Ex Parte Adamson et al

Patent Trial and Appeal Board

Aug 29, 2018

13823286 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/823,286 06/21/2013
83332 7590 09/04/2018
Jonathan P. O"Brien, Ph.D.
Honigman Miller Schwartz and Cohn LLP
650 Trade Centre Way
Suite 200
KALAMAZOO, MI 49002-0402
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
George W. Adamson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
223310-335344 3619
EXAMINER
EGGERDING, ALIX ECHELMEYER
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
09/04/2018 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
Ex parte GEORGE W. ADAMSON, DAVID JOHN SCANLAN,
SAM BISHOP, HONGXIA ZHOU, XIMEI SUN,
BIYING HUANG, and LIANG LIANG
Appeal2017-010398
Application 13/823,286
Technology Center 1700
Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision rejecting claims 90, 91, 93, 96-100, 102, and 104--107.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision refers to the Specification (Spec.) filed March 14, 2013, the
Examiner's Non-Final Office Action (Non-Final) dated September 2, 2016,
Appellants' Appeal Brief (Appeal Br.) filed December 1, 2016, the
Examiner's Answer (Ans.) dated June 1, 2017, and Appellants' Reply Brief
(Reply Br.) filed July 31, 201 7.
2 Appellants identify ZPower, LLC as the real party in interest (Appeal Br.
3).
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STATEMENT OF THE CASE
The invention relates to electric storage batteries and separators for
alkaline batteries (Spec. ,r 2). Appellants disclose a separator for use in a
silver-zinc rechargeable battery comprising a polymer material and a
zirconium oxide3 filler that is substantially free of titanium (id. ,r,r 11-12).
Claim 90, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
90. A separator for use in a silver-zinc rechargeable battery
compnsmg:
a polyolefin polymer material having a mean molecular weight
of at least about 500,000 amu; and
a filler comprising zirconium oxide material, wherein the
zirconium oxide material comprises from about 2 mo!% to about 8
mo!% of yttrium oxide, and the filler is substantially free of titanium.
Independent claim 99 recites a silver-zinc rechargeable battery
employing a separator as recited in claim 90.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1. Claims 90, 93, 96-99, 102, 4 and 104--107 as unpatentable over
3 The terms zirconia and zirconium oxide are used interchangeably
throughout the record.
4 Although claim 102 is not listed in the Examiner's statement of this
rejection in the Answer, this claim is specifically discussed in the body of
this rejection (Ans. 2, 3). Further, Appellants state the assumption that claim
102, though not listed in the statement, is nonetheless rejected under this
ground (Appeal Br. 6). It is, therefore, apparent that the Examiner's
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Huang5 in view of Samii 6 and Zappi; 7 and
2. Claims 91 and 100 as unpatentable over Huang in view of
Samii and Zappi, and further in view of Hennige. 8
ANALYSIS
After review of the opposing positions articulated by Appellants and
the Examiner and the evidence of obviousness adduced by the Examiner in
light of the countervailing Specification and Declaration evidence proffered
by Appellants, we determine that Appellants' arguments and evidence are
insufficient to outweigh the evidence of obviousness marshalled by the
Examiner. Thus, Appellants have not identified reversible error in the
Examiner's obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011). Accordingly, we affirm the stated obviousness rejections for
substantially the fact findings and the reasons set forth by the Examiner in
the Examiner's Answer. We offer the following for emphasis only.
Appellants separately argue the claims according to the following
groups: Group I, claims 90, 93, 96, 98, 99, 102, 104, 9 105, and 107; Group
II, claims 91 and 100; and Group III, claims 97 and 106 (Appeal Br. 12-26).
For Group I, we select claim 90 as representative; for Group II, we select
omission of claim 102 from the statement of rejection is inadvertent. We
have corrected the statement of rejection accordingly.
5 Huang et al., US 2011/0123859 Al, published May 26, 2011 ("Huang").
6 Samii et al., US 6,372,379 Bl, issued April 16, 2002 ("Samii").
7 Zappi et al., US 2008/0145746 Al, published June 19, 2008 ("Zappi").
8 Hennige et al., US 2006/0003230 Al, published January 5, 2006
("Hennige").
9 Claim 104 is omitted from all of Appellants' identified groups.
Accordingly, we have placed claim 104 in this group as this claim depends
from independent claim 99.
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claim 91 as representative; and for Group III, we select claim 97 as
representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Group I: claim 90
The Examiner finds Huang discloses a separator for a silver-zinc
rechargeable battery comprising a polyolefin material and yttria-stabilized
zirconia (YSZ) filler (Ans. 2). Because Huang does not teach the use of
titanium in the separator, the Examiner finds that Huang's separator is
substantially free of titanium (id.). The Examiner acknowledges that Huang
is silent regarding the molecular weight of the polyolefin material as well as
the amount of yttria doping of the zirconia filler (id. at 3).
With regard to the molecular weight of the polyolefin material, the
Examiner finds Samii teaches a separator for a silver-zinc battery
comprising a polyolefin material having a molecular weight of at least
3,000,000 (Ans. 3). Because Huang and Samii are both directed to
polyolefin separators for silver-zinc batteries, the Examiner concludes it
would have been obvious to have substituted a polyolefin material having a
molecular weight of at least 3,000,000 in Huang with a predictable result
(id.).
With regard to the amount of yttria doping of the zirconia filler, the
Examiner finds Zappi teaches yttria-doped zirconia filler for batteries having
a doping level of 3--4 wt% (Ans. 3). The Examiner concludes it would have
been obvious to provide Huang's yttria-doped zirconia filler with a 3--4 wt%
doping level given Huang's silence as to the doping level (id.).
Appellants argue that not only does Huang actually describe titanium
in its battery separator, "any purported silence in Huang with respect to a
technical feature does not necessarily mean that Huang also inherently
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describes such missing feature" (Appeal Br. 13). With regard to the first
point, Appellants contend that Huang specifically states that titanium is
included in the polymers forming the separator (id.). As to the second point,
Appellants contend that the mere mention of zirconium oxide, without more,
does not necessarily suggest a separator that is also substantially free of
titanium (id.). According to Appellants, "[ m Jere silence as to a technical
feature, without more, is not a basis-in-fact or technical reasoning as to the
missing claim element being necessarily present" (id. at 14). Appellants cite
several decisions in support of the proposition that what may be possible or
simply unknown within a given set of circumstances is not necessarily
sufficient evidence to support an inherency-based obviousness rejection (id.)
Appellants further urge that those skilled in the battery arts "well appreciate
that even highly pure forms of zirconium oxide typically include the
presence of titanium impurities" (id., citing MPEP § 1204.04 and Swider; 10
see also Reply Br. 6-7 and Martinez-Lebrusant 11).
These arguments are not persuasive of reversible error. Initially, we
note that claim 90 requires that the zirconia filler, not the separator itself, be
substantially free of titanium ( claim 90, "the filler is substantially free of
titanium"). The Specification fails to define "substantially free of titanium,"
but indicates that an example of an amount that would fall within this
1° Karen E. Swider and Wayne L. Worrell, Electron Paramagnetic
Resonance of Titanium Impurities in Reduced Yttria-Stabilized Zirconia, 78
J. AM. CERAM. Soc. 961---64 (1995).
11 Charo Martinez-Lebrusant and Flora Barba, Chemical Analysis of
Impurities in Zirconia and Aluminum Nitride Ceramics by Inductively
Coupled Plasma Atomic Emission Spectometry, ANALYST, Vol. 15, 1335-8
(Oct. 1990).
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limitation is zirconia that "comprises less than about 200 ppm ( e.g., less than
about 180 ppm or less than about 150 ppm)" (Spec. ,r 109). Nonetheless,
Huang teaches that the separator may include a polyether material that is
coextruded with a dendrite resistant material, wherein the dendrite resistant
material may comprise a polyvinyl alcohol (PV A) polymer, and further
wherein the PV A polymer may include a cross-linking agent, and still
further wherein the cross-linking agent may be a salt of titanium (Huang ,r,r
103-105, 117). Thus, Huang does not require the presence of titanium even
in the separator; its presence is optional as clearly not all embodiments
require its presence.
With regard to Huang's silence regarding a technical feature, we note
that the missing technical feature for which Huang is silent is embodied in a
negative limitation, i.e., the filler is substantially free of titanium. Huang
teaches that the filler is zirconium oxide and expressly states that "zirconium
oxide" encompasses any oxide of zirconium including YSZ (Huang ,r 109).
Appellants fail to direct our attention to any teaching of Huang that the filler
includes or incorporates titanium; thus, Huang is silent with regard to
titanium being present in the filler.
We are cognizant of the principle that, to support an anticipation or
obviousness rejection when a reference is silent about a limitation positively
recited in a claim, the Examiner must establish that the missing limitation is
necessarily present in the thing described in the reference. In re Oelrich,
666 F .2d 578, 581 (CCP A 1981) ("Inherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient."). However, when, as
here, a reference is silent regarding the presence of a component excluded
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from a composition via a negative limitation, it is reasonable to interpret the
reference's silence as to the excluded component as teaching that the
reference does not include the component absent persuasive technical
reasoning or evidentiary showing otherwise. Therefore, given Huang's
silence as to the presence of titanium in the YSZ filler which Appellants'
claims substantially exclude via negative limitation, it is reasonable to shift
the burden to Appellants to establish that Huang's filler, though silent with
regard to the presence of titanium, is nonetheless not necessarily
substantially free of titanium. "[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not." In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990). That burden is not met by establishing that
the material excluded by the claim may be present in the prior art product, if
desired. In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012).
We, thus, tum to Appellants' citation of Swider and Martinez-
Lebrusant which Appellants rely on to establish that Huang's YSZ
necessarily includes titanium. Appellants cite Swider for the first time in the
Appeal Brief and Martinez-Lebrusant for the first time in the Reply Brief
(Appeal Br. 14; Reply Br. 6). Appellants, apparently recognizing the late
submission of Swider and Martinez-Lebursant, cite to MPEP § 1204.04 for
support of the submission of dictionaries and treatises at any time during
appeal (Appeal Br. 14 n.3; Reply Br. 6). In this regard, Appellants contend
that Swider and Martinez-Lebrusant are treatises and, therefore, their
submission for the first time on appeal is permitted (Appeal Br. 14 n.3;
Reply Br. 6).
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Under 37 C.F.R. § 4I.33(d)(2), evidence filed after the date of filing
an appeal will not be admitted except as permitted by§§ 4I.39(b)(l) (the
Examiner's Answer includes a new ground of rejection), 4I.50(a)(2)(i)
(prosecution is reopened following a remand to the Examiner), and
4I.50(b)(l) (prosecution is reopened following a new ground of rejection by
the Board). 37 C.F.R. § 41.30 defines evidence as something that tends to
prove or disprove the existence of an alleged fact, but dictionaries are not
evidence and may be cited before the Board. We note that because neither
Swider nor Martinez-Lebrusant are dictionaries, neither falls within the
literal regulatory exception as a dictionary. Indeed, Appellants submit both
references with the expressed purpose to prove or disprove the existence of
an alleged fact; in this case, to prove that Huang, though silent as to the
presence of titanium in the YSZ, nonetheless necessarily includes titanium.
MPEP § 1204.04 cites to several decisions which further discuss the
materials that may be consulted by tribunals at any time, including Nix v.
Hedden, 149 U.S. 304 (1893), Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
Cir. 2005) (en bane), and In re Boon, 439 F.2d 724 (CCPA 1971).
In Nix, the question before the Supreme Court was whether tomatoes
were to be classified as vegetables or as fruit. Nix, 149 U.S. at 306. The
Court noted that because there was no evidence that either term had acquired
any special meaning in trade or commerce, they were construed by their
ordinary meaning. Id. The Court stated that, for that meaning, they were
bound to take judicial notice and may admit dictionaries, not as evidence,
but only as aids to memory and understanding. 149 U.S. at 307.
In Phillips, the Federal Circuit held that courts may, when engaged in
claim construction, rely on extrinsic evidence including "dictionaries and
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learned treatises." Phillips, 415 F .3 d at 131 7. The Phillips court further
includes encyclopedias as possible extrinsic sources for reliance in
construing claim language, but did not further define what constituted a
treatise. 415 F.3d at 1319-1320.
Likewise, the Boon court held that the Board's citation of a dictionary
reference in support of a rejection is not tantamount to the assertion of a new
ground of rejection, where such a reference is a standard work, cited only to
support a fact judicially noticed, and the fact so noticed plays a minor role.
Boon, 439 F.2d at 727. That minor role, the Boon court states, is to serve
only to fill in the gaps which exist in the evidentiary showing made by the
Examiner to support a particular ground of rejection. 439 F.2d at 728.
It is clear that courts, and by extension the Board, may, in their
discretion, cite to and rely on dictionaries, learned treatises, encyclopedias,
and other references that are "standard" works, relied on generally to support
a claim construction or to support a fact judicially noticed that plays a minor
role in the rejection in question. The regulatory principle at play here
ensures that the record is fully developed prior to appeal, while permitting
the Board and courts the flexibility needed to perform the essential legal
determination of claim construction and to permit judicial notice of minor
facts well known to those skilled in the art.
Here, Appellants' submission of Swider and Martinez-Lebrusant is
neither to support the Board in claim construction nor to permit the Board to
take judicial notice of a minor fact well known to those skilled in the art. In
addition, Appellants have not demonstrated that either reference is a learned
treatise or a "standard" work in the art. Therefore, we hold that Appellants'
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submission of Swider and Martinez-Lebrusant is untimely and we will not
further consider these references. 12
Appellants next argue that the Examiner has failed to provide any
reason for modifying Huang based on Samii and Zappi (Appeal Br. 15). In
particular, Appellants contend that "[ m ]erely because Huang and Samii are
'concerned with separators for silver-zinc batteries' is not a technical reason
to modify Huang" (id.). Appellants assert that justifying the combination of
Huang and Samii on this basis is hindsight and improper (id. at 15-16).
Appellants emphasize that Samii relates to separators that include titanium
and urge that the Examiner fails to explain why the ordinary artisan seeking
a separator that is substantially free of titanium would modify Huang based
on Samii (id. at 16).
These arguments are also not persuasive of reversible error. Initially,
we note that the reason for combining Huang and Samii need not be the
same as Appellants' purpose. It is well settled that it is not required for a
12 Notwithstanding their untimely submission, we note that Appellants fail to
direct our attention to any teaching in Swider or Martinez-Lebrusant that
definitely sets forth that all YSZ fillers contain or likely contain substantial
amounts of titanium, especially since Appellants have not defined
"substantially free of titanium" to expressly exclude any specific amount.
Appellants merely urge that Swider notes that titanium is a predominant
defect in zirconia, without indicating what amounts this covers. However,
we note that Swider discloses YSZ of varying titanium concentrations from
140-587 ppm (see Swider 962(3)). It is not clear that any of these levels are
clearly outside the requirement that the YSZ is substantially free of titanium.
As to Martinez-Lebrusant, Appellants merely urge that this reference
teaches that YSZ "can have 0.075% titanium impurities" or about 750 ppm
Ti (Reply Br. 6-7). Again, it is not clear that this amount would fail to cover
the limitation that the YSZ is substantially free of titanium.
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finding of obviousness that the motivation or purpose of the skilled artisan
be the same as an applicant's for practicing a claimed invention. KSR
Inter'] Co. v. Teleflex Inc., 550 U.S. 398,419 (2007) ("In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103."); see also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990), cert. denied, 500
U.S. 904 (1991).
Here, the Examiner finds that although Huang teaches a polyolefin
material for the separator, Huang is silent as to its molecular weight (Ans.
3). Clearly, the ordinary artisan seeking to practice Huang's separator would
have looked to other teachings in the same art to determine suitable
molecular weights for the polyolefin material. Samii evidences that a
polyolefin material having a molecular weight of 3,000,000 is suitable for
use in silver-zinc battery separators. Appellants provide no technical
reasoning or evidentiary showing in support of their apparent belief that
Samii's teaching of a suitable polyolefin material for a silver-zinc battery
separator is limited to use with titanium dioxide fillers. An express teaching
need not be present in the art to support the substitution of one element for
another element used for the same purpose. In re Fout, 675 F.2d 297, 301
(CCP A 1982). Further, the substitution of one known element for another is
obvious when the combination yields no more than a predictable result, as
here, i.e., using the Samii's polyolefin material having a molecular weight of
3,000,000 in place of Huang's polyolefin material for use in a silver-zinc
battery separator. KSR, 550 U.S. at 416.
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With regard to Zappi, Appellants argue "silence in the primary
reference is not a technical reason on why Huang would have been modified
by Zappi" (Appeal Br. 17). Appellants assert that justifying the combination
of Huang and Zappi on this basis is hindsight reconstruction with the claims
used as a roadmap to seek out Zappi (id.). Appellants contend that Dr.
Ortega's Declaration13 explaining that molten salt cell batteries, such as
Zappi, have nothing to do with silver-zinc batteries, such as Huang, is
unrefuted (id.). In this regard, Appellants urge that Dr. Ortega explains that
the components of these two battery types cannot be interchanged with a
reasonable expectation that the interchanged component would continue to
perform its intended function, much less result in a desirable or functional
battery (id.). Specifically, Appellants contend that filler materials suited for
use in silver-zinc batteries would not predictably be useful as filler materials
in molten salt batteries and vice versa, and the ordinary artisan would not
look to substitute the filler of Huang with the filler of Zappi (id. at 18).
These arguments are also not persuasive of reversible error. Here, the
Examiner finds that although Huang teaches YSZ filler for the separator,
Huang is silent as to the level of doping (Ans. 3). Clearly, the ordinary
artisan seeking to practice Huang's separator would have looked to other
teachings in the same or related arts to determine suitable yttria doping
levels for the YSZ filler. Zappi evidences that YSZ filler may have a doping
level within the range recited in claim 90 and is suitable for use in battery
separators. Appellants provide no technical reasoning or evidentiary
13 Declaration of Jeffrey V. Ortega under 37 C.F.R. 1.132, filed June 8, 2016
(Deel.).
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showing that the amount of yttria doping recited in claim 90 is critical or
produces unexpected results. Moreover, we note that Huang suggests
sourcing YSZ filler from Hi Charms, the same source of YSZ as Appellants
(compare Huang ,r 153 with Spec. ,r,r 108, 127, 149, 172).
With regard to Dr. Ortega's Declaration, we note that Dr. Ortega's
statements are directed to Langer, 14 not Huang, though Appellants contend
these statements apply equally to Huang. However, Huang is a closer
teaching to the claimed invention than Langer in that Huang teaches both the
polyolefin material and the YSZ filler. Nonetheless, accepting arguendo that
Dr. Ortega's statements apply equally to Huang, we note that these
statements presume that Zappi's filler is substituted for Huang's. However,
the Examiner's rejection does not require substitution, but merely provides a
teaching that YSZ fillers having levels of doping within the range recited in
claim 90 were well known to those of ordinary skill in the art. Moreover,
even assuming that the rejection proposes substitution of Zappi's filler with
Huang's filler, we note that both are YSZ fillers.
In addition, though Dr. Ortega states that, if Zappi' s YSZ were
substituted for that of Langer, and presumably Huang, one of ordinary skill
in the art could not reasonably expect a desirable result (Deel. ,r 14).
However, given that the only difference between the YSZ filler of Zappi and
that of Huang is that Zappi teaches the doping level of which Huang is
silent, Dr. Ortega's statement is not well founded. Indeed, rather than
focusing on the similarities between the YSZ filler of each reference and this
sole difference, Dr. Ortega focuses on the context in which these materials
14 Langer et al., US 3,953,241, issued April 27, 1976 ("Langer").
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are used without explaining why and how the doping level in both battery
types would have been expected to be different. DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009)
("[T]he 'predictable result' discussed in [KSR] refers not only to the
expectation that prior art elements are capable of being physically combined,
but also that the combination would have worked for its intended purpose.").
Absent such an explanation, Dr. Ortega's statements regarding the
Examiner's proposed modification of Huang's YSZ filler in view of Zappi's
teaching of known doping levels for YSZ fillers are of little probative value.
Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (Board has discretion
to give more weight to one item of evidence over another "unless no
reasonable trier of fact could have done so"); In re Am. A cad. of Sci. Tech
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations."); Velander
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.").
Finally, Appellants argue that the Examiner fails to refute teaching
away evidence because Dr. Ortega's Declaration explains that Appellants
discovered a surprising and unexpected solution (Appeal Br. 19).
Appellants direct our attention to Specification Examples 13 and 14 as
demonstrating that the presence of titanium generates substantial gas
evolution (gassing) as compared to zirconia doped with yttria when exposed
to silver oxide cathode material and potassium hydroxide (KOH) found
inside a silver-zinc battery (id. at 19-20). Appellants assert that Dr. Ortega
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explains that such gassing results are unexpected (id. at 20). Further,
Appellants urge that no additional data is necessary or required to
demonstrate that the results are truly unexpected (id. at 21 ).
Appellants' arguments and evidence are not persuasive of either a
teaching away or unexpected results. "A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Further, references in a
combination may be said to teach away where their combined teachings
would produce a "seemingly inoperative device". See In re Sponnoble, 405
F.2d 578,587 (CCPA 1969). Teaching an alternative or equivalent method,
however, does not teach away from the use of a claimed method. See In re
Dunn, 349 F.2d 433,438 (CCPA 1965). Appellants fail to direct our
attention to any teaching in the prior art that supports their teaching away
argument.
With regard to Appellants' assertion of unexpected results, we agree
with the Examiner that neither Specification Examples 13 and 14 nor Dr.
Ortega's Declaration supports a finding of unexpected results with regard to
the claimed invention (see Ans. 8-9). The burden of establishing that
unexpected results support a conclusion of nonobviousness rests with the
Appellants. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). "[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art." In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Additionally,
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the relied-upon results must be reasonably commensurate in scope with the
claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003).
Here, the Examiner correctly finds that Appellants' comparative
examples use fillers made entirely of titanium or titanium dioxide (id. at 8).
There is no data indicating what the gassing levels would be for YSZ fillers
containing smaller amounts of titanium that fall within and just outside the
scope of "substantially free of titanium" (id. at 9). In other words, there is
no evidence establishing that YSZ filler that is substantially free of titanium
would perform unexpectedly better than YSZ filler containing small
amounts of titanium (i.e., titanium amounts somewhat greater than
substantially free). We note that Appellants fail to disclose the titanium
level for the only zirconia example possessing yttria, Y3Z. As such,
Appellants' evidence does not compare to the closest prior art teaching of
Huang, even assuming Huang's YSZ filler is not substantially free of
titanium. Thus, Appellants' data is neither reasonably commensurate in
scope with the claims nor a comparison to the closest prior art, i.e., Huang.
Accordingly, we sustain the Examiner's obviousness rejection of
claims 90, 93, 96, 98, 99, 102, 104, 105, and 107.
Group II: Claim 91
Claim 91 depends from claim 90 and further requires that the
zirconium oxide material comprises a powder having a surface area of at
least about 5 m2/g.
The Examiner acknowledges that Huang fails to teach the surface area
of the YSZ filler powder (Ans. 4). However, the Examiner finds Hennige
teaches the use of filler materials in a separator, wherein the surface area of
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the filler is desirably greater than 5 m2/g since the properties of the separator
are influenced by the filler surface area (id.). The Examiner concludes that it
would have been obvious to have provided Huang's YSZ filler with a
surface area greater than 5 m2/g in view of Hennige's teaching (id. at 5).
Appellants argue that the Examiner fails to explain why Hennige's
teaching regarding the surface area of lithium compounds has anything to do
with the surface area of Huang's filler (Appeal Br. 24). According to
Appellants, the surface area of lithium compounds in rechargeable lithium
batteries, i.e., Hennige, has little to do with the surface area of zirconia
fillers (id.).
Appellants' argument fails to persuade us of reversible error. The
Examiner finds that while Hennige' s materials are different than those of
Huang, Hennige's teaching that the filler's surface area influences the
separator's properties and suggests surface areas greater than 5 m2/g
nonetheless still apply. Appellants fail to explain why the ordinary artisan
would not recognize that Hennige's teaching would find similar footing in
Huang given that Hennige' s teaching regards a parameter common to
separator fillers for both lithium and silver-zinc batteries.
Accordingly, we sustain the Examiner's obviousness rejection of
claims 91 and 100.
Group III: Claim 97
Claim 97 depends from claim 90 and further requires about 80 wt% or
more of filler and about 20 wt% or less of polyolefin material.
The Examiner acknowledges that Huang is silent regarding the
amount of filler and polymer by weight in the separator (Ans. 4). The
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Application 13/823,286
Examiner finds Samii teaches that the separator may comprise 95 wt% filler
and 5 wt% polymer (id.). The Examiner concludes it would have been
obvious to have formed Huang's separator using 95 wt% filler and 5 wt%
polymer since both are concerned with separators for silver-zinc batteries
and the result would have been predictable (id.).
Similar to their arguments with regard to claim 90, Appellants argue
that the Examiner fails to explain why the ordinary artisan would look to
Samii when seeking to derive a filler that is substantially free of titanium
(Appeal Br. 25). Appellants contend that Samii's teaching of amounts of
titanium fillers and polymers does not necessarily apply to polymers and
zirconia fillers that are substantially free of titanium (id.).
This argument is not persuasive of reversible error. As we indicated
above, the ordinary artisan seeking to practice Huang's separator would have
looked to other teachings in the same art to determine suitable amounts of
polymer and filler for the separator. Samii evidences that a separator for use
in a silver-zinc battery may be formulated using 95 wt% filler and 5 wt%
polymer. As above, Appellants provide no technical reasoning or
evidentiary showing in support of their apparent belief that Samii' s teaching
of suitable amounts of filler and polymer for a silver-zinc battery separator is
limited to the use of titanium dioxide fillers only.
Accordingly, we sustain the Examiner's obviousness rejection of
claims 97 and 106.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 90,
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Appeal2017-010398
Application 13/823,286
91, 93, 96-100, 102, and 104--107 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Huang, Samii, and Zappi, alone or further in view
of Hennige, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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