Ex Parte 6527941 et al

Patent Trials and Appeals Board

Aug 9, 2013

95000038 - (D) (P.T.A.B. Aug. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,038 02/27/2004 6527941 1428620.00003US1 2250
23483 7590 08/09/2013
WILMERHALE/BOSTON
60 STATE STREET
BOSTON, MA 02109
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/09/2013 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
____________

DELTA EMD AUSTRALIA PTY. LTD.
Requester

v.

Patent of TRONOX LLC
Patent Owner
____________

Appeal 2013-007159
Reexamination Control 95/000,038
Patent 6,527,941 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL – 37 C.F.R. § 41.77(f)
The above-identified inter partes reexamination is before us for
review of an Examiner’s determination pursuant to 37 C.F.R. § 41.77(d) that
the new grounds of rejection entered pursuant to 37 C.F.R. § 41.77(b) in a
Decision on Appeal mailed June 19, 2009 (hereinafter “Decision”) have not
been overcome. See “REPLY OF REEXAMINATION REQUESTER TO
PATENT OWNER’S COMMENTS UNDER 37 C.F.R. § 41.77(e)” filed
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July 13, 2011 (hereinafter “3PR Reply”); “PATENT OWNER’S
COMMENTS PURSUANT TO 37 C.F.R. § 41.77(e)” filed June 13, 2011
(hereinafter “PO Comments filed June 13, 2011”); Examiner’s
Determination Pursuant to 37 C.F.R. § 41.77(d) mailed May 13, 2011
(hereinafter “ED”).
We have jurisdiction pursuant to 35 U.S.C. §§ 6(b), 134, and 315
(2002). The Examiner’s determination that new grounds of rejection II-V,
as set forth in the Decision, have not been overcome and are therefore
maintained and the determination that these grounds of rejection are also
applicable to the new claims added by amendment are affirmed. The
Examiner’s determination that new ground of rejection I, as set forth in the
Decision, has not been overcome is reversed. We need not reach the
propriety or the merits of the Examiner’s additional bases for rejecting the
claims under 35 U.S.C. § 112, ¶ 1 because the rejections under 35 U.S.C. §
103(a) are dispositive as to all claims.1, 2

1 By rule, 37 C.F.R. § 41.77(f), this “new decision is deemed to incorporate
the earlier decision, except for those portions specifically withdrawn.”
2 The June 19, 2009 Decision was rendered by a Board panel consisting of
Administrative Patent Judges Carol A. Spiegel (retired), Romulo H.
Delmendo, and Jeffrey T. Smith. Judges Lebovitz and Robertson have
replaced Judges Spiegel and Smith as members of the Board panel. Cf. In re
Alappat, 33 F.3d 1526, 1533-34 (Fed. Cir. 1994) (“In those cases where a
different panel of the Board is reconsidering an earlier panel decision, the
Board is still the entity reexamining that earlier decision; it is simply doing
so through a different panel.”).
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BACKGROUND
The current patent under reexamination (hereinafter “’941 Patent”) is
a continuation-in-part of Application 09/217,168, filed December 21, 1998,
now U.S. Patent 6,214,198, issued April 10, 2001 (hereinafter “’198
Patent”). The ’198 Patent and U.S. Patent 6,638,401 C1 (hereinafter “’401
Patent”) are related as divisional applications.3
In the June 19, 2009 Decision, the Board reversed the Examiner’s
refusal to reject:
I. Claims 14-19 as failing to comply with the written description
requirement of 35 U.S.C. § 112, ¶ 1;
II. Claims 5, 7, 9, 10, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Japanese Patent Application 9-78275
(hereinafter “JP ’275”);
III. Claims 6 and 11 under 35 U.S.C. § 103(a) as unpatentable over
JP ’275 and T.N. Andersen, Effect of Some end Structural
Features on Alkaline Discharge Capacity, 11 PROGRESS IN
BATTERIES & BATTERY MATERIALS 105-129 (1992)
(hereinafter “Andersen”);
IV. Claims 5, 7, 10, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Meshan Mauthoor, The Effect of Operating
Parameters on the Properties of Electrolytic Manganese
Dioxide (May 31, 1995) (Ph.D. thesis, University of

3 As a consequence of our decision entered in Reexamination 90/006,955, Ex
parte Tronox, LLC, http://e-
foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2011003873-06-
08-2011-1, all claims of the ’401 Patent were canceled on October 25, 2011.
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Watersrand, Johannesburg, South Africa) (publication date and
status unknown; hereinafter “Mauthoor”); and
V. Claims 5-7, 9, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Andersen and Mauthoor.
Decision 6-36.
By operation of rule, 37 C.F.R. § 41.77(b), the reversal of the
Examiner’s refusal to adopt these rejections required the designation of the
Decision as including new grounds of rejection. Decision at 34-36. Tronox
chose to address these new grounds of rejection by submitting an
amendment that included new claims and additional evidence. See
“AMENDMENT AND RESPONSE REQUESTING REOPENING OF
PROSECUTION” filed July 20, 2009; “DECLARATION UNDER 37 CFR
§ 1.132 BY GREGORY MISCHLER” filed November 18, 2009 (hereinafter
“Mischler Declaration”); “SECOND DECLARATION UNDER 37 CFR §
1.132 BY DR. TERRELL ANDERSEN” filed July 20, 2009 (hereinafter “2d
Anderson Declaration”); “DELARATION UNDER 37 CFR § 1.132 BY DR.
CLINT WILLIFORD” filed July 20, 2009 (hereinafter “Williford
Declaration”); “DECLARATION UNDER 37 CFR § 1.132 BY PAUL
GUTWALD” filed July 20, 2009 (hereinafter “Gutwald Declaration”).
Thus, the proceeding was remanded to the Examiner for the purpose of
determining whether the amendments and evidence overcome the new
grounds of rejections. 37 C.F.R. § 41.77(d) (“The Examiner will . . . issue a
determination that the [new ground of] rejection is maintained or has been
overcome.”).
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After considering Tronox’s amendments and evidence, the Examiner
determined that the Board’s new grounds of rejection were not overcome.
The Examiner modified the new grounds of rejection, as follows, by adding
the new claims and designating additional claims as subject to the rejections:
I. Claims 5-7, 14-19, and 21-23 under 35 U.S.C. § 112, ¶ 1, as
failing to comply with the written description requirement;
II. Claims 5, 7, 9, 10, 12, 14, 16-19, and 21-23 under 35 U.S.C. §
103(a) as unpatentable over JP ’275;
III. Claims 6, 11, and 15 under 35 U.S.C. § 103(a) as unpatentable
over JP ’275 and Andersen;
IV. Claims 5, 7, 10, 12, 14, 16-19, and 21-23 under 35 U.S.C. §
103(a) as unpatentable over Mauthoor; and
V. Claims 5-7, 9, 11, 12, 14-19, and 21-23 under 35 U.S.C. §
103(a) as unpatentable over Anderson and Mauthoor.
ED 5-54.

DISCUSSION
I.
We agree with Tronox that the amendments to claim 14 overcome the
Board’s new ground of rejection under the written description requirement
of 35 U.S.C. § 112, ¶ 1. PO Comments filed June 13, 2011 at 5-8.
A copy of claim 14 showing the amendments with bracketed and
underlined text to show deletions and insertions, respectively, relative to the
claim rejected by the Board is provided as follows:
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14. A method of producing EMD by electrolysis in an
electrolytic cell having cathodic and anodic electrodes disposed
therein comprising the steps of:
maintaining an aqueous electrolyte solution comprising
sulfuric acid and manganese sulfate in the electrolytic cell at a
temperature in the range of from 95°C to [97] 98°C, wherein
the solution has sulfuric acid therein in an amount from 25 to
[41] 40 grams of sulfuric acid per liter of solution and has
manganese sulfate therein whereby manganese ion is present in
an amount from [9] 5 to 20 grams of manganese ion per liter of
solution;
maintaining the amounts of the sulfuric acid and the
manganese ion in the solution at a ratio of sulfuric acid to
manganese ion greater than 2 but less than or equal to [3.5] 4;
and
applying electric current to the electrodes whereby the
anodic electrode current density is in the range of 2.5 to [3.4]
3.5 amperes per square foot and the EMD produced is deposited
on the anodic electrode.
Amendment filed July 20, 2009 at 4; Decision at 4.
With respect to then pending claim 14, the Board held in the prior
Decision that “an inordinate amount of unguided picking and choosing
would have been required from numerous possible disclosed endpoints to
arrive at the combination of specifically recited ranges.” Decision 24-25.
Tronox has now amended claim 14 to recite ranges that are explicitly
disclosed in the original disclosure as ranges suitable in “more preferred” or
“most preferred” embodiments of the claimed invention. As shown in the
table on page 6 of Tronox’s Comments, the ’941 Patent describes conditions
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used in “more preferred” and “most preferred” methods of the present
invention as follows:4

Description col. 6, ll. 23-41 (“more
preferred”)
Col. 16, ll. 9-11, 22-27
(“most preferred”)
Temperature about 95º C to about 98º C 95-98º C
Amount of H2SO4 about 20 about 50 g/l 25-40 g/l
Amount of Mn ions about 5 to about 25 g/l 5-20 g/l
H2SO4/Mn ratio (R) 2 < R ≤ 4 not stated
Current density about 2.5 to about 4.5 A/ft2 2.5-3.5 A/ft2

Although the H2SO4/Mn ratio is not explicitly stated for the “most
preferred” conditions, a person of ordinary skill in the art would have drawn
a reasonable inference that a ratio greater than 2 but less than or equal to 4,
as disclosed for the “more preferred” conditions, would be applicable even
for the narrower (but subsumed) range of conditions disclosed for the “most
preferred” conditions. Therefore, it is our judgment that these disclosures of
ranges suitable for “more preferred” and “most preferred” methods would
have clearly allowed persons of ordinary skill in the art to recognize that the
inventors of the ’941 Patent invented what is now claimed. In re Wertheim,
541 F.2d 257, 262 (CCPA 1976).

4 The Examiner and Delta EMD appear to have conceded that the
disclosures found in the ’941 Patent are the same as those found in the
originally-filed application that matured into ’941 Patent.
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For these reasons, we cannot uphold the Examiner’s determination
that the amendments to claim 14 do not overcome the new ground of
rejection set forth in the prior Decision.5

II. & III.
Tronox relies on the same arguments for both Rejections II and III.
PO Comments 9-17. In addition, Tronox argues the claims together.
Therefore, we confine our discussion to claim 5, which we select as
representative and reproduce below:
5. A method of producing EMD having unexpected
high discharge capacity at high discharge rates by electrolysis
in an electrolytic cell having cathodic and anodic electrodes
disposed therein comprising the steps of:
maintaining an aqueous electrolyte solution comprised of
sulfuric acid and manganese sulfate in said electrolytic cell at a
temperature in the range of from about 95°C to about 98°C,
said solution having sulfuric acid therein in an amount in the
range of from about 25 [20] to about 40 [50] grams of sulfuric
acid per liter of solution and having manganese sulfate therein
in an amount whereby manganese ion is present in the range of
from about 5 to about 20 [25] grams of manganese per liter of
solution;
maintaining the amounts of said sulfuric acid and said
manganese ion in said solution at a ratio of sulfuric acid to
manganese ion greater than 2 but less than or equal to 4; and

5 As indicated previously, the Examiner identified additional reasons for
rejecting claims 5-7, 17-19, and 21-23 under 35 U.S.C. § 112, ¶1. ED 5-10.
Because we affirm the rejections of these claims under 35 U.S.C. § 103(a)
below, we need not reach the propriety or the merits of the Examiner’s
additional reasons in support of a rejection under 35 U.S.C. § 112, ¶ 1.
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applying electric current to said electrodes whereby said
anodic electrode current density is in the range of from about
2.5 to about 4.5 amperes per square foot and said high
discharge capacity EMD produced is deposited on said anodic
electrode.
Amendment filed July 20, 2009 at 2.
Tronox’s arguments based on the amendments and evidence do not
persuade us of any reversible error in the new grounds of rejections under 35
U.S.C. § 103(a) based primarily on the teachings of JP ’275. Because we
are in agreement with the positions stated by the Examiner and Delta EMD
(ED 10-14, 24-37; 3PR Reply 15-21), we adopt them as our own and add the
following comments for emphasis.
As found in the prior Decision at pages 13-14, JP ’275 describes a
method for producing EMD (electrolytic manganese dioxide) using an
electrolytic solution containing 30-80 g/l of sulfuric acid and 20-50 g/l of
manganese at 90-100º C, wherein the current density is switched between
105-300 A/m2 and 20-100 A/m2. JP ’275 claim 1; ¶¶ [0009]-[0010]. JP
’275 further describes Working Example 1 in which “the electrolytic
solution was adjusted so that manganese and sulfuric acid contents are kept
at 50g/l and 70g/l respectively, and the temperature of the electrolytic bath
was kept at 95±1º C during the entire electrolysis,” while switching the
current density between 200 A/m2 (18.6 A/ft2) and 50 A/m2 (4.6 A/ft2) at
specified time intervals. ¶¶ [0014]-[0020]; Tables 1 and 2; Andersen
Declaration filed August 2, 2006 (executed August 4, 2004) ¶ 8.
Thus, the method described in Working Example 1 of JP ’275 differs
from the method recited in claim 5 in that the sulfuric acid content,
manganese ion content, and the ratio of sulfuric acid content to manganese
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ion content are outside the claimed ranges. As found above, however, JP
’275 teaches that the manganese content may be as low as 20 g/l and the
amount of sulfuric acid may be 30-80 g/l, which includes sulfuric acid
amounts of about 40 such that the resulting content ratio of sulfuric acid to
manganese may be greater than about 2. Therefore, the subject matter of
claim 5 would have been prima facie obvious over the teachings of JP ’275.
In re Peterson, 315 F.3d 1325, 1329 (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.”); id. (“We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.”).
Tronox argues that JP ’275 does not establish a prima facie case of
obviousness for several reasons. PO Comments filed June 13, 2011 at 9-10
(referring to Comments filed November 1, 2010).
Specifically, Tronox contends that JP ’275 teaches away from the
claimed invention because the reference describes current density switching
as a critical feature of the JP ’275 process. PO Comments filed November 1,
2010 at 10; see also PO Comments filed June 13, 2011 at 11-12. Tronox’s
argument, however, fails to appreciate the broad scope of claim 5. As
pointed out by both the Examiner and Delta EMD (ED 36; 3PR Reply 5), the
claim reads on a method in which the current density is switched as long as a
current density in the claimed range of “from about 2.5 to about 4.5 amperes
per square foot” is applied. JP ’275 describes such a method where a current
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density of 4.6 A/ft2 is applied for 50 hours. Table 1. By virtue of the claim
term “comprising,” method recited in claim 5 is open to other unrecited
steps, including a step of applying a current density of 18.6 A/ft2 for 30
minutes, as in Working Example 1 of JP ’275. In re Baxter, 656 F.2d 679,
686 (CCPA 1981) (“[T]he term ‘compris[ing]’ permits the inclusion of other
steps, elements, or materials.”).
Tronox further argues that JP ’275 fails to disclose or suggest
maintaining a ratio of sulfuric acid to manganese ion. PO Comments filed
November 1, 2010 at 10. Tronox overlooks, however, the disclosure in JP
’275 that “[t]he composition of the electrolytic solution was adjusted so that
manganese and sulfuric acid contents are kept at 50g/l and 70g/l respectively
. . . .” (emphases added). ¶ [0014]. Thus, a specific ratio was maintained by
JP ’275 during its process.
Tronox points out that the publication by R. Williams, R. Fredlein, G.
Lawrence, D. Swinkels, and C. Ward, “Effect of Deposition Conditions on
the Structural, Chemical, Physical, and Electrochemical Properties of
EMD,” 13 PROGRESS IN BATTERY & BATTERY MATERIALS – IBA
BRUSSELS (BELGIUM) MEETING 102, 107 (1994) (hereinafter “Williams”)
teaches away from varying sulfuric acid content by disclosing that no
significant change in discharge characteristics was observed when sulfuric
acid concentration was varied. PO Comments filed November 1, 2010 at
12-13. Even if Williams’s disclosure is considered as a sweeping disclosure
applicable to all situations, it does not constitute a teaching away because JP
’275 discloses that a range of sulfuric acid concentrations are useful (¶
[0014]). (“[C]ase law does not require that a particular combination must be
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the preferred, or the most desirable, combination described in the prior art in
order to provide [the] motivation [or reason] for the current invention.” In
re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
We now turn to the rebuttal evidence discussed by Tronox. “When
the PTO shows prima facie obviousness, the burden then shifts to the
applicant to rebut.” In re Mayne, 104 F.3d 1339, 1342 (Fed. Cir. 1997).
Tronox asserts that Comparative Example 1 – not Working Example 1
– of JP ’275 is the closest prior art because, as in the claimed method, it does
not use current density switching, which is a critical feature of Working
Example 1. PO Comments filed June 13, 2011 at 11. According to Tronox,
it has offered evidence establishing unexpected results over Comparative
Example 1 of JP ’275 in the form of declarations (e.g., the Mischler and
Gutwald Declarations). Id. at 10-17. Specifically, the Mischler Declaration
states that “[w]hereas the current ’941 patent samples range 106-113% of the
base EMD when discharged at a rate of 1 W to 1 V, the prior art materials
were at best 102% for Anders[en], 101% for JP’275, and 84% for
Mauthoor.” ¶¶ 11-12; Ex. A. See also 2d Andersen Decl. ¶ 12; Williford
Decl. at 12. According to the Gutwald Declaration, “the performance
advantage of the Tronox HD-EMD that includes up to a ten percent (10%)
greater discharge capacity in HD applications over EMD manufactured
utilizing prior art methods warranted a sales value in excess of thirty percent
(30%) over the price of EMD manufactured using prior art methods.” ¶ 6.
We do not find the proffered evidence persuasive to support the entire
scope of claim 5. Tronox did not submit experimental data comparing the
claimed invention against the closest prior art, which is Working Example 1
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of JP ’275. As we found above, claim 5 is broadly drafted to read on
processes that may include current density switching. Because the EMD of
Working Example 1 is disclosed as exhibiting a 16% increase over the EMD
of Comparative Example 1 in terms of discharging time, its discharge
characteristics would be expected to possess discharge characteristics similar
to those reported for the inventive EMDs identified in the declarations. That
is, Mr. Mischler testified that the EMD of JP ’275 Comparative Example 1
exhibited a discharge characteristic of 101% while the claimed EMDs
exhibited a discharge characteristic of 106-113%. Because JP ’275 discloses
that the EMD of Working Example 1 exhibited a 16% improvement over the
EMD of Comparative Example 1, it would reasonably appear that the
discharge characteristics of the EMD of JP ’275 Working Example 1 and the
inventive EMDs would be substantially the same. Tronox did not
demonstrate that the recited sulfuric acid and manganese amounts and their
content ratio, in combination with current density switching, would produce
an EMD that unexpectedly exhibits discharge characteristics above and
beyond that tested for Working Example 1 or the inventive samples
identified in the declarations. In other words, Tronox did not offer evidence
unexpectedly negating JP ’275’s teachings that current density switching at
ranges of Mn and H2SO4 amounts encompassing the claimed amounts and
ratios would provide comparably superior results as compared to the EMD
of Comparative Example 1.
Alternatively, Tronox could have narrowed its claims to exclude
current density switching, but it chose not do so. In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983) (“With respect to appellants’ broad claims to a
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catalyst with ‘an alkali metal,’ the experiments detailed in Friedrich III,
being limited to sodium only, are not commensurate in scope, and are,
therefore, insufficient to rebut the prima facie case.”); In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively, Harris needed to narrow the claims.”).
We find ourselves in complete agreement with the Examiner’s
assessment of the testimony of Mr. Gutwald – i.e., it is insufficient to
demonstrate that the difference in discharge characteristics between the
claimed invention and the prior art, as reported in the Mischler, 2d
Anderson, and Williford Declarations, would have been considered truly
unexpected by a person of ordinary skill in the art or that the differences
between the claimed invention and the prior art give rise to commercial
success. ED 45-47. As the Board stated in the original Decision at page 29,
the relative energy results for AA batteries shown in Figure 2 of the ’941
Patent indicate that the claimed ranges would provide results that are no
better than and, in some instances, inferior to results outside the claimed
ranges. Under such circumstances, it was incumbent upon Tronox to
demonstrate persuasively that the difference in results discussed in the
Mischler and the Williford Declarations would have been considered truly
unexpected by one of ordinary skill in the art. Mr. Gutwald’s mere assertion
that “the Tronox HD-EMD that includes up to a ten percent (10%) greater
discharge capacity in HD applications over EMD manufactured utilizing
prior art methods warranted a sales value in excess thirty percent (30%) over
the price of EMD manufactured using prior art methods” is insufficient to
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satisfy Tronox’s burden in this regard or otherwise demonstrate a nexus
between the novel aspects of the claimed invention and commercial success.
Harris, 409 F.3d at 1344 (“The 32-43% increase in stress-rupture life,
however, does not represent a ‘difference in kind’ that is required to show
unexpected results.”) (citing In re Huang, 100 F.3d 135, 139 (Fed. Cir.
1996)); In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Where the offered
secondary consideration actually results from something other than what is
both claimed and novel in the claim, there is no nexus to the merits of the
claimed invention.”).
For these reasons, we find that Tronox failed to show error in the new
grounds of rejections based primarily on JP ’275.

IV. & V.
Mauthoor’s teachings, as discussed in the prior Decision in Facts 21-
32 (pages 17-21), establish a prima facie case of obviousness against the
rejected claims. Specifically, Mauthoor discloses the effects of altering
various variables such as temperature, current density, and Mn/H2SO4 molar
ratio in a method for producing EMD using an electrolytic solution of
sulfuric acid and manganese. Pages 39-42. Mauthoor’s Table 3.2 is
reproduced below:
App
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/l (as oppo
and the cu
f “about 4
however,
density, an
icating th
dinary skil
s and curr
.2d 272, 2
effective
.”); In re A
Table 3.2
values sum
2, n. 3.
rried out a
fate level
ect matter
sed to the
rrent dens
.5 ampere
the effects
d electrol
at each are
l in the art
ent densiti
76 (CCPA
variable in
ller, 220 F
at five

marized
t 94.5°C, a
of 90 g/L,
of claim 5
claimed
ity is 6.0
s per
of varyin
yte
result
would
es by
1980)
a known
.2d 454,

g
Appeal 2013-007159
Reexamination Control 95/000,038
Patent 6,527,941 B2
18
456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.”).
Tronox relies on the Mischler Declaration to establish unexpected
results. PO Comments filed June 13, 2011 at 18; Mischler Decl. ¶12, Ex.
A). As correctly found by the Examiner, ED 48-50, the comparative
experiments described in Ex. A of the Mischler Declaration do not include
back-to-back runs holding all variables constant except for the novel aspects
of claim 5 relative to Mauthoor’s example. In reviewing the data presented
in the Mischler Declaration (Ex. A) said to be representative of Mauthoor
(Samples B-11P2 and B-11P3) and the claimed invention (Samples B-10P4,
B11P5, and B-12P5), we find that temperatures were not held constant
notwithstanding Mauthoor’s teachings that increasing temperature would
increase discharge capacity. Mauthoor’s Fig. 4.25 (p. 83). Therefore, it is
not possible to ascertain whether the differences between claim 5 and
Mauthoor’s example give rise to unexpected results. In re Dunn, 349 F.2d
433, 439 (CCPA 1965) (“[W]e do not feel it an unreasonable burden on
appellants to require comparative examples relied on for non-obviousness to
be truly comparative. The cause and effect sought to be proven is lost here
in the welter of unfixed variables.”).
Additionally, a person of ordinary skill in the art would have expected
lower discharge capacities at current densities higher than 3.25 A/ft2.
Mauthoor’s Fig. 4.26 (p. 83) shows that maximum discharge capacities are
observed at approximately 25 to 35 A/m2 (2.3 to 3.25 A/ft2).
For these reasons, we uphold the Examiner’s rejections.
Appeal 2013-007159
Reexamination Control 95/000,038
Patent 6,527,941 B2
19

SUMMARY
The Examiner’s determination to reject claims 5-7, 9-12, 14-19, and
21-23 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

Appeal 2013-007159
Reexamination Control 95/000,038
Patent 6,527,941 B2
20
cu

Patent Owner (Tronox LLC):

WILMERHALE/BOSTON
60 STATE STREET
BOSTON MA 02109

Third-Party Requester (Delta EMD Australia Pty., Ltd.):

ALEX R. SLUZAS
PAUL AND PAUL
2900 TWO THOUSAND MARKET STREET
PHILADELPHIA PA 19103