Lawrence Livermore National Security, LLC et al.

Patent Trials and Appeals Board

May 10, 2021

2020002849 (P.T.A.B. May. 10, 2021)

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.
14/223,192 03/24/2014 Matthew E. Suss IL-12771 5605
24981 7590 05/10/2021
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
FRIDAY, STEVEN A
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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):
llnldocket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW E. SUSS, ANDREW J. PASCALL,
CHRISTOPHER SPADACCINI, MICHAEL STADERMANN,
and JUAN G. SANTIAGO
Appeal 2020-002849
Application 14/223,192
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a), from the
Examiner’s decision finally rejecting claims 12–16.3

1 The following documents are of record in this appeal: Specification filed
Mar. 24, 2014 (“Spec.”); Final Office Action dated May 2, 2019 (“Final
Act.”); Appeal Brief filed Sept. 18, 2019 (“Appeal Br.”); Examiner’s
Answer dated Jan. 7, 2020 (“Ans.”); and Reply Brief filed Mar. 3, 2020
(“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Lawrence Livermore
National Security, LLC. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2020-002849
Application 14/223,192

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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to segmented electrodes for water desalination.
Spec. ¶ 3. Claim 12, reproduced below, is illustrative of the claimed subject
matter:
12. A method of capacitive desalination, comprising the
steps of:
providing a target solution containing salt;
providing regeneration water;
electrophoretically depositing a first carbon aerogel to
create a first electrode conductor unit, wherein said first
electrode conductor unit is fabricated through the use of
electrophoretic deposition of said first carbon aerogel to create
said first electrode conductor unit wherein said first electrode
conductor unit has a thickness of one hundred microns or less
with said first carbon aerogel having first pores;
electrophoretically depositing a second carbon aerogel to
create a second electrode conductor unit, wherein said second
electrode conductor unit is fabricated through the use of
electrophoretic deposition of said second carbon aerogel to
create said second electrode conductor unit wherein said second
electrode conductor unit has a thickness of one hundred
microns or less with said second carbon aerogel having second
pores;
electrophoretically depositing a silica dielectric material
to create a separator unit, wherein said separator unit is
fabricated by electrophoretic deposition of said silica dielectric
material to create said separator unit wherein said separator unit
has a thickness of one hundred microns or less wherein said
separator has one side and has an other side;
wherein said step of electrophoretically depositing a first
carbon aerogel to create a first electrode conductor unit
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provides positioning of said first electrode conductor unit
adjacent said one side of said separator;
wherein said step of electrophoretically depositing a
second carbon aerogel to create a second electrode conductor
unit provides positioning of said second electrode conductor
unit adjacent said other side of said separator;
providing a voltage system that applies a voltage to said
first electrode conductor unit and said second electrode
conductor unit; and
in one step pumping said target salt solution into said
first pores of said first electrode conductor unit and into said
second pores of said second electrode conductor unit while said
voltage system applies voltage to said first electrode conductor
unit and said second electrode conductor unit thereby causing at
least a portion of said salt to be adsorbed in said first pores and
said second pores providing desalination of said target salt
solution, and
in another step pumping said regeneration water into said
first pores of said first electrode conductor unit and into said
second pores of said second electrode conductor unit while said
voltage system does not apply a voltage to said first electrode
conductor unit and said second electrode conductor unit thereby
regenerating said first electrode conductor unit and said second
electrode conductor unit.
Appeal Br. 22–23 (Claims App.)
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Seed US 2011/0240472 A1 Oct. 6, 2011
Peng US 2011/0311855 A1 Dec. 22, 2011
Worsley US 2013/0004761 A1 Jan. 3, 2013
Yeung US 2016/0280569 A1 Sept. 29, 2016

Appeal 2020-002849
Application 14/223,192

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REJECTION
Claims 12–16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Seed, Worsley, Yeung, and Peng. Final Act. 2–3.
OPINION
The Examiner found that Seed discloses a method of desalination that
includes steps of fabricating first and second electrode conductor units 23A,
23C with separator 30 positioned between them. See generally Final Act. 2–
3; see, e.g., Seed ¶¶ 23, 25–26. The Examiner found that “each electrode
conductor unit comprises a porous (mesh) current conductor layer and a
porous electrode material layer,” which may be activated carbon. Final Act.
3; see Seed ¶¶ 21–22. The Examiner found that “Seed does not teach that the
electrode conductor units and separator units are provided by electrophoretic
deposition of carbon aerogel and silica dielectric material, respectively, or
the claimed [separator] thickness.” Final Act. 3.
The Examiner determined that the ordinary artisan would have
modified Seed’s process “to include the use of carbon aerogel as the
electrode material . . . because . . . [it] is [a] porous carbon material with
high surface area, low cost, and mechanical strength.” Final Act. 4 (citing
Worsley ¶¶ 3–4). The Examiner found that the ordinary artisan would have
used Worsley’s known method of electrophoretic deposition to apply the
aerogel, because it “allows improved control of composition, shape and
structure.” Id. (citing Worsley ¶¶ 5, 20–23).
Based on Yeung’s and Peng’s teachings, the Examiner found that the
ordinary artisan would have replaced Seed’s separator with a thin,
electrodeposited layer because these materials were known in the art to serve
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the same separating function. Final Act. 4–5. The Examiner further found
that one of ordinary skill in the art would have used silica for the
electrodeposited layer based on Peng’s teaching that silica is a well-known
material for electrophoretically deposited electrode separators. Id.
The Appellant argues the claims as a group, see generally Appeal Br.
12–21, contending that the Examiner reversibly erred in rejecting the claims
for the following reasons: (1) the references, alone or in combination, fail to
teach or suggest all claim limitations; (2) the ordinary artisan would not have
had a reasonable expectation of success in combining the references’
teachings; and (3) the Examiner failed to “provide reasons for combining the
references to produce the proposed combination,” id. at 12. The Appellant’s
arguments are not persuasive for the reasons explained by the Examiner in
the Answer. See Ans. 6–9.
As observed by the Examiner, the Appellant’s “arguments are
generally formed as being against the references individually, and [the
Appellant] often argues only that a particular reference does not include
verbatim the instant claim language.” Ans. 7. The Appellant has not clearly
identified any claim limitations that are not taught by Seed, as modified by
Worsley, Yeung, and Peng. See, e.g., Appeal Br. 12–21. Nor has the
Appellant explained with sufficient specificity why the Examiner’s reasons
for combining the references are erroneous or unreasonable. See, e.g., id. at
20–21 (“Appellant respectfully submits that the reasons for combining the
Seed reference and the Worsley reference stated in the Final Rejection are
not valid reasons. . . . The Worsley aerogel combined with (or replacing) the
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Seed flat sheet of carbon would not produce an electrode that would provide
Appellant’s capacitive desalination electrode conductor unit(s).”).
Appellant’s argument that the ordinary artisan would not have had a
reasonable expectation of success in combining the references likewise lacks
sufficient detail and evidentiary support. In the Appeal Brief, the Appellant
argues that Worsley’s
aerogel including shaped particles having a particle packing
density gradient and including particles of an impurity could
not be combined with the [p]rimary Seed reference flat sheet of
carbon containing a mesh structure or grid of wires attached to
or embedded in the carbon with a reasonable expectation of
success in producing Appellant’s electrodes defined by claims
12–16. The Worsley aerogel combined with (or replacing) the
Seed flat sheet of carbon would not produce an electrode that
would provide Appellant’s capacitive desalination electrode
conductor unit(s).
Appeal Br. 19. As explained by the Examiner, this argument is deficient
because the “[A]ppellant has not described any basis for concluding that
there would [have been] no expectation of success or any incompatibility
between the prior art disclosures that would preclude their combination.”
Ans. 8–9.
In the Reply Brief, the Appellant attempts to correct these noted
deficiencies by providing some additional detail as to why Worsley’s
electrodeposition method could not produce Seed’s “‘electrode 23’
containing ‘a mesh structure 29, or grid of wires, which is attached to (or
embedded in) the carbon material.’” Reply Br. 16 (emphasis omitted). We
decline to consider this argument because it was not raised in the Appeal
Brief or responsive to an argument raised in the Examiner’s Answer, and the
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Appellant has not shown good cause as to why the argument could not have
been made in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2) (2011).
Moreover, even if we considered the argument, we would find it
unpersuasive because there are no citations to supporting evidence.
In sum, for the reasons discussed above, and based on the Examiner’s
fact finding and reasoning in the Final Office Action and the Answer, the
Appellant has not convinced us of reversible error in the Examiner’s
conclusion of obviousness as to claims 12–16.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–16 103(a) Seed, Worsley,
Yeung, Peng
12–16
TIME PERIOD FOR RESPONSE
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