Ex Parte 6410187 et al

Patent Trial and Appeal Board

Jun 13, 2013

90010769 (P.T.A.B. Jun. 13, 2013)

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.
90/010,769 12/11/2009 6410187 M-4849 1191
26163 7590 06/13/2013
FISH & RICHARDSON P.C.
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LOPEZ, CARLOS N
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/13/2013 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
____________

The Gillette Company
Patent Owner and Appellant
____________

Appeal 2013-001391
Ex Partes Reexamination Control 90/010,769
Patent U.S. 6,410,187
Technology Center 3900
____________

Before, HUBERT LORIN, RICHARD M. LEBOVITZ, and JEFFREY
FREDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent Examiner‟s
decision to reject claims 1-33, 35-39, 47-69 and 71-85 in ex parte reexamination of
US Patent 6,410,187. The Board‟s jurisdiction for this appeal is under 35 U.S.C. §
6(b) and § 134(b). We affirm.
Background
The patent in dispute in this appeal is U.S. Patent 6,410,187 (“the „187
patent”), issued June 25, 2002. The Patent Owner and Real Party in Interest is The
Gillette Company (Appeal Br. 1, dated June 15, 2012). A request for ex parte
reexamination under 35 U.S.C. §§ 302-307 and 37 C.F.R. § 1.510 of claims 1-46
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Patent 6,410,187

of the „187 patent was made on December 11, 2009 by a Third Party Requester
(Request for Ex Parte Reexamination Transmittal Form). An oral hearing took
place on April 3, 2013. A transcript of the oral hearing will be entered into the
record in due course.
Claims
1-33, 35-39, 47-69 and 71-85 are pending. Claims 34, 40-46, and 70 were
canceled. Claims 47-69 and 71-85 were added during prosecution of the instant
reexamination. The claimed subject matter is directed to an alkaline battery having
a housing, an anode, a cathode, and separator. Each claim requires a minimum
(S/V)
2
value, which is the main subject of dispute in this appeal. Claims 1 and 31
are representative and read as follows:
1. A primary alkaline AA battery, comprising:
a housing;
a cathode within the housing;
an anode within the housing; and
a separator electrically separating the anode and the cathode;
wherein the battery has an (S/V)
2
value of greater than 0.38 mm
-2
, the
anode comprises a lobed cavity within the cathode, and the shape of
the anode does not vary along the length of the battery.

31. The battery of claim 1, 4, 7, 10, 13, 16, 19, 22, 25, 28, 47,
50, 53, 56 or 59, wherein the cathode comprises manganese dioxide.

The claims stand rejected as follows:
Rejection 1. Claims 31-33, 47-67, and 81-85 stand rejected under 35 U.S.C
§ 103(a) as obvious in view of Mick et al. (US 5,869,205, issued Feb. 9, 1999;
hereinafter “Mick”) and Chemical Power Source (V.S. Bagotzky and A.M.
Skundin, Academic Press (1980); hereinafter “CPS”).
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Patent 6,410,187

Rejection 2. Claims 1-33, 35-39, 68, and 69 stand rejected under 35 U.S.C §
103(a) as obvious in view of Newman et al. (U.S.5,283,139, issued Feb. 1,1994;
hereinafter “Newman”), Meintjes (U.S. 5,472,806 issued Dec. 5, 1995), and CPS.
Rejection 3. Claims 71-80 stand rejected under 35 U.S.C § 103(a) as
obvious in view of Newman, Meintjes, CPS, and Mick.

Rejection 1
Claims 31-33, 47-67, and 81-85 stand rejected under 35 U.S.C § 103(a) as
obvious view of Mick and CPS (Final Office Action 5).
Claim 1 is directed to a primary alkaline battery comprising: [1] a housing;
[2] a cathode within the housing; [3] anode within the housing; and [4] separator
electrically separating the anode and cathode. The battery has the following
features: [5] (S/V)
2
value of greater than 0.38 mm
-2
; [6] the anode comprises a
lobed cavity within the cathode; and [7] the shape of the anode does not vary along
the length of the battery. Claim 31 depends on claim 1 and recites that the cathode
is manganese dioxide.
The Examiner found that Mick describes a battery with elements [1] through
[4], [6], and [7] as recited in claim 31 (Final Rejection 5 & 7). Mick‟s cathode was
said by the Examine to comprise manganese dioxide (id.) The Examiner also
found that the Mick teaches increasing the anode-to-cathode surface to realize
enhanced service performance by using multiple anodes in the cathode rather than
a single anode as in conventional cells (id.at 6).
The Examiner acknowledged that Mick does not teach [5] the (S/V)
2
values
recited in the claims (Final Rejection 6). However, the Examiner found that CPS
teaches the importance of increasing the ratio of surface area to volume in
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Patent 6,410,187

maximizing power (id.) The Examiner recognized that the S and V values are
defined differently in CPS and the „187 patent, but stated that it was “a distinction
with a substantive difference” because the V (volume) value of the cathode as
defined in the „187 patent is proportional to V (volume) value of the battery cell as
defined in Mick (id. at 6-7). The Examiner made the same statement for the S
values, acknowledging that S was defined differently in the patent and Mick, but
were still proportional to each other (id.). Based on the CPS teachings, the
Examiner determined it would have been obvious to one of ordinary skill in the art
to adjust the [5] (S/V)
2
values to improve battery performance (id. at 7). The
Examiner noted that the claims were directed to specific (S/V)
2
values, but that
Patent Owner had not argued anything unexpected or critical about the claimed
values (id.)
Patent Owner identified the differences between CPS and the „187 patent in
their definitions of the S/V value, arguing that the definitions were substantively
different between the two (Appeal Br. 4). In support, Patent Owner relied on
testimony in declaration by Alexander B. Shelekhin, Ph.D., an employee of
assignee Gillette of the „187 patent and project manager in battery design at
Gillette (Shelekhin Decl. ¶ 5). Patent Owner contends that the Examiner “refused
to give proper weight to the Shelekhin Declaration” (App. Br. 5).
The issue in this rejection is whether the teachings in CPS and Mick would
have given one of ordinary art reason to modify the S and V values as defined in
independent claims 1 and dependent claim 31.

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Patent 6,410,187

Finding of Fact 1 (FF 1)
(c) Electrode thickness
A correct choice of electrode thickness is important in cell design. The
same amount of reactants can be spread over a small number of thick
or a large number of thin electrodes. In the second case the structural
parameter Sv = S/V, that is the total geometric surface area of the
electrodes (of one polarity) per unit volume of the cell, is increased.
The maximum admissible discharge current, that is the maximum
admissible power, is enhanced for thinner electrodes and greater total
surface.
(CPS, p. 112.)
Analysis
CPS teaches that in one case the ratio of S over V is increased to enhance the
battery‟s power (FF 1). S is the total geometric surface area of the electrode and V
is the unit volume of the cell (id.). Thus, the surface area of the electrode is
increased with respect to the volume of the cell.
S and V is defined differently in the „187 patent. In claims 1 and 31, S is the
separator surface area and V is the cathode volume („187 patent, col. 1, ll. 37-40;
col. 7, ll. 35-37). These parts are depicted below in Figure 2 of the „187 patent
(annotations added):

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As shown in Figure 2 reproduced above, 14 is the anode with five lobes
numbered 20, 22, 24, 25, and 26. 12 is the cathode. The separator 16 is shown as
disposed between the anode and cathode, electrically separating them („187 patent,
col. 1, ll. 12-14; Appeal Br. 3:6).
As explained above, the Examiner‟s position is that an “increase in S results
in an increase of the S/Vcathode ratio, and in turn, this ratio is proportional to any
increase for the S/Vcell ratio taught by CPS.” (Answer 3.) It is clear from Figure 2,
above, that the separator area is the contact area between the anode and cathode
surface, and is a part of the cathode surface area. Thus, the Examiner‟s statement
about the proportionality is supported by the evidence because increasing the
surface area of the area of the electrode would increase the various surfaces which
comprise it, including the contact area between the anode and cathode.
Dr. Shelekhin testified that there are ways in which the total cell volume
could be varied without changing the cathode volume (Shelekhin Decl. ¶ 8.) Dr.
Shelekhin also testified that the separator surface area is significantly different
from the total geometric surface area of the electrodes of at least one polarity (id. at
¶ 9). To support this position, Dr. Shelekhin cites a patent to Jurca which he
testified shows that the separator does not extend along the upper or lower surfaces
of the cathode (id.).
This testimony is not persuasive. It has not been challenged that the
separator is a surface area which is a part of the total geometric area S of the
electrode as defined by CPS. It has also not been challenged that the volume of the
cathode is a part of the unit volume V of the cell as defined by CPS. CPS‟s
identification of the total geometric area and unit cell volume as parameters to be
varied in improving cell performance (FF 1) logically teaches varying any portion
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Patent 6,410,187

of the total area and unit cell volume, including the separator area and cathode
volume, respectively. Indeed, the teaching to vary the unit cell volume means
varying cathode and/or anode volumes, and varying the total electrode area means
varying any of the surfaces that comprise it, including the separator surface. Thus,
CPS clearly makes it obvious to various any of these elements in order to improve
battery cell performance.
Moreover, the Examiner specifically cited Mick for its teaching to increase
anode to cathode surface area to enhance service performance (Final Rejection 6).
Such region would be seen to be comprised of the separator area. Mick teaches:
Accordingly, an alkaline cell 10 or 10' is provided in accordance with
the present invention, which has an increased anode-to-cathode
interface area as compared to the conventional single anode/single
cathode cell. The increase in anode-to-cathode area that is realized
with the present invention advantageously increases the service
performance, particularly for a high-rate electrochemical cell.
(Mick, col. 5, ll. 29-36.)
Dr. Shelekhin‟s testimony does not adequately address the obviousness of
varying the cathode volume and separator area based on the teachings of CPS, but
rather focuses on the acknowledged differences in the S and V definitions. Dr.
Shelekhin also did not address Mick‟s disclosure about increasing the anode-to-
cathode surface area.
Dr. Shelekhin also testified in his written declaration about the obviousness
of modifying Jurca in view of the information disclosed in CPS (Shelekhin Decl. ¶
7). Dr. Shelekhin testified that based on these teachings, he “would have modified
Jurca‟s cells to have a large number of thin electrodes.” (Id.) The rejection at
issue, however, is not over the Jurca patent. Without explanation, Patent Owner
appears to have applied this testimony to the rejection over Mick and CPS, the
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actual contested rejection (Appeal Br. 5-6). Nonetheless, Patent Owner has not
explained how a large number of thin electrodes are excluded by claim 31. We
therefore do not consider this argument persuasive.
For the foregoing reasons, we affirm the rejection of representative claim 31.
Claims 32, 33, 47-67, and 81-85 fall with claim 31 because they were not
separately argued. See 37 C.F.R. § 41.37(c)(1)(vii).

Rejection 2
Claims 1-33, 35-39, 68, and 69 stand rejected under 35 U.S.C. § 103(a) in
view of Newman, Meintjes, and CPS (Final Rejection 8).
The Examiner found that Newman describes all the elements of the claimed
alkaline battery, but not the S/V value (Final Rejection 8-9). However, to reach
that limitation, the Examiner cited Meintjes and CPS. CPS is discussed above.
Meintjes was cited for teaching lobed electrodes (id. at 9). The Examiner found
that the “importance of having such lobes is that a substantially greater surface area
of the separator (16) is obtained as compared to a right cylindrical tube of the same
height and volume, thus providing for increased power for the same capacity (see
[Meintjes] col. 5, lines 26-30).“ (Id.) Based on these teachings, the Examiner
found that it would have been obvious to have increased separator surface area S
with respect to cathode volume in order to enhance battery performance as taught
by Meintjes and CPS (id.).
Patent Owner contends that the rejection is deficient for the same reason
already discussed based on the CPS publication (Appeal Br. 6). Patent Owner also
argued that the Dr. Shelekhin‟s testimony was not given proper weight (id.) Patent
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Patent 6,410,187

Owner also contends that Newman and Meintjes are not combinable because of
differences in their cell design (id. at 7).
We have already addressed the CPS arguments and found them deficient.
With respect to Newman and Meintjes, Dr. Shelekhin testified in his written
declaration about the differences between the cell types described in each,
concluding: “Because of these differences in cell design, it would not have been
obvious to me to modify the cells disclosed in Newman based on the information
disclosed in Meintjes.” (Shelekhin Decl. ¶ 10.) However, the Examiner
specifically relied upon Meintjes for its teaching of increasing the surface area of
the separator as providing a reason to have achieved the recited (S/V)
2
values
(Final Rejection 9). Dr. Shelekhin did not identify a flaw in the Examiner‟s
reasoning nor explain why this principle would have been inapplicable to
Newman. To the contrary, CPS‟s teachings, as explained above, would have
reasonably suggested the importance of both the separator and cathode volume
values for enhancing battery performance – consistent with Meintjes teachings.
We affirm the rejection of representative claim 1. Claims 2-33, 35-39, 68,
and 69 fall with claim 1 because they were not separately argued. See 37 C.F.R. §
41.37(c)(1)(vii).

Rejection 3
Claims 71-80 stand rejected under 35 U.S.C. § 103(a) in view of Newman,
Meintjes, CPS, and Mick (Final Rejection 10). The Examiner explained why the
claimed subject matter would have been obvious to one of ordinary skill in the art
(id. 10-11). The Examiner‟s explanation is factually supported by a preponderance
of the evidence. Patent Owner relies on the same unpersuasive arguments already
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presented (Appeal Br. 7-8). For the reasons set forth by the Examiner, we affirm
the rejection of claim 71. Claims 72-80 fall with claim 71 because they were not
separately argued. See 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

alw

Patent Owner:
Fish & Richardson P.C.
P.O. Box 1022
Minneapolis, MN 55440-1022

Third Party Requester:
Stites & Harbison PLLC
1199 North Fairfax Street
Suite 900
Alexandria, VA 22314