Lawrence Livermore National Security, LLC et al.Download PDFPatent Trials and Appeals BoardMay 10, 20212020002849 (P.T.A.B. May. 10, 2021) Copy Citation 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 2 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 Appeal 2020-002849 Application 14/223,192 3 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 4 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 Appeal 2020-002849 Application 14/223,192 5 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 Appeal 2020-002849 Application 14/223,192 6 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 Appeal 2020-002849 Application 14/223,192 7 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 Copy with citationCopy as parenthetical citation