclude the primary components, i.e., rock and/or soil particles. Id. at
4–5. Appellant also argues that the “variability of marine sediment from
place to place, or any contamination therein, does not render the term
indefinite” because breadth is not synonymous with indefiniteness. Id. at 5.
The test for definiteness is whether one skilled in the art, at the time
the application was filed, would understand the bounds of the claim when
read in light of the specification and prosecution history. Nautilus, Inc. v.
Biosig Instruments, Inc., __ U.S. __, 134 S. Ct. 2120, 2128 (2014). In
determining whether a particular claim is definite, the claim’s language must
be analyzed in light of the content of the particular application, the prior
art’s teaching, and the interpretation that would be given to the claim’s
language by a person of ordinary skill in the art at the time the invention was
made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009). “[B]readth is
not to be equated with indefiniteness . . . .” In re Miller, 441 F.2d 689, 693
(CCPA 1971).
We agree with Appellant. In this instance, we conclude that those
skilled in the art would have no uncertainty concerning the subject matter
and scope of the claims. The Specification explains, with respect to the term
“marine sediment” that:
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[i]n many marine environments substantial organic matter
resides in sediment pore water, and is typically derived from
settlement of dead phytoplankton from overlying water and/or
from erosion of adjacent land. In addition, oxidants such as
oxygen and sulfate are supplied into sediment pore water by
diffusion from overlying water and by mechanisms driven by
motion of overlying water (e.g., tidal pumping and/or
resuspension). In such environments, the combination of organic
matter and oxidants support microbial activity, and the amount
of organic matter often far exceeds the amount of oxidant
resulting in microbial depletion of oxidants in sediment.
Spec. ¶ 17. Moreover, the Specification discusses “marine sediment” in the
context of seawater as opposed to freshwater. See e.g., Spec. ¶ 22 (the
“oxidant depleted (anoxic) marine sediment anolyte 140 collected from a
shallow coastal environment overlaid with seawater (oxic water catholyte)
120 collected from the same environment.”). The disclosures in the
Specification are consistent with “known meaning in the art” for marine
sediment as cited by Appellant. Appeal Br. 4 and Appendix B, B-1–B-2.
Moreover, the Examiner’s position that “marine sediment” is variable, i.e.,
constantly changing, does not render the term indefinite as it goes to the
breadth of the claim rather than its meaning. Miller, 441 F.2d at 693. This
is particularly true in this instance because the marine sediment collected is
limited by the same coastal environment from which the seawater used for
an aqueous catholyte is collected. See claims 1 and 26.
Thus, on this record, the Examiner does not demonstrate that one of
ordinary skill in the art would be unable to ascertain the subject matter and
scope of the claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Accordingly, we conclude that claims 1 and 26 (as well as claims depending
therefrom) are not indefinite.

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Rejections B — Anticipation
The Examiner rejects claims 26 and 28 as anticipated in light of Berk
alone (as evidenced by Conlan). Final Act. 3. Appellant argues that neither
reference teaches an apparatus where the “anolyte comprises marine
sediment” as claimed by independent claim 26 of the instant application.
Appeal Br. 6.
The Examiner finds, relevant to the “marine sediment” limitation, that
“Berk discloses that the first compartment contains within it a platinum
anode immersed in a suspension of a photosynthetic organism in the second
compartment (R. rubrum) (page 11, first full paragraph and Results) with
malate (corresponds to an anode with an anolyte in a second interior portion
of the container)).” Final Act. 5. While the Examiner notes that “Berk does
not specifically state that R. rubrum is marine sediment” (Id. at 19), the
Examiner finds that R. rubrum is found in marine sediment, “[t]herefore, the
anolyte comprises marine sediment.” Id. The Examiner also explains that
the term “marine” can include freshwater. Id. The Examiner also finds that
“‘marine sediment’ can reasonably be interpreted to be a salt solution (i.e.,
characteristic of the sea) containing sediment” and because the R. rubrum of
Berk “is sedimented and placed in a sodium salt solution, [it] can therefore
be reasonably construed as marine sediment.” Id. at 6. The Examiner also
finds that “collected from the same coastal environment as the seawater” is a
product-by-process limitation and therefore the product itself does not
depend on the manner of production. Id.
Appellant argues that Berk does not teach “marine sediment” because:
(1) a microorganism alone cannot be a marine sediment (Id.); (2) “the R.
rubrum of Berk is found in freshwater sediment, not marine sediment,” i.e.,
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sediment found in seawater (Id.); and (3) “Berk’s anolyte contains no rock or
soil, and so it is not a marine sediment.” Appeal Br. at 7. Appellant also
urges that, contrary to the Examiner’s position, marine sediment cannot
merely be microorganisms in a salt solution. Reply Br. 1. Appellant presses
that the Examiner’s interpretation ignores that the presence of rock and soil
particles is required according to the definition of marine sediment. Id.
Therefore, because an entire claim element is absent, Appellant maintains
that the Examiner has failed to make a prima facie case of anticipation.
Thus, the issue before us, with respect to Rejection B, is whether the
Examiner committed reversible error finding marine sediment present in
Berk. We agree with Appellant and answer in the affirmative.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id.
As discussed above, Appellant’s Specification makes clear that
marine sediment is known to contain organic matter from microorganisms as
well as sand and rock from erosion of adjacent lands. Spec. ¶ 17. The
Specification and claims also make clear that the source of the marine
sediment is the same coastal environment from which the seawater, used as
the catholyte, is obtained. See e.g., ¶ 22, claims 1 and 26. This implies that
both the seawater and the marine sediment have similar organic matter
present. This understanding is consistent with the definition provided by
Appellant that marine sediment is “any deposit of insoluble material,
primarily rock and soil particles, transported from land areas to the ocean . . .
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as well as the remains of marine organisms . . . .” Appendix B at Appeal Br.
B1.
The Examiner’s definition, that marine sediment may include
microorganisms alone, is not reasonable as it is inconsistent with the
intrinsic record. Specifically, such definition excludes the presence of rock
and soil from erosion and overlooks that the sediment is collected from
coastal seawater environments. We disagree with the Examiner’s position
that marine, in the context of the instant invention, includes freshwater. See
e.g., ¶ 22, claims 1 and 26. Moreover, we conclude that the “collected from
the same coastal environment as the seawater” is not a product-by-process
limitation, but rather further defines the content of the anolyte.
With this understanding, we find that the anolyte of Berk does not
include “marine sediment,” as taught by the instant application. Rather,
Berk explains that the anolyte comprises “a clean electrode . . . immersed in
a suspension of R. rubrum supplemented with malate . . . .” Berk at 11.
And, while R. rubrum, may be found in marine sediment (as evidenced by
Conlan at 7442), R. rubrum, without more, is not marine sediment.
Accordingly, we do not sustain the Examiner’s rejection.

Rejections C–F — Obviousness
The Examiner rejects claim 1 and 26 (including claims depending
therefrom) as obvious in light of Berk (as evidenced by Conlan) in
combination with Beck and/or Rosenbaum (as evidenced by LaLiberte and
Nandi). Final Act. 8–25. Appellant again argues that none of the references
(alone or in combination) teaches or suggests an “anolyte compris[ing]
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marine sediment collected from the same coastal environment as the
seawater” as claimed by claims 1 and 26 of the instant application.
For the reasons discussed above for Rejection B, the Examiner
concludes that all claims are obvious over Berk (as evidenced by Conlan) in
combination with Beck.9 The Examiner also concludes that claims 1 and 26
(and their dependent claims) are obvious in light of the combination
additionally including Rosenbaum (as evidenced by LaLiberte and Nandi).
Id. at 13–25. And with reference to Rosembaum, the Examiner finds that
“E. coli is marine sediment (as evidenced by LaLiberte, page 626, second
column, first full paragraph) (corresponds to the anolyte comprises marine
sediment).” Id. at 20.
Appellant argues that the same reasoning applied to Rejection B
above establishes that the Examiner has failed to establish a prima facie case
of obviousness—that is, that no marine sediment is present in Berk or the
other cited references. Appeal Br. 7. Appellant again stresses that rock and
soil particles must be present in Marine sediment. Id.; Ans. 1–2. Appellant
also urges that there is no reason to modify the references to include a
marine sediment. Id. at 8.
Therefore, the issue before us, with respect to Rejection C–F, is
whether the Examiner reversibly errs in concluding that Berk and/or

9 The Examiner acknowledges that Berk does not teach “first and second
electrical connectors mounted to at least one wall and electrically coupled to
an external circuit” as required by claim 1 and depending claims. Final Act.
10. However, the Examiner finds that Beck, which “discloses a solar
powered biological fuel cell similar to that of Berk” also electrical
connectors mounted to a wall. Id. at 11.
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Rosenbaum suggest an anolyte comprising marine sediment as claimed by
the instant application.
Again, we agree with Appellant. We find no marine sediment in the
anolyte of either Berk (discussed above) or Rosenbaum. Rosenbaum teaches
that “[t]he anode compartment contain[s] the bacterial solution, the anode . .
. and a silver/silver chloride electrode.” Rosenbaum at 6329. And, while E.
coli may be found in marine sediment (as evidenced by LaLiberte at 626),
alone, E. coli is not marine sediment. Moreover, the Examiner provides no
reason to modify the anolyte of either Berk or Rosenbaum to include a
marine sediment. On this record, we cannot sustain the Examiner’s
Rejections C–F.

CONCLUSION
The Examiner reversibly errs in rejecting claims 1–20, 26–29 and 31.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–20, 26–29
and 31 is reversed.

REVERSED