Matthew Suss et al.Download PDFPatent Trials and Appeals BoardMar 16, 20212020002896 (P.T.A.B. Mar. 16, 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. 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. Appeal 2020-002896 Application 13/405,088 2 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, Appeal 2020-002896 Application 13/405,088 3 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. Appeal 2020-002896 Application 13/405,088 4 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 Appeal 2020-002896 Application 13/405,088 5 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. Appeal 2020-002896 Application 13/405,088 6 (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. Appeal 2020-002896 Application 13/405,088 7 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 Copy with citationCopy as parenthetical citation