Robert Bosch GmbH et al.

Patent Trials and Appeals Board

Mar 9, 2022

2021000852 (P.T.A.B. Mar. 9, 2022)

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. 15/104,161 06/13/2016 Paul Albertus 1576-1628 5404 10800 7590 03/09/2022 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER ANTHONY, JULIAN ART UNIT PAPER NUMBER 1722 MAIL DATE DELIVERY MODE 03/09/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL ALBERTUS, EDWARD KNUDSEN, MICHAEL C. TUCKER, TAEK KYU CHO, and ADAM Z. WEBER Appeal 2021-000852 Application 15/104,161 Technology Center 1700 Before TERRY J. OWENS, KAREN M. HASTINGS, and DONNA M. PRAISS, Administrative Patent Judges. HASTINGS, 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 1-10 and 11-19. See Final Act. 2-7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Robert Bosch GmbH. Appeal Br. 2. Appeal 2021-000852 Application 15/104,161 2 CLAIMED SUBJECT MATTER The claims are directed to flow battery systems. Claims 1 and 11, reproduced below, are illustrative of the claimed subject matter: 1. A flow battery system, comprising: a hydrogen reactant; a first tank including a first portion of the hydrogen reactant; a second tank including a bromine electrolyte; at least one cell including a hydrogen reactant side operably connected to the first tank and a bromine electrolyte side operably connected to the second tank; and a direct connection line directly connecting the first tank and the second tank and configured such that the first portion of the hydrogen reactant moves from the first tank into the direct connection line and a second portion of the hydrogen reactant passes from the direct connection line into the second tank when the first tank has a pressure higher than the second tank. 11. A flow battery system, comprising: a first tank including an hydrogen reactant; a second tank including a bromine electrolyte; and at least one cell including an hydrogen reactant side operably connected to the first tank, a bromine electrolyte side operably connected to the second tank, and a separator between the hydrogen reactant side and the bromine electrolyte side configured to enable passage of the hydrogen reactant from the hydrogen reactant side to the bromine electrolyte side within the at least one cell. Appeal Br. Claims App. 33, 35. Appeal 2021-000852 Application 15/104,161 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Brereton US 2008/0220318 A1 Sept. 11, 2008 Horne US 2010/0003545 A1 Jan. 7, 2010 Hennessy US 9,853,306 B2 Dec. 26, 2017 Hamel WO 2013/086100 A1 June 13, 2013 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1-10 112(b) Indefiniteness2 1, 2, 7-9, 11, 12, 17-19 103 Hamel, Brereton 3, 13 103 Hamel, Brereton, Hennessy 4-6, 14-16 103 Hamel, Brereton, Horne OPINION The § 112 rejection for indefiniteness Claims are definite if they set out and circumscribe a particular area with a reasonable degree of precision and particularity. It is here where the definiteness of the language employed must be analyzed-not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art. 2 The Examiner withdrew a rejection of claims 1-10 based on a lack of enablement and made this new ground of rejection based on indefiniteness in the Answer (Ans. 7-9). Appeal 2021-000852 Application 15/104,161 4 In re Moore, 439 F.2d 1232, 1046-47 (CCPA 1971). See also, Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification”). After review of the respective positions provided by Appellant and the Examiner, we agree with Appellant that one of ordinary skill in the art would have understood what is being claimed. A preponderance of the evidence supports Appellant’s assertions that the Examiner’s rejection should be reversed. The Examiner’s rejection is based on the premise that it is unclear how the first and second portions of the reactant (as well as the third portion recited in dependent claim 5) are “mutually exclusive” (Ans. 8). As Appellant points out, there is no requirement that the recited portions be mutually exclusive (Reply Br. 3). We are persuaded by Appellant’s arguments that one of ordinary skill would clearly understand the relationship between the recited portions in the flow battery system, especially in light of Appellant’s Specification, including its figures (Reply Br. 3-9). As Appellant states, the Specification de facto defines “a direct connection line” as one which “equalizes gas pressure between the first tank and the second tank” (Spec. ¶ 14; Reply Br. 10; Appeal Br. 14, 15). In light of the proper claim construction, and the Specification description of how the flow battery system functions as detailed by Appellant (e.g., Reply Br. 6-8; Spec. ¶¶ 14, 28, 31, 50, Fig. 2), we agree with Appellant that one of Appeal 2021-000852 Application 15/104,161 5 ordinary skill in the art would have understood the claim language in light of the Specification, as discussed throughout the prosecution history. Thus, we reverse the Examiner’s § 112 rejection of claims 1-10 based on indefiniteness. The § 103 rejections of claims 1-9 The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). After review of the respective positions provided by Appellant and the Examiner, we conclude that the preponderance of the evidence supports Appellant’s position that the Examiner has not met the burden in this case for independent claim 1 (along with its dependent claims 2-10) for substantially the reasons set forth by Appellant in the Briefs. Accordingly, we reverse the Examiner’s § 103 rejections of claims 1-10 on appeal. In rejecting independent claim 1 under 35 U.S.C. § 103, the Examiner asserts that Brereton’s line 72 teaches a direct connection line as recited in claim 1 and that it would have been obvious to modify Hamel to provide Brereton’s alleged direct connection line to Hamel’s battery flow system (Final Act. 4). Appellant argues that Brereton’s line 72 does not function as recited in the claim since Brereton’s return line 32 acts as a siphon which creates a low pressure along the return line 32 and vent space 64 (Appeal Br. 12-13 Appeal 2021-000852 Application 15/104,161 6 (further stating Brereton’s first tank vent space 66 is taught to be at higher pressure than vent space 64 in second tank 46)). Appellant further argues that Brereton’s return line 74 (not relied upon by the Examiner) also does not teach or suggest a direct connection line as recited and defined within paragraph 14 of the Specification to require a two-way flow of hydrogen gas in order to equalize pressure within the two tanks (Appeal Br. 14-15; Reply Br. 9-10). Appellant further asserts that the Examiner has not established an adequate reason to modify Hamel with Brereton’s oxygen scavenging system designed to keep oxygen levels low or depleted, as there is no disclosure in Hamel of any oxygen in its reactants (Appeal Br. 15-16). Appellant states that the Examiner’s reason amounts to one of ordinary skill “would make the modification to have the modification” (Appeal Br. 15- 16). As previously discussed, the Specification defines “a direct connection line” as one which “equalizes gas pressure between the first tank and the second tank” (Spec. ¶ 14; Reply Br. 10; Appeal Br. 14, 15; see also Spec. ¶¶ 28, 50). This de facto requires that the direct connection line is configured for two-way flow as depicted by the arrows in Appellant’s Fig. 2 and as required in order to equalize gas pressure between the two tanks.3 3 In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). Cf. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (internal citation omitted)). Appeal 2021-000852 Application 15/104,161 7 The Examiner also does not sufficiently address Appellant’s position that there is no apparent reason to modify Hamel with Brereton (Ans. 9 (the Examiner merely concludes “that factual inquiries for establishing a background for determining obviousness under 35 USC 103 are met”)). In light of these circumstances, we conclude that the Examiner’s rejection of claim 1 is based on an improper hindsight reconstruction of Hamel with Brereton for the reasons discussed by Appellant in the Briefs. The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). The Examiner does not rely upon any other reference or rationale to cure these deficiencies. Accordingly, we reverse the § 103 rejections of claims 1-9. The § 103 rejection of claims 11, 12, and 17-19 The Examiner points to the system of Hamel to render obvious the subject matter of claim 11 (Final Act. 5 (relying on separator shown therein, e.g., Hamel ¶ 34)).4 Appellant’s argument is that Hamel’s separator is not “configured to enable passage of the hydrogen reactant” as recited in claim 11. Appellant urges that the term “hydrogen reactant” is limited to hydrogen gas, and since the Examiner relies upon hydrogen protons passing through 4 As Appellant points out, the Examiner does not discuss or appear to rely upon Brereton for the subject matter recited in claim 11 (Appeal Br. 19; generally Final Act., Ans.). Appeal 2021-000852 Application 15/104,161 8 Hamel’s separator as the hydrogen reactant, the rejection is in error as such protons are not unreacted hydrogen gas (Appeal Br. 18-21; Reply Br. 11). “[T]he PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. Appellant has not directed us to any special definition of hydrogen reactant so as to limit this term to hydrogen gas. However, even assuming Appellant’s claim construction of this term was adopted, Appellant admits the separator of Hamel is akin to that of the admitted prior art discussed in Appellant’s Specification at paragraph 7 (Appeal Br. 19). Appellant’s Specification admits that this separator allows hydrogen gas to crossover to the Br2 side of the battery (Spec. ¶¶ 10, 11).5 Indeed, Hamel also teaches that hydrogen crossover will occur (Hamel ¶ 60). Appellant’s arguments are not persuasive of reversible error as they fail to consider the breadth of the claim language. Even though Appellant discusses that hydrogen gas crossover is 5 An applicant cannot defeat an obviousness rejection by asserting that the cited references fail to teach or suggest elements which the applicant has acknowledged are taught by the prior art. Constant v. Advanced Micro- Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (a statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). Appeal 2021-000852 Application 15/104,161 9 undesirable, claim 11 does not specify any minimum degree of passage of the hydrogen reactant that must be permitted by the separator such that the separator recited in claim 11 encompasses the hydrogen reactant gas crossover discussed by Appellant and Hamel. See also In re Boe, 355 F.2d 961, 965 (CCPA 1966) (court affirmed rejections based on art which rendered the claimed invention obvious to those of ordinary skill in the art despite the fact that the art teachings relied upon were phrased in terms of a non-preferred embodiment or as being unsatisfactory for the intended purpose). Accordingly, we sustain the Examiner’s decision to reject claim 11, as well as dependent claims 12, 17, and 18 which were not separately argued, under 35 U.S.C. § 103 as unpatentable. See also, e.g., In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). The § 103 rejection of dependent claim 19 Appellant argues the rejection of claim 19 (which depends from claim 12 which depends from claim 11) over Hamel and Brereton (Appeal Br. 20). Claim 19 requires “a connecting line operably connecting” the two tanks recited in claim 11 such that the pressure of hydrogen is substantially equal in each tank (Appeal Br. 22-23). The Examiner relies upon Hamel’s paragraph 50 which explicitly teaches substantially similar pressures may be maintained in each of the electrolyte and the hydrogen chambers using pressure transmitting devices for the subject matter of claim 19 (Final Act. 5; Ans. 10; Hamel ¶¶ 50-52). Appeal 2021-000852 Application 15/104,161 10 Appellant admits that claim 19 does not require a “direct connection line” (Appeal Br. 23); however, Appellant’s position is that the Examiner has not established that there is any hydrogen gas on the electrolyte side of Hamel’s device (Appeal Br. 23; also Reply Br. 12 (the Examiner has failed to establish that there is any hydrogen gas (H2) in Hamel’s aqueous HBr/Br2 loop)). However as discussed previously, there is ample evidence that hydrogen crossover will occur, even if it is undesirable (e.g., Spec. ¶¶ 10, 11; Hamel ¶ 60). Appellant has thus not shown reversible error in the Examiner’s determination that claim 19 is rendered obvious and encompasses Hamel’s system of maintaining substantially similar pressures in each loop. Thus, we sustain the rejection of claim 19. The § 103 rejection of claim 13 Claim 13 depends from claim 12 which depends from claim 11, and further requires that there is a valve and a controller configured to operate a valve such that the electrode in the bromine electrolyte side of the battery is “always immersed in liquid phase bromine electrolyte” (Appeal Br. Claims App. 35-36). The Examiner relies upon modifying Hamel with Hennessy for this claim, and further states that the electrodes are located in the reservoirs (Final Act. 5-6; Ans. 10). Appellant submits that Hennessy does not teach or suggest maintaining liquid electrolyte in the cell such that the electrode is always immersed therein (Appeal Br. 26-27). Appeal 2021-000852 Application 15/104,161 11 Appellant correctly points out that the Examiner erred in stating that Hennessy’s reservoirs contain the electrodes (Reply Br. 12). Thus, a preponderance of the evidence supports Appellant’s position that the Examiner has not established that the subject matter of claim 13 is rendered obvious by modifying Hamel with Hennessy, such that we reverse this rejection. The § 103 rejection of claims 14-16 Claim 14 depends from claim 12 which depends from claim 11, and requires that the system is configured such that the liquid phase bromine fills at least 90% of the second tank in both the charged and discharged state of the battery system (Appeal Br. Claims App. 36). The Examiner relies upon Horne’s separator 502 being on top of the liquid in Figs. 18A-F to suggest that the fill level of the reactant tank is a results effective variable (Final Act. 6-7; Ans. 10). Appellant argues that the Examiner has not identified anything which teaches or suggests that the liquid volume in the second tank is at the claimed 90% level, or that the fill level is a results effective variable (Appeal Br. 28-29; Reply Br. 13). Indeed, Appellant correctly points out that Horne’s separator in Fig. 17 is used to separate two liquids, in order to prevent or reduce mixing of charged and discharged electrolyte (Reply Br. 13; Horne ¶ 117). The Examiner has not sufficiently addressed Appellant’s arguments and has not explained why an artisan would have recognized that the fill level is a results effective variable. Thus, we reverse the Examiner’s rejection of claims 14-16. Appeal 2021-000852 Application 15/104,161 12 CONCLUSION The Examiner’s § 112 rejection is reversed The Examiner’s § 103 rejections of claims 1-9 are reversed. The Examiner’s § 103 rejection of claims 11, 12, and 17-19 is affirmed. The Examiner’s § 103 rejection of claims 3-6, 13-16 is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-10 112 Indefiniteness 1-10 1, 2, 7-9, 11, 12, 17-19 103 Hamel, Brereton 11, 12, 17-19 1, 2, 7-9 3, 13 103 Hamel, Brereton, Hennessy 3, 13 4-6, 14-16 103 Hamel, Brereton, Horne 4-6, 14-16 Overall Outcome 11, 12, 17-19 1-10, 13-16 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED IN PART