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

Patent Trials and Appeals Board

Dec 22, 2021

2021000842 (P.T.A.B. Dec. 22, 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.
15/089,728 04/04/2016 Felice DiMascio 100160-US4 4607
26384 7590 12/22/2021
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
JAIN, SALIL
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
12/22/2021 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):
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 FELICE DIMASCIO, DENNIS R. HARDY,
M. KATHLEEN LEWIS, HEATHER D. WILLAUER, and
FREDERICK WILLIAMS
Appeal 2021-000842
Application 15/089,728
Technology Center 1700
Before TERRY J. OWENS, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as the Government of the
United States of America, as represented by the Secretary of the
Navy (Appeal Br. 2).
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Application 15/089,728

2
CLAIMED SUBJECT MATTER
The claims are directed to an apparatus for extracting carbon dioxide
and hydrogen from seawater. Claim 1, reproduced below, illustrates the
claimed subject matter:
1. An apparatus for treating seawater, comprising:
an anode compartment including an anode;
a cathode compartment including a cathode;
a central compartment, wherein the central compartment
contains either no material or only inert media, and wherein the
central compartment is between the anode and cathode
compartments;
cation-permeable membranes separating the cathode and
anode compartments from the central compartment;
a seawater inlet in the central compartment;
a continuous flow of seawater into the seawater inlet and
through the central compartment, wherein carbon dioxide is
generated in the central compartment when the flow of seawater
is present;
an anode water inlet in the anode compartment, wherein
hydrogen ions are generated in the anode compartment when
water is present;
a cathode water inlet in the cathode compartment,
wherein dihydrogen gas is generated in the cathode
compartment when water is present;
a power supply for applying current to the cathode and
anode to create the driving force for an ion exchange
substitution reaction where sodium ions are exchanged for
hydrogen ions in the central compartment using an electrically
driven membrane process;
a dihydrogen gas outlet in the cathode compartment;
a dihydrogen gas exit stream exiting the dihydrogen gas
outlet; and
an applied current from the power supply controlling a
molar ratio of dihydrogen gas in the dihydrogen gas exit stream
to carbon dioxide simultaneously generated in the central
compartment.
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Application 15/089,728

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kaczur US 5,264,089 Nov. 23, 1993
Nakajima US 2002/0134687 A1 Sept. 26, 2002
Hartvigsen US 2007/0045125 A1 Mar. 1, 2007
Field US 2007/0187262 A1 Aug. 16, 2007
Bader US 7,392,848 B1 July 1, 2008
REJECTIONS
The claims stand rejected as follows: 1) claims 1–5, 8, 10–14, and 17
under 35 U.S.C. § 102(b) over Kaczur; 2) claims 1–5, 7–14, and 16–18
under 35 U.S.C. § 103(a) over Hartvigsen in view of Kaczur, Bader, and
Nakajima; and 3) claims 6 and 15 under 35 U.S.C. § 103(a) over Hartvigsen
in view of Kaczur, Bader, Nakajima, and Field.
OPINION
Rejection under 35 U.S.C. § 102(b)
The Appellant argues the claims as a group (Reply Br. 2). We
therefore limit our discussion to one claim, i.e., claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2013).
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255–56 (Fed. Cir. 1989).
Kaczur discloses an apparatus comprising an anode compartment (10)
(col. 3, l. 3); a cathode compartment (30) (col. 3, ll. 3–4); a central ion
exchange compartment (20), containing a spacer material (22), between the
anode compartment and the cathode compartment (col. 3, ll. 4–6, 65–68;
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Application 15/089,728

4
Fig. 2); cation permeable ion-exchange membranes (16, 24) separating,
respectively, the anode and cathode compartments from the central
compartment (col. 3, ll. 56–59; Fig. 2); a continuous flow inlet (55) to the
central compartment (col. 4, ll. 26; col. 5, ll. 17, 22–23; Fig. 3); a water inlet
in each of the anode and cathode compartments (Fig. 3), a power supply for
applying current to the cathode and anode to create the driving force for an
ion exchange substitution reaction where sodium ions are exchanged for
hydrogen ions in the central compartment using an electrically driven
membrane process (col. 3, ll. 8–12; col. 8, ll. 37–42); and a gas outlet in the
cathode compartment (Fig. 2). The continuous flow inlet to the central
compartment appears to be capable of flowing seawater instead of deionized
water to the central compartment, and the central compartment appears to be
capable of carbon dioxide being generated therein when seawater is present.
The anode compartment appears to be capable of hydrogen ions being
generated therein when water is present, and the cathode compartment
appears to be capable, when water is present, of dihydrogen gas being
generated therein and exiting the gas outlet. 2 The exemplified power supply
current densities include 120 and 150 mA/cm2 (col. 14, ll. 18–19; col. 15,
ll. 9–10) which are within the Appellant’s range of 5 to 200 mA/cm2
(Spec. ¶ 37), thereby indicating that the power supply is capable of
performing the functions of the Appellant’s power supply, including
controlling a molar ratio of dihydrogen gas in the cathode compartment gas
outlet to carbon dioxide simultaneously generated in the central
compartment.

2 The Appellant’s recited seawater, carbon dioxide, hydrogen ions, sodium
ions, and dihydrogen gas are not components of the claimed apparatus.
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5
The Appellant argues:
Kaczur’s process cannot anticipate the claims of the present
invention because it cannot treat seawater. Kaczur does not
disclose a seawater inlet in the central compartment or a
continuous flow of seawater, and in fact teaches away from
these because seawater is not substantially free of anionic and
cationic impurities.

The Appellant claims an apparatus, not a process for treating
seawater. See Hewlett-Packard Co. v. Bausch & Lomb Inc. 909 F.2d 1464,
1468 (Fed. Cir. 1990) (“apparatus claims cover what a device is, not what a
device does”). As set forth above, Kaczur’s apparatus has the recited
components of the Appellant’s apparatus and appears to be capable of
treating seawater when seawater instead of Kaczur’s alkali metal chlorate
solution is fed to the central compartment (col. 5, ll. 15–23). Hence, we are
not persuaded of reversible error in the rejection under 35 U.S.C. § 102(b).
Rejections under 35 U.S.C. § 103(a)
We need address only the independent claims (1 and 10).3
Hartvigsen discloses a batch process for producing synthesis gas (a
mixture of CO and H2) (¶ 30). The process is carried out using a two-
compartment electrochemical cell (12) comprising an anode chamber (14)
separated from a cathode chamber (16) by a sodium-conducting
membrane (18) (¶ 30; Fig. 1). In the anode chamber, water is decomposed to
hydrogen and oxygen, and sodium carbonate is decomposed to sodium ions,
carbon dioxide, and water (¶¶ 31, 32, 34; Fig 4). In the cathode chamber,
water is reduced to form hydrogen gas and generate hydroxyl ions that react

3 The Examiner does not rely upon Field for any disclosure that remedies the
deficiency in the references applied to the independent claims (Final 10–11).
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with sodium ions migrating through the membrane to form sodium
hydroxide (¶¶ 34, 36; Fig 4). The carbon dioxide from the anode chamber is
combined with the hydrogen from the cathode chamber to form synthesis
gas (¶ 40; Fig. 5).
Kaczur discloses a continuous process for producing chlorine dioxide,
comprising, as its first steps, feeding an aqueous solution of alkali metal
chlorate to an electrolytic cell (4)’s ion exchange compartment (20) between
an anode compartment (10) and a cathode compartment (30), electrolyzing
an anolyte in the anode compartment to generate hydrogen ions, passing the
hydrogen ions through a cation exchange membrane (16) into the ion
exchange compartment to displace alkali metal ions and produce an aqueous
solution of chloric acid and alkali metal chlorate, passing alkali metal ions
from the ion exchange compartment through a cation exchange
membrane (24) into the cathode compartment, and removing the aqueous
solution of chloric acid and alkali metal chlorate from the ion exchange
compartment, thereby producing a solution of chloric acid-alkali metal
chlorate that is substantially free of anionic and cationic impurities (col. 2,
l. 67; col. 3, ll. 1–20; Figs. 1, 3).4

4 Regarding Bader and Nakajima, the Examiner states (Final 8):
Bader is cited to show that acidifying seawater results in
production of carbon dioxide (see column 14, lines 31-33),
similar to production of carbon dioxide from a sodium
carbonate solution as taught by Hartvigsen.
Nakajima is cited to show that it was common in the
electrochemical art to use seawater as the starting material for
electrochemical processes, wherein seawater comes in contact
with cation exchange membranes, cathodes, and anodes (see
Fig. 1 and paragraph 0016).
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The Examiner finds (Final 4–5):
Although the processes performed by Hartvigsen and Kaczur
are different, the structures of the electrochemical cells used by
Hartvigsen and Kaczur are very similar, as can be seen from the
fact that Kaczur's three-compartment cell of Fig. 1 is also
divided into three compartments by two cation exchange
membranes exactly as Hartvigsen’s three-compartment cell of
Fig. 4 is also divided into three compartments by two cation
exchange membranes. One of ordinary skill in the
electrochemical art wanting to modify the electrochemical cell
of Hartvigsen so as to make it capable of performing a
continuous process would have looked to the art to find a
reference like Kaczur, wherein continuous processes are
performed in similar apparatus, and incorporate after suitable
adaptation those features of the system of Kaczur which are
suitable for converting Hartvigsen’s batch process into a
continuous process, for example, inlets for various
compartments, pumps, liquid-gas separators, recycle streams,
etc.

The Examiner concludes (Final 5):
Therefore, it would have been obvious to a person having
ordinary skill in the art at the time of the effective filing date of
the application for the claimed invention to modify the
electrochemical cell taught by Hartvigsen by adding an inlet in
the central compartment; an anode water inlet in the anode
compartment, and a cathode water inlet in the cathode
compartment, pumps, a dihydrogen gas outlet, and other
suitable features required for converting the batch process of
Hartvigsen into a continuous process, as taught by Kaczur. The
person with ordinary skill in the art would have been further
motivated to make this modification, because one of ordinary
skill in the art would have recognized the advantages of a
continuous process over a batch process, particularly better
process control and savings in labor cost. In any case, the courts
have held that claimed continuous operation would have been
obvious in light of the batch process of the prior art. In re
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Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963). See MPEP
2144.04 (V) (E).

Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner does not establish that the similarities pointed out by
the Examiner between Kaczur’s apparatus for making chlorine dioxide from
alkali metal chlorate and Hartvigsen’s apparatus for obtaining carbon
dioxide and hydrogen for producing synthesis gas would have provided one
of ordinary skill in the art with an apparent reason to convert Hartvigsen’s
apparatus to a continuous process by incorporating suitable “inlets for
various compartments, pumps, liquid-gas separators, recycle streams, etc.”
adapted from Kaczur’s apparatus to provide better process control and
reduce labor cost (Final 5). Thus, the record indicates that the Examiner’s
combination of the references is based upon impermissible hindsight in view
of the Appellant’s disclosure. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). The Examiner’s finding
that “the courts have held that claimed continuous operation would have
been obvious in light of the batch process of the prior art” (Final 5) is based
upon a per se rule of obviousness. As stated by the Federal Circuit in In re
Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995), “reliance on per se rules of
obviousness is legally incorrect and must cease.”
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Application 15/089,728

9
For the above reasons, we reverse the rejections under
35 U.S.C. § 103(a).
CONCLUSION
The rejection under 35 U.S.C. § 102(b) is affirmed. The rejections
under 35 U.S.C. § 103(a) are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8, 10–
14, 17
102(b) Kaczur 1–5, 8, 10–
14, 17

1–5, 7–14,
16–18
103(a) Hartvigsen,
Kaczur, Bader,
Nakajima
1–5, 7–14,
16–18
6, 15 103(a) Hartvigsen,
Kaczur, Bader,
Nakajima
6, 15
Overall
Outcome
1–5, 8, 10–
14, 17
6, 7, 9, 15,
16, 18

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-IN-PART