Matthew Suss et al.

Patent Trials and Appeals Board

Mar 16, 2021

2020002896 (P.T.A.B. Mar. 16, 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.
13/405,088 02/24/2012 Matthew E. Suss IL-12423 9633
24981 7590 03/16/2021
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
03/16/2021 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, THEODORE F. BAUMANN,
WILLIAM L. BOURCIER, CHRISTOPHER SPADACCINI,
MICHAEL STADERMANN, KLINT ROSE, and JUAN G. SANTIAGO
Appeal 2020-002896
Application 13/405,088
Technology Center 1700
Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–11, 14, 19–26, and 31–33. We
have jurisdiction. 35 U.S.C. § 6(b).
We affirm.

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 Lawrence Livermore
National Security, LLC and the United States of America Department of
Energy (DOE). Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to capacitive desalination apparatus for
removing salt from a target salt solution, and a method of capacitive
desalination. See Appeal Br. 27, 29–34 (Independent claims 1, 19, 31–33).
Claim 1 is illustrative of the claimed subject matter, and is reproduced
below with key limitations on appeal italicized:
1. A capacitive desalination apparatus for removing salt from
a target salt solution, comprising:
a first electrode conductor wherein said first electrode
conductor is a first single unit of porous material,
a second electrode conductor wherein said second
electrode conductor is a second single unit of porous material,
transport pores in said first single unit of porous material
of said first electrode conductor and in said second single unit of
porous material of said second electrode conductor wherein said
transport pores have a pore size greater than one micrometer and
wherein said transport pores are adapted to enable the target salt
solution to flow through said first single unit of porous material
of said first electrode conductor and said second single unit of
porous material of said second electrode conductor,
adsorption pores in said first single unit of porous material
of said first electrode conductor and in said second single unit of
porous material of said second electrode conductor wherein said
absorption pores have a pore size less than one hundred
nanometers wherein said adsorption pores in said first single unit
of porous material of said first electrode conductor and in said
second single unit of porous material of said second electrode
conductor are adapted to provide high surface area for removing
the salt,
wherein said transport pores and said adsorption pores in
said first single unit of porous material of said first electrode
conductor are interconnected and
wherein said transport pores and said adsorption pores in
said second single unit of porous material of said second
electrode conductor are interconnected,
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a non-conducting permeable spacer between said first
electrode conductor and said second electrode conductor,
an electric circuit that produces an electric potential
difference between said first electrode conductor, and said
second electrode conductor, thereby removing at least a portion
of the salt from the target salt solution, and
a pump that pumps the target salt solution through said
first single unit of porous material of said first electrode
conductor, through said non-conducting permeable spacer, and
through said second single unit of porous material of said second
electrode conductor thereby removing at least a portion of the
salt from the target salt solution.
REJECTIONS
The Examiner rejects the following claims under 35 U.S.C. § 103(a):
I. Claims 1, 2, 4–6, 9–11, 19–24, and 31–33 over Otowa2 in view
of Mayes3;
II. Claims 7, 8, 10, 11, 25, and 26 over Otowa, Mayes, and
Worsley4; and
III. Claim 14 over Otowa, Mayes, and Shiue.5
OPINION
Rejection I
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 9–24. Therefore, consistent with our rule, we select claim 1 as
representative. 37 C.F.R. § 41.37(c)(1)(iv). Our discussion of this rejection

2 Otowa, US 5,538,611, issued July 23, 1996.
3 Mayes et al., US 2012/0234695 A1, published Sept. 20, 2012.
4 Worsley et al., US 2010/0190639 A1, published July 29, 2010.
5 Shiue et al., US 2003/0098266 A1, published May 29, 2003.
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focuses on claim 1. Claims 2, 4–6, 9–11, 19–24, and 31–33 stand or fall
with claim 1.
The Examiner finds that Otowa teaches all the elements of claim 1,
except for the claimed interconnected pore sizes. Final Act. 2–3. To
address this difference, the Examiner turns to Mayes, which the Examiner
finds discloses such pore sizes. Id. at 3. Based on the combined disclosures
of Otowa and Mayes, the Examiner determines that the skilled artisan would
have been motivated to modify Otowa’s apparatus “to include the
hierarchical porosity taught by Mayes because this improves adsorption
processing kinetics and mass transport, maintains effective removal of salts,
and is cost-effective” and able to be reliably manufactured. Id. at 4.
Appellant first argues that Otowa fails to teach a first and second
“electrode conductor is a . . . single unit of porous material.” Appeal Br. 12–
14, 18–24. Specifically, Appellant asserts that Otowa’s flow-through
electric, double-layer capacitor depicted in Figure 1 contains “multiple units
of many different materials.” Id. at 13, 19.
We are unpersuaded by this argument because it reflects a
misunderstanding of the Examiner’s mapping of the claimed first and second
electrode conductors to Otowa’s disclosure. The Examiner found that
Otowa discloses the claimed first and second electrode conductors in the
form of first and second “porous carbon electrode conductor (2) which is
made entirely of porous material.” Final Act. 2. Appellant has not
persuasively argued or demonstrated that Otowa’s active carbon layer (2)––
by itself––is not a “single unit of porous material.” Indeed, Otowa’s Figure
1 upon which Appellant’s argument so heavily relies depicts each of these
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layers (2) as single layers. Otowa, Fig. 1; Appeal Br. 9–10, 13–14, 18–19,
21, 23.
Notably, Appellant states that electrodes 502 and 504 depicted in
Figure 5A of the Drawings are representative of the first and second
electrode conductors recited in claim 1. Appeal Br. 4. Appellant then
attempts to distinguish Otowa’s Figure 1 system from that depicted in Figure
5A of the Drawings. Appeal Br. 13, 18–19, 21–22. To the extent Appellant
is arguing that Otowa’s individual active carbon layer (2) cannot function as
an “electrode conductor” as claimed, we are not persuaded.6 The
Specification discloses that porous electrodes 502 and 504 are made from
aerogels of activated carbon. Spec. 15–16. Appellant has not sufficiently
demonstrated that Otowa’s activated carbon layer 2 is incapable of
functioning as the claimed electrode conductor which also can be made of
activated carbon. In re Best, 562 F.2d 1252, 1254 (CCPA 1977) (“Where
. . . the claimed and prior art products are identical or substantially identical
. . . the PTO can require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of his claimed
product.”). And to the extent Appellant is arguing that Otowa’s double layer
capacitor depicted in Figure 1 has additional elements than the individual
activated carbon layers (2), (2), claim 1 on appeal also allows for such
additional elements because it is open-ended. Claim 1 (“A capacitive
desalination apparatus . . ., comprising” (emphasis added)); Ans. 13

6 Appellant seems to make this argument in the context of its assertion
regarding the claimed transport pores and adsorption pores. Appeal Br. 16.
At best, this is a bare assertion devoid of explanation or evidentiary support.
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(explaining “[t]he claims are not limited to an apparatus composed of solely
a porous material”).
Appellant also asserts that Otowa and Mayes fail to disclose the
claimed transport and adsorption pores. Appeal Br. 15–17. This assertion
lacks sufficient specificity to have any persuasive merit. For example,
Appellant repeatedly quotes the limitations that are purportedly missing
from the cited references, without sufficient explanation why the disclosure
relied on by the Examiner is deficient. Id. at 15, 16.
Appellant also asserts that the skilled artisan would not have had a
reasonable expectation of successfully combining the teachings of Otowa
and Mayes. Appeal Br. 20–21. This contention lacks persuasive merit
because it amounts to a bare assertion without explanation or evidence. For
example, Appellant does not explain why or provide evidence to support the
proposition that Otowa’s active carbon layers (2), (2) could not be connected
in an electrical circuit. Indeed, Appellant does not contest the Examiner’s
finding (Ans. 15) that Otowa’s active carbon layers (2), (2) are connected to
electrical circuit (3). Otowa, Fig. 1, 2:39-43; Reply Br., generally.
We also reject Appellant’s contention that the Examiner’s reasons for
combining the disclosures of Otowa and Mayes “are not valid reasons.”
Appeal Br. 22. Such bare assertions do not amount to an “argument”
consistent with our rules. 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant.” (emphasis added)).
Because Appellant has failed to identify reversible error in the
Examiner’s rejection of claim 1, we sustain it, along with the rejection of
claims 2, 4–6, 9–11, 19–24, and 31–33 not separately argued.
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Rejections II and III
Appellant relies on the same deficient arguments for these rejections
as those presented for Rejection I discussed supra. Appeal Br. 24–26. We
reject those arguments here for the same reasons already provided, and
sustain Rejections II and III.
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6, 9–
11, 19–24,
31–33
103(a) Otowa, Mayes 1, 2, 4–6,
9–11, 19–
24, 31–33

7, 8, 10, 11,
25, 26
103(a) Otowa, Mayes,
Worsley
7, 8, 10,
11, 25, 26

14 103(a) Otowa, Mayes, Shiue 14
Overall
Outcome
1, 2, 4–11,
14, 19–26,
31–33

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED