THYSSENKRUPP UHDE CHLORINE ENGINEERS (JAPAN) LTD. et al.

Patent Trials and Appeals Board

Feb 23, 2022

2021001526 (P.T.A.B. Feb. 23, 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. 15/110,358 07/07/2016 Terumi HASHIMOTO 2114-0210PUS1 2603 2292 7590 02/23/2022 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER MENDEZ, ZULMARIAM ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 02/23/2022 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TERUMI HASHIMOTO, KOJI KAWANISHI, FUMIO SADAHIRO, SHOTA SHINOHARA, and SACHIO KANEKO ____________ Appeal 2021-001526 Application 15/110,358 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, JENNIFER R. GUPTA, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1-3.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies THYSSENKRUPP UHDE CHLORINE ENGINEERS LTD. and TOSOH CORPORATION as the real parties in interest. Appeal Brief filed May 28, 2020 (“Appeal Br.”), 1. 2 Final Office Action entered December 27, 2019 (“Final Act.”), 1. Appeal 2021-001526 Application 15/110,358 2 CLAIMED SUBJECT MATTER The Appellant claims an ion exchange membrane electrolyzer. Appeal Br. 3. Claims 1 and 3 illustrate the subject matter on appeal, and read as follows: 1. An ion exchange membrane electrolyzer comprising an anode chamber and a cathode chamber separated by an ion exchange membrane, wherein the anode for the ion exchange membrane electrolyzer comprises at least one perforated flat metal plate, and that the thickness of the perforated flat metal plate ranges from 0.1 to 0.5 mm and the ratio of the short way SW to the long way LW (SW/LW) ranges from 0.45 to 0.55, and wherein the ion exchange membrane and the cathode are adhered together in a manner. 3. An ion exchange membrane electrolyzer comprising an anode chamber and a cathode chamber separated by an ion exchange membrane, wherein the anode for the ion exchange membrane electrolyzer comprises a woven mesh made of a metal wire, and that the wire diameter d of the metal wire is not more than 0.20 mm and the ratio of the wire diameter d of the metal wire to the distance D between the adjacent metal wires in a generally parallel arrangement (d/D) ranges from 0.40 to 0.55, and wherein the ion exchange membrane and the cathode are adhered together in a manner. Appeal Br. Claims Appendix (emphasis and spacing added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Appeal 2021-001526 Application 15/110,358 3 Answer entered October 26, 2020 (“Ans.”): I. claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over Takahashi (JP 58130286, published August 3, 1983) (“Takahashi I”) in view of Hara (US 2015/0299876 A1, published October 22, 2015); and II. claim 3 under 35 U.S.C. § 103 as unpatentable over Takahashi (JP 5842778, published March 12, 1983) (“Takahashi II”) in view of Hara. Compare Final Act. 2-5, with Ans. 3-5. FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we affirm the Examiner’s rejections of claims 1-3 under 35 U.S.C. § 103, for reasons set forth in the Final Action, the Answer, and below. We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in 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”). Rejection I We turn first to the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over Takahashi I in view of Hara. To address this rejection, the Appellant argues claims 1 and 2 together. Appeal Br. 4-7. We, therefore, select claim 1 as representative, and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2021-001526 Application 15/110,358 4 Takahashi I discloses an anode included in an apparatus for electrolyzing sodium chloride. Takahashi I Abstr. Takahashi I discloses that the anode is formed of an expanded metal (perforated flat metal plate) having a thickness of 0.05 to 0.3 mm, a “major axis size” ranging from 1-5 mm, and a “minor axis size” ranging from 0.2-2.5 mm. Id. Takahashi I discloses that use of such an anode “drop[s] the bath voltage in the electrolysis of salt.” Id. The Appellant does not dispute the Examiner’s de facto finding that Takahashi I’s “major axis size” corresponds to “the long way LW” recited in claim 1, and “minor axis size” corresponds to “the short way SW” recited in claim 1. Compare Final Act. 3, with Appeal Br. 4-7. Based on this finding, the Examiner determines that the short way to long way ratio (SW/LW) of Takahashi I’s expanded metal (anode) ranges from 0.1 (SW/LW =0.5mm/5mm = 0.1) to 2.5 (SW/LW = 2.5mm/1mm = 2.5), and, the Examiner explains, “[i]f a short way of 0.5 mm and a long way of 1 mm is selected, a ratio of 0.5 is obtained which falls within the claimed range of 0.45 to 0.55,” rendering the claimed range prima facie obvious. Final Act. 3 (citing MPEP § 2144.05.1 and II.A). The Appellant argues that “it is improper for the Examiner to create an artificial example to arrive at the feature of the specifically claimed ratio range of 0.40 to 0.55.” Appeal Br. 5 (emphasis omitted). The Appellant further argues that MPEP § 2144.05 states that “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” but Takahashi I “does not disclose a range for the ratio of SW/LW.” Appeal Br. 7. The Appellant argues that MPEP § 2144.05(B) states that a “parameter must first be recognized as a result- Appeal 2021-001526 Application 15/110,358 5 effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation,” but Takahashi I does not suggest that the ratio of SW/LW is a result-effective variable that should be optimized. Id. The Appellant argues that the Examiner’s reliance on MPEP § 2144.05 is, therefore, “legally flawed.” Id. The Appellant’s arguments do not identify reversible error in the Examiner’s rejection, for reasons that follow. One of ordinary skill in the art would have appreciated that although Takahashi I discloses individual size ranges for each of the minor axis (SW) and the major axis (LW) of Takahashi I’s expanded metal (anode), a ratio of the two size ranges (SW/LW) can be derived readily from the individual size ranges. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); In re Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). The Examiner, in fact, derives such a ratio range (0.1 to 2.5) in the Final Action, as discussed above, which encompasses the respective range recited in claim 1 (0.45 to 0.55). Final Act. 3. The Examiner correctly determines that such an encompassing range renders the recited range prima facie obvious, and the Examiner does not base the determination of obviousness on a finding that the ratio of Takahashi I’s minor axis size (SW) Appeal 2021-001526 Application 15/110,358 6 to major axis size is a result-effective variable. Id.; In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness. . . . Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap.” (emphasis omitted)). The Examiner’s reliance on MPEP § 2144.05, therefore, is not “legally flawed” as the Appellant argues. Furthermore, contrary to the Appellant’s arguments, the Examiner’s indication that a ratio of a particular minor axis value (0.5 mm) and a particular major axis value (1.0 mm) within the respective ranges disclosed in Takahashi I falls within the ratio range recited in claim 1, does not constitute an “artificial example.” Appeal Br. 9. Rather, the Examiner’s explanation illustrates how, despite Takahashi I’s lack of an explicit disclosure of a minor axis to major axis ratio (SW/LW), Takahashi I’s disclosure of individual size ranges for each axis readily allows determination of ratios of the size values, including a ratio (0.5 mm/1.0 mm) falling within the ratio range recited in claim 1 (0.45-0.55). The Appellant argues that the experimental and comparative examples provided in the Appellant’s Specification, and the additional comparative example presented in the Declaration of co-inventor Terumi Hashimo filed September 17, 2019, show that a “reduction in electrolysis voltage and reduction of an impurity gas [O2] in an anode gas are achieved in parallel only when” SW/LW is within the range recited in claim 1. Appeal Br. 6. Appeal 2021-001526 Application 15/110,358 7 The Appellant argues that neither Takahashi I nor Hara specifically discloses or suggests the “unexpected result of reduction in electrolysis voltage and reduction of an impurity gas in an anode gas,” and, “[a]s such, the present invention possesses unexpected improved properties and is therefore not obvious over the cited references.” Id. 6-7. The burden of analyzing and explaining Specification disclosures to establish unexpected results rests with the Appellant. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[T]he burden of showing unexpected results rests on he who asserts them.”). To meet this burden, the Appellant must provide objective evidence demonstrating that the claimed subject matter imparts results that would have been unexpected by one of ordinary skill in the art before the effective filing date of the present application relative to the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). On the record before us, the Appellant does not meet this burden because the Appellant does not identify any averment in the Specification, or provide other objective evidence, establishing that the asserted reduction in electrolysis voltage and anode impurity gas resulting from a SW/LW ratio as recited in claim 1-even if the relied-upon experimental examples demonstrate such a result-actually would have been unexpected by one ordinary skill in the art at the time the present application was filed. This is particularly the case in view of Takahashi I’s de facto disclosure of an expanded metal (anode) having an SW/LW ratio range encompassing the respective range recited in claim 1 (discussed above) that “drop[s] the bath Appeal 2021-001526 Application 15/110,358 8 voltage in the electrolysis of salt.” Takahashi I. Abstr. Lack of an explicit teaching in Takahashi I (or Hara) that an SW/LW ratio as recited in claim 1 reduces an impurity gas in an anode gas does not constitute the requisite objective evidence necessary to establish that such a result, in combination with a voltage reduction, would have been unexpected to one of ordinary skill in the art at the time of filing. Klosak, 455 F.2d at 1080 (“[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” (emphasis omitted)); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (“Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration under Rule 132 . . . . Instead, the only reference to unexpected results was a statement by Geisler’s counsel . . . that Geisler’s results were ‘surprising.’”); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.”). Therefore, considering the totality of the evidence relied upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner’s conclusion of obviousness. We, accordingly, sustain the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103. Rejection II We turn now to the Examiner’s rejection of claim 3 under 35 U.S.C. § 103 as unpatentable over Takahashi II in view of Hara. Takahashi II discloses an anode included in an apparatus for electrolyzing sodium chloride. Takahashi II Abstr. Takahashi II discloses Appeal 2021-001526 Application 15/110,358 9 that the anode is formed of metallic netting (woven mesh made of metal wire) having a thickness of 0.05 to 1.0 mm, a wire diameter ranging from 0.15-0.5 mm, and a mesh size ranging from 20-60 mesh, which the Examiner converts to 0.841-0.250 mm.3 Id.; Final Act. 4. Takahashi II discloses that use of such an anode “reduce[s] the electrolytic voltage . . . to facilitate energy saving.” Id. The Appellant does not dispute the Examiner’s de facto finding that Takahashi II’s mesh size corresponds to “the distance D between the adjacent metal wires in a generally parallel arrangement” recited in claim 3. Compare Final Act. 4, with Appeal Br. 4-7. Based on this implicit finding, the Examiner determines that the ratio of the wire diameter (d) to the distance (D) between the adjacent metal wires in a generally parallel arrangement (d/D) of Takahashi II’s metallic netting ranges from 0.178 (d/D = 0.15/0.841 = 0.178) to 2.0 (d/D = 0.5/0.250 = 2.0), and, the Examiner explains, “[i]f a diameter of 0.4mm and a 20 mesh (~0.841 mm) is selected, a ratio of 0.475 is obtained, which falls within the claimed range of 0.40 to 0.55,” rendering the claimed range prima facie obvious. Final Act. 4 (citing MPEP § 2144.05.1 and II.A). The Appellant argues that Takahashi II does not teach or suggest “that the diameter of the metal wire used in the anode is a parameter that should be considered.” Appeal Br. 8-9 (emphasis omitted). As discussed above, however, contrary to the Appellant’s argument, Takahashi II explicitly teaches that the metal wire used to form the metallic netting of Takahashi II’s anode has a diameter of 0.15 to 0.5 mm, thus 3 “Mesh size” refers to the number of openings in one inch of screen. See, e.g., https://elcanindustries.com/blog_posts/ mesh-to-micron-chart/. Appeal 2021-001526 Application 15/110,358 10 indicating that the metal wire’s diameter “is a parameter that should be considered.” The Appellant argues that “it is wholly improper for the Examiner to create an artificial example by arbitrarily selecting various values for multiple parameters upon which to base the rejection.” Appeal Br. 9 (emphasis omitted). The Appellant argues that a diameter of 0.4 mm the Examiner selects for the Examiner’s “artificial example” is, in fact, outside the wire diameter range of “not more than 0.20 mm” recited in claim 3, and one of ordinary skill in the art, therefore, “would have never arrived at a concept of ‘d/D’ with the specific range of values” recited in claim 3. Id. at 9-10. The Appellant argues that “[t]here is no teaching or suggestion in the art that the ratio of the wire diameter d of the metal wire to the distance D between the adjacent metal wires in a generally parallel arrangement (d/D) is a result effective parameter.” Id. at 9. The Appellant’s arguments do not identify reversible error in the Examiner’s rejection, for reasons that follow. One of ordinary skill in the art would appreciate that although Takahashi II discloses a range for each of the wire diameter and mesh size of Takahashi II’s metallic netting (metal wire woven mesh), a ratio of the two size ranges can be derived readily from the individual size ranges. KSR, 550 U.S. at 418; Preda, 401 F. 2d at 826. The Examiner, in fact, does so in the Final Action, as discussed above, and determines that the resulting ratio range (0.178 to 2.0) encompasses the respective range recited in claim 3 (0.40 to 0.55), rendering the recited range prima facie obvious. Final Act. 4; Peterson, 315 F.3d at 1329-30. The Examiner does not base the determination of obviousness on a finding that the ratio of Takahashi II’s Appeal 2021-001526 Application 15/110,358 11 wire diameter (SW) to mesh size is a result-effective variable. Although the Examiner includes values for Takahashi II’s wire diameter that fall outside the respective range recited in claim 3 to determine the ratio range, we consider this harmless error, because using values of Takahashi II’s diameter range that fall only within the claim 3 range (0.15- 2.0) yields a narrower ratio range of 0.178 to 0.8,4 which still encompasses the respective range recited in claim 3 (0.40 to 0.55), rendering the recited range prima facie obvious. Furthermore, analogous to the Examiner’s analysis, calculating individual ratios using diameter values from Takahashi II’s diameter range that fall only within the claim 3 range (0.15-2.0), and mesh sizes within Takahashi II’s range (0.250-0.841), yields ratios that fall within the range recited in claim 3 (e.g., d/D=0.19/0.45=0.42, and 0.18/0.35=0.5). The Appellant argues that the experimental and comparative examples provided in the Appellant’s Specification show that “by setting d/D to 0.40 to 0.55, alkali metal chloride can be electrolyzed at a lower voltage than a conventional anode, and a concentration of an impurity gas (O2) in the anode gas is reduced,” and “if the ratio d/D is outside of the claimed range the improved reduction in electrolysis voltage and O2 gas production are not achieved.” Appeal Br. 9. The Appellant argues that neither Takahashi II nor Hara “disclose or suggest impurity gas,” and, therefore, “the effect of reducing impurity gas is an unexpected improved property which is not obvious from Takahashi and Hara.” Id. On the record before us, however, the Appellant does not meet the burden of demonstrating that the subject matter of claim 3 imparts results 4 0.178 (d/D = 0.15/0.841 = 0.178) to 0.9 (d/D = 0.2/0.250 = 0.8). Appeal 2021-001526 Application 15/110,358 12 that would have been unexpected by one of ordinary skill in the art before the effective filing date of the present application relative to the closest prior art, Takahashi II. Baxter, 952 F.2d at 392. The Appellant does not identify any averment in the Specification, or provide other objective evidence, establishing that the asserted reduction in electrolysis voltage and anode impurity gas resulting from a d/D ratio as recited in claim 3-even if the relied-upon experimental examples demonstrate such a result-actually would have been unexpected by one ordinary skill in the art at the time of filing. This is particularly the case in view of Takahashi II’s de facto disclosure of an anode formed of metallic netting having a d/D ratio range encompassing the range recited in claim 3 (discussed above) that “reduce[s] the electrolytic voltage . . . to facilitate energy saving.” Takahashi II. Abstr. Lack of an explicit teaching in Takahashi II (or Hara) that a d/D ratio as recited in claim 3 reduces an impurity gas in an anode gas does not constitute the requisite objective evidence necessary to establish that such a result in combination with a voltage reduction would have been unexpected to one of ordinary skill in the art at the time of filing. Klosak, 455 F.2d at 1080; Geisler, 116 F.3d at 1471; Blauwe, 736 F.2d at 705. Therefore, considering the totality of the evidence relied upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner’s conclusion of obviousness. We, accordingly, sustain the Examiner’s rejection of claim 3 under 35 U.S.C. § 103. Appeal 2021-001526 Application 15/110,358 13 DECISION SUMMARY Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 103 Takahashi I, Hara 1, 2 3 103 Takahashi II, Hara 3 Overall Outcome 1-3 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED