Joon Seon Jeong et al.

Patent Trials and Appeals Board

Sep 24, 2019

14039104 - (D) (P.T.A.B. Sep. 24, 2019)

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.
14/039,104 09/27/2013 Joon Seon JEONG 15639-000117/US 1631
30593 7590 09/24/2019
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
JAIN, SALIL
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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):
dcmailroom@hdp.com
jcastellano@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOON SEON JEONG, HYUN SEOK KIM, DA HYE PARK,
DONG JIN HAM, and HYO RANG KANG

Appeal 2018-002957
Application 14/039,104
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
N. WHITNEY WILSON, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13, 15–17, 27, and 28. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Samsung
Electronics Co., Ltd. Appeal Br. 2.
Appeal 2018-002957
Application 14/039,104

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CLAIMED SUBJECT MATTER
The claims are directed to a capacitive deionization apparatus (see,
e.g., claim 1) and a method of treating fluid using the same (see, e.g., claim
27). Claim 1, reproduced below, is illustrative of the apparatus:
1. A capacitive deionization apparatus comprising:
at least one pair of porous electrodes including an
electrode material, the electrode material having a surface area
that facilitates electrostatic adsorption of feed ions; and
a spacer structure disposed between the at least one pair
of porous electrodes, the spacer structure including an
electrically-insulating material and an ion exchange polymer
coating on a surface of the electrically-insulating material, the
ion exchange polymer coating including an ion exchange group,
the spacer structure defining a path for flowing a fluid
therethrough, and the path extending along a surface of the
spacer structure,
wherein the ion exchange polymer coating is different
from the electrically-insulating material,
wherein the electrically-insulating material includes a
polyester, a polyolefin, a polyamide, an aromatic vinyl
polymer, cellulose, a cellulose derivative, a polyetherether
ketone, a polyimide, a polyvinylchloride, or a combination
thereof, and
wherein the spacer structure has an open mesh including
a mesh opening.
Appeal Br. 21 (claims appendix).
REJECTIONS
The Examiner maintains the following rejections:
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A. The rejection of claims 1–13 and 15–172 under 35 U.S.C. § 112(a)
or § 112 ¶ 1 (pre-AIA) as failing to comply with the written
description requirement;
B. The rejection of claims 1, 4, 8–11, 15–17, and 27 under pre-AIA
35 U.S.C. § 103(a) as obvious over Andelman ’7683 in view of
Banerjee4 and Reinhoudt5;
C. The rejection of claims 2, 3, 5–7 and 28 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Andelman ’768 in view of Banerjee and
Reinhoudt and further in view of Andelman ’7826;
D. The rejection of claim 12 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Andelman ’768 in view of Banerjee and Reinhoudt
and further in view of Andelman ’9137; and
E. The rejection of claim 13 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Andelman ’768 in view of Banerjee and Reinhoudt
and further in view of Srinivasan8.

2 Although the Examiner lists claim 14 as rejected, we omit it because the
rejection of this claim is moot given it has been canceled.
3 Andelman, US 5,415,768, issued May 16, 1995.
4 Banerjee, US 5,447,636, issued Sept. 5, 1995.
5 Reinhoudt et al., US 2013/0075260 A1, published March 28, 2013.
6 Andelman et al., US 2002/0167782 A1, published Nov. 14, 2002. The
Examiner refers to this document as “Walker.”
7 Andelman, US 2004/0012913 A1, published Jan/ 22, 2004.
8 Srinivasan et al., US 2003/0173222 A1, published Sept. 18, 2003.
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Application 14/039,104

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OPINION
Rejection A
Claim 1 is directed to a capacitive deionization apparatus that includes
a spacer structure disposed between a pair of porous electrodes with “the
spacer structure defining a path for flowing a fluid therethrough, and the
path extending along a surface of the spacer structure.”
The Examiner rejects claims 1–13 and 15–17 under 35 U.S.C.
§ 112(a) or § 112 ¶ 1 (pre-AIA) because “while there is written description
support for the limitation ‘the spacer structure defining a path for flowing a
fluid therethrough,’ there appears to be no written description support for the
limitation ‘the path extending along a surface of the spacer structure.’”
Final 3.
Appellant contends that Figure 1(A) and paragraphs 49, 52, 61, 76,
and 77 of the Specification provide written descriptive support. Appeal
Br. 8.
The issue is: Has Appellant identified a reversible error in the
Examiner’s finding of lack of written descriptive support for the language
“the path extending along a surface of the spacer structure?”
Appellant has identified such an error.
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Application 14/039,104

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We reproduce Figure 1(A) below:

Figure 1(A) is a schematic view of an examplary
capacitive deionization apparatus

According to the Specification, a capacitive deionization apparatus “is
a device that applies a voltage to porous electrodes having nano-sized pores
to provide them with a polarity.” Spec. ¶ 4. When a medium containing
dissolved ions, such as hard water, flows between the two electrodes, the
ions absorb onto the electrodes. Id. Appellant’s capacitive deionization
apparatus includes a spacer structure that provides a path for flowing fluid
between the pair of porous electrodes. Spec. ¶¶ 8, 11, and 32. This path is
also referred to as a flow channel. Spec. ¶ 39.
The Specification describes the spacer as formed of materials having
open areas for the fluid to flow. See Spec. ¶ 40 (“[T]he spacer structure may
be an open mesh, non-woven fabric, woven fabric, or foam shape.” The
thickness and open area of the spacer depends on the flow rate and solution
resistance.); Spec. ¶ 41 (“[T]he ion exchange group may be on the exterior
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surfaces as well as the interior surfaces that define the pores/open areas
within the spacer structure.”).
Figure 1(A) depicts spacer structure 3 between porous electrodes 2
and 2’ “to provide a flow path.” Spec. ¶ 47. Although the Specification
does not explicitly state it, Figure 1(A) reasonably conveys that the flow
path is the path depicted by the downward arrows in the figure.
Claim 1 requires a spacer structure including an electrically-insulating
material coated with an ion exchange polymer. The spacer has an open
mesh structure with a mesh opening. In other words, there are open areas
for flow of the fluid to be treated.
The Specification reasonably conveys that Appellant had possession
of a spacer defining a path for flowing a fluid therethrough with the path
“extending along a surface of the spacer structure.” The path extends in the
direction of the arrows of Figure 1(A) along the surfaces of the ion-
exchange-polymer-coated mesh that define the mesh openings.
We do not sustain the Examiner’s rejection of claims 1–13 and 15–17
as lacking written descriptive support.

Rejections B–E
The Examiner rejects claims 1, 4, 8–11, 15–17, and 27 under pre-AIA
35 U.S.C. § 103(a) as obvious over Andelman ’768 in view of Banerjee and
Reinhoudt and adds further references to reject dependent claims 2, 3, 5–7,
12, 13, and 28.
The question arising for all the rejections is: Has Appellant identified
a reversible error in the Examiner’s finding of a reason or suggestion in
Banerjee and Reinhoudt to create a spacer structure of electrically-insulating
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material coated with an ion exchange coating such that the spacer structure
has an open mesh structure including a mesh opening and such that the
spacer structure defines a path for flowing a fluid therethrough that extends
along a surface of the open mesh structure?
Appellant has identified such an error.
As found by the Examiner, Andelman ’768 discloses a capacitive
deionization apparatus (flow-through capacitor 10) including spacers (layers
12 and 18) between a pair of electrodes (16, 17 and 21, 22) as required by
claim 1. Final 4–5; Andelman ’768 Fig. 1 and col. 8, l. 48–col. 9, l. 10.
Andelman ’768 suggests forming the spacer from a number of
materials including a porous woven or nonwoven fibrous material of, for
example, polymeric fibers (e.g., polyolefins, polyamide, like nylon, or
polyester) or from a microporous, polymeric membrane of ionically
conductive materials, such as fluorocarbon, polyamide membranes, like
Nafion®. Andelman ’768 col. 4, l. 65–col. 5, l. 6. But Andelman ’768 does
not disclose coating polymeric fibers with an ion exchange polymer such as
Nafion polymer to create an open mesh spacer. Thus, the Examiner turns to
Banerjee and Reinhoudt. Final 5–7.
We agree with Appellant that Banerjee and Reinhoudt do not suggest
forming the spacer of Andelman ’768 as an insulating material coated with
an ion exchange polymer coating to create an open mesh structure.
Banerjee teaches forming a composite membrane that is “substantially
non-porous to bulk flow of fluids but permits ions, especially cations, to
transport across the composite structure.” Banerjee col. 4, ll. 5–12.
Banerjee does not wish the fluid to flow in a path through the membrane,
only the ions. But Andelman ’768 requires the spacer material be fluid
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porous in a way that allows fluid to flow to the open end of the inner hollow
tube. Andelman ’768 col. 9, ll. 18–24. Thus, the ordinary artisan would not
have adopted the composite membrane of Banerjee for use in Andelman
’768 as it would not perform the intended use required by Andelman ’768 of
allowing fluid to flow in the manner required by Andelman ’768.
The Examiner relied upon Reinhoudt for its teaching of using a
netting structure, which the Examiner finds is an open mesh including a
mesh opening. Final 7 (citing Reinhoudt ¶ 73). Reinhoudt’s netting
structure with pillars 91 and framework 93, however, is not disclosed as an
electrically-insulating material coated with ion exchange polymer.
Reinhoudt ¶ 73.
Thus, as applied by the Examiner, neither Banerjee nor Reinhoudt,
alone or together, provide the required suggestion for forming the spacer of
Andelman ’768 as an electrically-insulating material coated with an ion
exchange polymer with a spacer structure that has an open mesh including a
mesh opening and having a path for flowing a fluid therethrough as required
by claim 1.
None of the references cited by the Examiner to reject dependent
claims cures the deficiency. Thus, we do not sustain any of the obviousness
rejections.

DECISION
Claims
Rejected
Basis Affirmed Reversed
1–13, 15–17 § 112(a) 1–13, 15–
17
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Claims
Rejected
Basis Affirmed Reversed
1, 4, 8–11,
15–17, 27
§ 103(a)
Andelman ’768,
Banerjee,
Reinhoudt
1, 4, 8–11,
15–17, 27
2, 3, 5–7, 28 § 103(a)
Andelman ’768,
Banerjee,
Reinhoudt,
Andelman ’782
2, 3, 5–7,
28
12 § 103(a)
Andelman ’768,
Banerjee,
Reinhoudt,
Andelman ’913
12
13 § 103(a)
Andelman ’768,
Banerjee,
Reinhoudt,
Srinivasan
13
Overall
Outcome
1–13, 15–
17, 27, 28

REVERSED