Hydrogen Economy Patent Rejected for Ambiguity

Hydrogen Economy Patent Rejected for Ambiguity

Commissioner’s Decision #1376

The Patent Appeal Board upheld the rejection of Canadian Patent Application No. 2,619,449 entitled “Environmentally Harmonious Generation of Electricity” for being indefinite or ambiguous. [36] The Application sought to patent what is essentially one manifestation of the hydrogen economy. It describes a method whereby electricity is generated from renewable sources, used to produce hydrogen by electrolysis as an energy storage medium, which can then be used in a fuel cell to generate electricity either for export to the grid or onboard a hydrogen-powered vehicle. [11] It is worth noting that the power-generating method involves numerous intermediary energy-transfer steps, which the Board conceded were probably inefficient. [67] The patent examiner had rejected the sole claim for being indefinite, anticipated, and obvious. [5] The Board agreed with the finding of indefiniteness since the Application’s use of the term “water… inputs” as claimed was not supported by the description. [41] Although it was not required to, the Board went on to consider issues of anticipation and obviousness. It determined that although the claim would not have been anticipated, [57] it would have been obvious. [70]

The Application contains only one claim as follows:

  1. A process for generating electricity which is in harmony with the environment by using wind, water, and solar inputs, without any pollution, by specifying how the electricity from the fuel cell is to be applied to generate power in the case of a power plant(s), and to the movement of vehicle(s), locomotive(s), and ship(s). [emphasis added] [13]

On a purposive interpretation of the claim, the Board determined that the person skilled in the art would understand that the claim actually claims two distinct embodiments: one for the generation of power in a plant, and one for the powering of vehicles. [30]

The Phrase “water… inputs” is Ambiguous

On construing the phrase “water… inputs” as used in the claim, the Board thought that the skilled person would understand it to refer to hydroelectric power but that the description did not suggest any such meaning. [32] In contrast to solar power and wind power, which are adequately described as energy inputs in the description, hydroelectric power is not. [33] Water is only ever described as being either the source of hydrogen for the electrolysis process, as steam generated from other power sources for the intermediary step of turning a turbine, or as waste heat from a fuel cell to be pumped back into a boiler. [34] Without water being referred to as an energy input in the description, the skilled person would wonder which of these other uses of water was being referred to in the claim. [41] The claim was therefore found to be insufficient. [42]

The Claim is not Anticipated

Although it was not required to, the Board went on to consider the invention’s novelty. The Board disagreed with the patent examiner’s previous finding of anticipation.

Two pieces of prior art were cited: (1) US Patent No. 7,248,018 B2 which claims a hydrogen vehicle refueling system that generates hydrogen from solar, wind, and biothermal power, [49] and (2) the Wikipedia entry “Grid energy storage” which describes the generation of electricity from solar and wind inputs, and generating hydrogen from the electrolysis of water to be used in internal combustion engines for vehicles or to be used in fuel cells for vehicles or for feeding electricity to the grid. [50]

The Board found that the US patent does not anticipate the Application because, firstly, the Application employs more steps in its power-generating embodiment, such as a steam turbine step, and secondly, the Application teaches a vehicle carrying a power-generating system in its vehicle embodiment while the US patent does not. [52-54]

The Wikipedia entry also does not anticipate the Application because it similarly does not teach the steam turbine step used in the power-generating embodiment in the Application, and similarly does not teach a vehicle carrying a power-generating system. [55-57]

The Claim is Obvious

Again, although it was not required to, the Board considered the issue of obviousness and concluded that the claimed invention would be obvious. [70]

The Board identified the inventive concept of each of the two embodiments of the claim. The inventive concepts were essentially reiterations of the power-generating method and the vehicle-powering methods that the Board earlier construed. [62-63] The Board took the Wikipedia entry as establishing the state of the art. [64]

The difference between the power-generating embodiment and the state of the art is the intermediary steam turbine step and using the waste heat from the fuel cell to supply the boiler. [65] The addition of the steam turbine step was not taken to be an inventive step since the skilled person “ would recognize the additional loop as one of a finite number of obvious, albeit less efficient, alternative to a system without the loop, as such a loop would naturally increase energy losses.” [67] The use of waste heat would have been an obvious way to gain efficiencies. [68]

The difference between the vehicle-powering embodiment and the state of the art is that the vehicle itself would carry the power-generating system. [66] Having the power-generating system on the vehicle would be recognized by the skilled person as a possible design. Vehicles with attached solar panels have been around for some time. Vehicles with wind power generation attached – which the Board commented would probably be impractical – would still not be inventive. [69]

Commentary

The applicant for this patent was unrepresented. The Board commented that the insufficiency defect which was fatal to the application might have been overcome if only the applicant had been by a qualified patent agent, [44] thus demonstrating the importance of obtaining professional advice when filing patent applications. It appears that it is with some sympathy for the unrepresented applicant that the Board went as far as it did to construe the claim the way that it did, with two embodiments, and went on to address the novelty and obviousness questions even though it was not required to.

It is interesting how the Board dealt with the steam turbine loop, which was essentially a circular process involving: (1) using electricity from a fuel cell used to heat water to (2) produce steam to (3) turn a turbine to thereby generate electricity once again. [4] The Board determined that although this was a difference that precluded the claimed invention from being anticipated by the prior art, [52] it could not save claimed invention from obviousness since the “additional loop” was one of a “finite number of obvious, albeit less efficient, alternative to a system without the loop”. [67] This finding sends the clear message to inventors who might seek to avoid anticipation by making unnecessary additions to an existing process that such additions will not be outside the reach of the obviousness inquiry (but note that there was no indication that that was the intent of the applicant in this case).