The Goverment of the United States of America, as represented by the Secretary of the Navy

Patent Trials and Appeals Board

Mar 18, 2022

2021001748 (P.T.A.B. Mar. 18, 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. 16/045,863 07/26/2018 Heather D. Willauer 106588-US2 1032 26384 7590 03/18/2022 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER CONTRERAS, CIEL P ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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): patent.docketing@nrl.navy.mil PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEATHER D. WILLAUER, DENNIS R. HARDY, FELICE DIMASCIO, and FEDERICK WILLIAMS Appeal 2021-001748 Application 16/045,863 Technology Center 1700 Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and N. WHITNEY WILSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 8-17. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed July 26, 2018 (“Spec.”); Final Office Action entered April 1, 2020 (“Final Act.”); Appeal Brief filed September 30, 2020 (“Appeal Br.”); and Examiner’s Answer entered October 26, 2020 (“Ans.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Government of the United States of America, as represented by the Secretary of the Navy, as the real party in interest. Appeal Br. 2. Appeal 2021-001748 Application 16/045,863 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to processing seawater or alkaline solutions for repeated recovery of CO2 to be used as feedstock to synthesize fuel. Spec. 2. Claim 8, the only independent claim on appeal, reproduced below, is illustrative of the claimed subject matter (Appeal Br. 8, Claims App.): 8. A cyclical method for producing a strong alkaline solution for atmospheric CO2 capture, subsequently followed by recovery of the CO2 along with simultaneous production of dihydrogen and regeneration of the alkaline solution to complete the cycle, comprising: feeding an alkaline solution containing bicarbonate and carbonate ions into a center compartment of an electrolytic cation exchange module (E-CEM), wherein the E-CEM comprises an anode, an anode compartment adjacent to the anode, a first cation membrane between the anode compartment and the center compartment, the center compartment, a cathode compartment, a second cation membrane between the center compartment and the cathode compartment, and a cathode adjacent to the cathode compartment; feeding water into the anode compartment through an anode water inlet and into the cathode compartment through a cathode water inlet; applying a source of electricity to the anode, wherein hydrogen ions flow from the anode compartment through the first cation membrane into the center compartment, and wherein CO2 is formed in the anode compartment, CO2 is formed in the center compartment, and H2 and hydroxide are formed in the cathode compartment; removing the CO2 formed in the center compartment and the H2 formed in the cathode compartment; Appeal 2021-001748 Application 16/045,863 3 collecting an effluent from the cathode compartment comprising the hydroxide formed in the cathode compartment; allowing the effluent from the cathode compartment to chemically absorb CO2 from the atmosphere to form a re-equilibrated bicarbonate and carbonate solution; and feeding the re-equilibrated solution back into the center compartment of the E-CEM. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Steinberg US 4,197,421 Apr. 8, 1980 Hartvigsen et al. (“Hartvigsen”) US 2007/0045125 A1 Mar. 1, 2007 Kirk et al. (“Kirk”) US 2010/0155258 A1 Jun. 24, 2010 Farsad et al. (“Farsad”) US 2010/0229725 A1 Sept. 16, 2010 REJECTIONS 1. Claims 8-12 and 15-17 are rejected under 35 U.S.C. § 103 as being unpatentable over Hartvigsen and Steinberg. Final Act. 3-6. 2. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Hartvigsen, Steinberg, and Farsad. Final Act. 6. Appeal 2021-001748 Application 16/045,863 4 3. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Hartvigsen, Steinberg, and Kirk. Final Act. 7. OPINION We confine our discussion to claim 8, which is representative of the separate arguments made by Appellant with respect to the rejections on appeal. 37 C.F.R. § 41.37(c)(1)(iv)(2013). Rejection 1 The Examiner’s Rejection In rejecting claim 8 as unpatentable over Hartvigsen and Steinberg, the Examiner found Hartvigsen discloses a method for producing a strong alkaline solution as recited in claim 8 including an electrolytic cation exchange module (E-CEM). Final Act. 3-4. The Examiner found Hartvigsen only contemplates the re-equilibration of a carbonate containing solution, not a carbonate and bicarbonate containing solution as recited in claim 8. Id. at 4. The Examiner found Steinberg discloses a cyclical electrolytic process where after contact with sodium hydroxide, carbonate and bicarbonate solutions are formed and used equivalently in return to a central cell compartment. Id. The Examiner determined it would have been obvious to have allowed the contacting reaction between sodium hydroxide and the carbon dioxide to further form bicarbonate in addition to carbonate, as a known equivalent for the process as taught by Steinberg. Id. The Examiner reasoned that this would have the added benefit of not requiring precise control of the reaction to produce only carbonate. Id. Appeal 2021-001748 Application 16/045,863 5 Appellant’s Arguments Appellant argues Hartvigsen uses a fixed device where components are replenished rather than continuously fed through the compartments in the device. Appeal Br. 3-4. Appellant argues Steinberg discloses feeding only carbonate to the center compartment, and bicarbonate only exists after the solution enters the electrolytic cell. Id. at 4. As such, Appellant argues Steinberg does not disclose an alkaline solution containing bicarbonate and carbonate ions. Id. Discussion We are not persuaded by Appellant’s arguments for the reasons expressed by the Examiner in the Answer. Ans. 3-6. We provide the following for emphasis. Initially, we agree with the Examiner that claim 8 does not recite that the method therein requires “continuously feeding” and as such, Appellant’s arguments that Hartvigsen discloses batch processes are not commensurate in scope with the claim. Ans. 3. In this regard, claim 8 generally recites steps including “feeding” an alkaline solution and water, as well as a re- equilibrated solution into the E-CEM, along with steps of “removing” carbon dioxide formed in the center compartment and “collecting an effluent from the cathode compartment.” Such general recitations do not expressly require solutions “continuously fed through” the device as argued by Appellant. Appeal Br. 3-4. Moreover, we agree with the Examiner that Hartvigsen’s disclosure of “replenishment” of materials in the electrochemical cell (¶ 46) does not limit Hartvigsen to batch-wise processes. Indeed, Hartvigsen discloses that Appeal 2021-001748 Application 16/045,863 6 “[v]arious systems for speeding [the replenishment] process are available and known to one of ordinary skill in the art.” Hartvigsen ¶ 46. Appellant does not sufficiently explain why such disclosures in Hartvigsen mean that Hartvigsen is necessarily limited to batch processes. To the extent Appellant’s argument may be dependent on Figure 4 of Hartvigsen, we observe that Hartvigsen discloses Figure 4 is “a schematic view” and as such, it does not limit the particular structure of any particular inlets associated with the electrochemical cell itself. Id. at ¶ 26. We also agree with the Examiner’s reasoning that Steinberg’s disclosure that “[a]bout 50% of the Na2CO3 exists in the form of NaHCO3 in the electrolytic cell” does not mean that NaHCO3 only exists inside the electrochemical cell. Ans. 5, quoting Steinberg, col. 4, ll. 34-39. The Examiner’s position that the equilibrium reaction involving sodium carbonate and sodium bicarbonate in Steinberg (col. 4, ll. 34-39) exists outside of the cell is supported by Steinberg itself, which discloses that carbon dioxide is recovered from the air and “[t]he resulting sodium carbonate/bicarbonate solution is sent to a 3 compartment electrolysis cell.” Steinberg, col. 5, ll. 55-64. We have considered Appellant’s remaining arguments that Steinberg uses a different electrolytic cell and not an E-CEM as recited in claim 8, as well as Appellant’s argument that the Examiner did not provide sufficient explanation as to how the combination of Hartvigsen and Steinberg would work, because Hartvigsen discloses a fixed electrochemical device and Steinberg discloses a three-compartment flowing electrolytic cell. Appeal Br. 4-7. However, we find these arguments unpersuasive in view of the above discussion. Appeal 2021-001748 Application 16/045,863 7 Accordingly, we affirm the Examiner’s rejection of claim 8, as well as claims 9-12 and 15-17 dependent therefrom. Rejections 2 and 3 Claims 13 and 14, the subject of Rejections 2 and 3 depend from claim 8. Appellant does not present separate arguments with respect to claims 13 and 14. See Appeal Br. 3, 7. Accordingly, we affirm Rejections 2 and 3 for similar reasons as discussed above for Rejection 1. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8-12, 15-17 103 Hartvigsen, Steinberg 8-12, 15-17 13 103 Hartvigsen, Steinberg, Farsad 13 14 103 Hartvigsen, Steinberg, Kirk 14 Overall Outcome 8-17 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