Ex Parte Albertus et al

Patent Trial and Appeal Board

Nov 1, 2017

13960985 (P.T.A.B. Nov. 1, 2017)

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.
1576-0738 6479
EXAMINER
CHMIELECKI, SCOTT J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
13/960,985 08/07/2013
10800 7590 11/01/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Paul Albertus
11/01/2017 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 PAUL ALBERT and JOHN F. CHRISTENSEN
Applicant: ROBERT BOSCH GMBH1
Appeal 2017-002943
Application 13/960,985
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1—192. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims an electrochemical cell and a method of forming an
electrochemical cell with an improved impedance balance. App. Br. 2—3.
Claim 1 illustrates the subject matter on appeal and is reproduced below:
1 The real party in interest is Robert Bosch GmbH. Appeal Brief filed
August 25, 2016 (“App. Br.”), 2.
2 Claim 20 stands withdrawn from consideration. Final Office Action
entered February 25, 2016 (“Final Act.”), 2.
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Application 13/960,985
1. An electrochemical cell, comprising:
a negative electrode including a form of lithium;
a positive electrode spaced apart from the negative
electrode and configured to use a form of oxygen as a reagent;
a separator positioned between the negative electrode and
the positive electrode; and
an electrolyte including a salt concentration of less than
1 molar flooding the positive electrode.
App. Br. 18 (Claims Appendix)(emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action and maintains the rejections in the Answer entered October 14, 2016
(“Ans.”):
I. Claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Visco et al. (US 2007/0117007 Al, published May 24, 2007, “Visco I”);
II. Claims 2—4, 6, 7, and 9 under 35 U.S.C. § 103(a) as
unpatentable over Visco I in view of Visco et al. (US 2003/0088971 Al,
published May 15, 2003, “Visco II”);
III. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Visco in
view of Visco II and Mazany et al. (US 2004/0213906 Al, published
October 28, 2004);
IV. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Visco in
view of Visco II and Hirose et al. (US 2009/0111019 Al, published April 30,
1009);
V. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Visco
in view of Visco II;
VI. Claims 12—14, 16, 17, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Visco I in view of Visco II and Allcock et al. (US
5,567,783, issued October 22, 1996);
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VII. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Visco
in view of Visco II, Allcock, and Mazany; and
VIII. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Visco
in view of Visco II, Allcock, and Hirose.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1—19 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
Rejection I
Appellant, in essence, argues claims 1 and 10 as a group on the basis
of claim 1. App. Br. 4—7. Although Appellant separately addresses
independent claim 10, Appellant relies on the arguments provided for claim
1, and does not present additional substantive arguments specifically
directed to the subject matter of claim 10. Id. Therefore, we select claim 1
as representative, and decide the appeal as to claims 1 and 10 based on claim
1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Visco I discloses a battery cell comprising a lithium anode, a cathode
compartment, and a protective membrane architecture positioned between
the anode and the cathode compartment. Visco I H 3, 9, 56, Fig. 1. Visco I
discloses that the cathode compartment comprises a porous cathode that
reduces oxygen during discharge (referred to as an “oxygen electrode”) and
a non-aqueous electrolyte (catholyte) in contact with the cathode. Visco I
119, 40. Visco I discloses that the pores of the oxygen electrode (cathode)
may be entirely or mostly filled with catholyte to essentially flood the
electrode. Visco 1163. Visco I discloses that in a flooded cathode
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Application 13/960,985
configuration, molecular oxygen moves through catholyte present in the
pores of an electrode to reach its catalytic surface, where it undergoes
electrochemical reduction. Id. Visco I further discloses that an oxygen
electrode may alternatively have a gas diffusion structure in which catholyte
merely wets, rather than floods, the cathode. Id. The Examiner finds that
Visco I discloses an electrolyte (catholyte) comprising 0.5 M LiN(CF3S02)2
(an electrolyte including a salt concentration of less than 1 molar). Final
Act. 3 (citing Visco 11104).
In view of these disclosures in Visco I, the Examiner finds that one of
ordinary skill in the art would have understood at the time of Appellant’s
invention that providing a flooded electrode configuration would promote
oxygen ion transport to a positive oxygen electrode, thereby facilitating
electrochemical cell operation. Final Act. 3. The Examiner further finds
that one of ordinary skill in the art, therefore, would have been led to utilize
a positive electrode flooded with electrolyte to facilitate electrochemical cell
operation. Id.
Appellant argues that the Examiner merely asserts that an electrolyte
with a salt concentration of less than 1 molar exists, and asserts that it would
have been obvious to flood an electrode. App. Br. 4. Appellant contends
that the Examiner does not allege “that the Visco I electrolyte with a salt
concentration of less than 1 molar is used in an electrode.” Id.
In response to these arguments, the Examiner finds in the Answer that
in view of Visco I’s disclosures as a whole, including Visco I’s explicit
disclosure that an oxygen electrode (cathode) may be in a flooded
configuration, and explicit disclosure of an electrolyte having a salt
concentration of 0.5 M, one of ordinary skill in the art would have been led
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Application 13/960,985
to flood an electrode with an electrolyte having a salt concentration of 0.5
M, and would have understood that doing so would produce an operational
electrochemical cell. Ans. 10 (citing Visco IH 63, 104).
Appellant argues in the Reply Brief that the disclosure in Visco I cited
by the Examiner of an electrolyte having a salt concentration of 0.5 M is an
experimental example describing a particular gas diffusion electrode not
flooded with electrolyte. Reply Br. 3. Appellant contends that “nothing in
Visco [I] teaches the use of 0.5M electrolyte in a flooded electrode.” Id.
Appellant further argues that Visco I teaches that a special electrolyte is
needed for a flooded electrode, and one of ordinary skill in the art, therefore,
“would not have found it obvious to use a 0.5M electrolyte in a flooded
electrode.” Id.
However, although Visco I does exemplify a lithium/oxygen battery
cell having a gas diffusion cathode (non-flooded cathode) in which catholyte
having a salt concentration of 0.5 M was utilized, as discussed above, Visco
I also discloses that an oxygen electrode (or cathode) may alternatively be
flooded with catholyte. Visco 1163. Visco I discloses that a flooded
cathode configuration “is particularly useful for battery cells whereby
molecular oxygen is stored in the catholyte, or the battery cell is to be used
in a low power application.” Id. Visco I further discloses that “[i]n
embodiments with a flooded configuration, the catholyte should be
optimized for transport and concentration of oxygen.” Id. In view of these
disclosures, one of ordinary skill in the art seeking to produce a battery cell
in which molecular oxygen is stored in the catholyte, or seeking to produce a
battery cell for low power applications, would have been led to utilize a
flooded cathode configuration, and would also have been led to optimize the
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catholyte used to flood the cathode for transport and concentration of
oxygen.
We find no indication in the evidence relied upon in this appeal that
one of ordinary skill in the art would have understood that a catholyte
optimized for transport and concentration of oxygen in a flooded cathode
would have a salt concentration significantly different from a catholyte used
in a gas diffusion electrode. Nor does the evidence relied upon in this appeal
demonstrate that, even if one of ordinary skill in the art would have utilized
a different salt concentration in a catholyte for a flooded electrode than in a
catholyte for a gas diffusion electrode, the salt concentration in a catholyte
for a flooded electrode would have been more than two-fold greater than that
exemplified in Visco I for a gas diffusion electrode (greater than 1 M).
Accordingly, the preponderance of the evidence relied upon in this appeal
supports the Examiner’s finding that, in view of Visco I’s disclosures as a
whole, one ordinary skill in the art would have used a salt concentration as
claimed in a flooded electrolyte. Moreover, one of ordinary skill in the art
would have reasonably expected at the time of Appellant’s invention that a
cathode flooded with an electrolyte having a salt concentration of 0.5 M
would successfully produce an operational electrochemical cell. In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require
absolute predictability of success ... all that is required is a reasonable
expectation of success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988))
Appellant further argues that one of ordinary skill in the art would
have avoided using the electrolytes disclosed in Visco I in a flooded
electrode because the “electrolytes taught by Visco I for use in wetted
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configurations are not optimized for transport and concentration of oxygen,”
and would therefore inhibit operation of an electrochemical cell having a
flooded electrode. App. Br. 6.
However, as discussed above, Visco I’s disclosures would have led
one of ordinary skill in the art to optimize the catholytes disclosed in Visco I
for transport and concentration of oxygen in a flooded cathode. Appellant’s
arguments do not direct us to any evidence demonstrating that such an
optimized catholyte would inhibit operation of an electrochemical cell
having a flooded electrode. App. Br. 3—7. Appellant’s argument are,
therefore, unpersuasive of reversible error in the Examiner’s rejection.
Appellant further argues that Visco I does not disclose how
optimization for transport and concentration of oxygen could be
accomplished. Reply Br. 3^4. Appellant contends that the Examiner fails to
explain “why such optimization would necessarily include maintaining the
electrolyte at less than 1 molar.” Reply Br. 4.
However, as discussed above, due to the absence of any evidence to
the contrary, the weight of the evidence relied upon in this appeal supports
the Examiner’s position that one of ordinary skill in the art reasonably would
have expected that, in view of Visco I’s disclosures as a whole, a cathode
could be flooded with a catholyte having a salt concentration of 0.5 M to
successfully produce an operational electrochemical cell. Therefore, the
preponderance of the evidence relied upon in this appeal further supports the
Examiner’s position that optimization of a catholyte for transport and
concentration of oxygen would not involve changing the salt concentration
of the catholyte beyond that exemplified in Visco I for a gas diffusion
cathode catholyte (0.5 M) to a concentration of greater than 1 M.
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Application 13/960,985
Because the preponderance of the evidence relied upon in this appeal
supports the Examiner’s conclusion of obviousness, we sustain the
Examiner’s rejection of claims 1 and 10 under 35 U.S.C. § 103(a).
Rejection II
Appellant argues claims 2-4, 6, 7, and 9 as a group on the basis of
claim 2, to which we limit our discussion. App. Br. 8—10. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 2 depends from claim 1 and recites that the positive electrode
has a thickness of greater than about 60 pm. The Examiner finds that
although Visco I is silent as to the thickness of the cathode disclosed in the
reference, Visco II discloses an electrochemical cell comprising a positive
electrode having a thickness most preferably no greater than 100 pm. Final
Act. 4. The Examiner cites Gardner v. TEC Systems, Inc., 725 F.2d 1338
(Fed. Cir. 1984) for the proposition that “a claimed device is not patentably
distinct from a prior art device when it would not perform differently than
the prior art device and the only difference is the claimed relative
dimensions.” Final Act. 4—5. The Examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of Appellant’s
invention to have made a positive electrode having a thickness of 60 pm or
greater.3 Final Act. 5.
Appellant argues that paragraph 18 of Appellant’s Specification
demonstrates that the electrode recited in claim 2 would function differently
from prior art electrodes because this paragraph “teaches that prior art
3 Although the Examiner provides a further rationale for the rejection of
claim 2 based on disclosures in paragraph 47 of Visco II, we do not base our
Decision on this further rationale. Final Act. 4—5.
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Application 13/960,985
flooded electrodes (which the Examiner has not identified in any of the cited
references) would suffer from uneven plating if the width of the electrode
was greater than about 60 pm.” App. Br. 10. Appellant further argues that
paragraph 16 of Appellant’s Specification states that “mass-transport effects
can limit the thickness of the various regions within the cell, including the
positive electrode.” Reply Br. 5. Appellant asserts that paragraphs 49-51
and 55—58 of Appellant’s Specification show that forming an
electrochemical cell as required by claim 2 to have a width greater than
about 60 pm results in even plating in a flooded electrode. App. Br. 10.
Appellant argues that the electrode recited in claim 2, therefore, “is
patentably distinct from known flooded electrodes with a thickness of
greater than about 60 pm.” Id.
However, it is well-established that even a slight overlap between a
claimed range and a range disclosed in the prior art renders the claimed
range prima facie obvious. 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.”). Accordingly, Visco II’s disclosure of a
positive electrode having a thickness of preferably no greater than about 300
pm, more preferably no greater than about 150 pm, and most preferably no
greater than about 100 pm, in view of Visco I’s further disclosures discussed
above, renders the positive electrode recited in claim 2 having a thickness of
greater than 60 pm prima facie obvious. Visco II1 83.
It is also well-established that in such situations of overlap between a
claimed range and a range disclosed in the prior art, to overcome the prima
facie case of obviousness, an Appellant must establish the criticality of the
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claimed range, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. These cases have consistently held that in
such a situation, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.”)
The cited portions of Appellant’s Specification do not demonstrate the
criticality of the positive electrode thickness recited in claim 2. App. Br. 10;
Reply Br. 5. Specifically, although paragraph 18 of Appellant’s
Specification explains that uneven plating occurs in prior art electrochemical
cells, this paragraph makes no mention of the thickness of the prior art
electrochemical cells, and thus does not establish that uneven plating in prior
art electrochemical cells is caused by the thickness of the positive electrode.
In addition, although paragraph 16 of Appellant’s Specification indicates
that mass-transport effects can limit the thickness of the various regions
within the cell, including the positive electrode, this paragraph does not
describe any difference in function or effect between prior art cathodes and a
cathode having a thickness as recited in claim 2. Moreover, although
paragraphs 49-51 and 55—58 of Appellant’s Specification indicate that
discharged products formed in the electrochemical cell of Appellant’s
invention uniformly form throughout the positive electrode, these paragraphs
indicate that a reduced salt concentration in the electrolyte utilized in the
positive electrode elicits this effect, and these paragraphs make no mention
of the thickness of the positive electrode.
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Application 13/960,985
Therefore, because Appellant’s arguments and the relied-upon
portions of Appellant’s Specification do not establish the criticality of the
positive electrode thickness recited in claim 2, we sustain the Examiner’s
rejection of claims 2—4, 6, 7, and 9 under 35 U.S.C. § 103(a).
Rejection VI
Appellant argues claims 12—14, 16, 17, and 19 as a group on the basis
of claim 12, to which we limit our discussion. App. Br. 13—15. 37 C.F.R.
§41.37(c)(l)(iv).
Claim 12 depends indirectly from independent method claim 10 and
recites determining a desired ionic impedance, and selecting a salt
concentration based on the desired ionic impedance.
The Examiner finds that Visco I lacks disclosure of this subject
matter, and relies on Allcock’s disclosure that ionic impedance is an
indicator of ionic conductivity, and salt loading directly affects ionic
conductivity. Final Act. 7—8. In view of these disclosures, the Examiner
finds that one of ordinary skill in the art would have realized that selecting
an appropriate salt concentration would result in a favorable ionic
conductivity, and in turn a favorable ionic impedance, thereby improving the
operation of an electrochemical device. Final Act. 8. The Examiner finds
that one of ordinary skill in the art, therefore, would have been led to select a
salt concentration based on a desired ionic impedance to facilitate improved
electrochemical device operation. Id.
Appellant argues that “Allcock teaches that ionic conductivity is to be
maximized,” and Appellant asserts that Appellant’s Specification
demonstrates that a salt concentration of less than 1 M results in less than the
maximum ionic conductivity. App. Br. 14 (citing Spec. 1 50, Fig. 9).
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Appellant argues that “the Examiner has failed to explain why one of
ordinary skill in the art would ignore the teaching of Allcock and provide a
conductivity which is less than the maximum achievable.” App. Br. 15.
Appellant further argues that the “Examiner has failed to identify any
teaching in the prior art of purposefully selecting a less than maximum
conductivity in order to provide ‘improved’ operation of a cell.” App. Br.
14—15.
However, Allcock describes determining the ionic conductivity of a
solid solvent polymer complexed with LiSCFCF^ salt in varying ratios of
polymer to salt. Allcock col. 1,11. 14—17; col. 13,11. 30-33. Allcock
discloses that “the ionic conductivity [was] measured by impedance analysis
to determine the optimum loading of salt.” Allcock col. 13,11. 32—33.
Allcock further discloses that the optimum polymer to salt ratio was
considered to be the ratio that yielded the maximum conductivity. Allcock
col. 13,11. 34—36, 48—50.
Appellant’s arguments focus only on this latter disclosure in Allcock
of an optimum polymer to salt ratio that yielded maximum conductivity, and
ignore the broader disclosure of Allcock—relied on by the Examiner—that
salt concentration affects impedance and ionic conductivity. In view of this
broader disclosure, one of ordinary skill in the art would have understood
that a desired impedance (or ionic conductivity) could be achieved by
selecting an appropriate salt concentration, as recited in claim 12, regardless
of whether the desired impedance corresponds to the maximum
conductivity. Thus, one of ordinary skill in the art would not have been
limited by the particular desired result in Allcock, and therefore would not
have been limited to selecting a salt concentration of about 1.3 M.
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Therefore, Appellant’s arguments are unpersuasive of reversible error
in the Examiner’s rejection of claim 12, and we accordingly sustain the
Examiner’s rejection of claims 12—14, 16, 17, and 19 under 35 U.S.C. §
103(a).
Rejections III-V. VII. and VIII
To address rejections III and IV, Appellant argues that the claims
subject to these grounds of rejection are patentable over the prior art for the
same reasons presented for claim 2. App. Br. 11—12. Similarly, to address
rejection V, Appellant argues that the claims subject to these grounds of
rejection are patentable over the prior art for the same reasons presented for
claims 2 and 10. App. Br. 12—13. And to address rejections VII and VIII,
Appellant argues that the claims subject to these grounds of rejection are
patentable over the prior art for the same reasons presented for claim 12.
App. Br. 16. Because we are unpersuaded of reversible error in the
Examiner’s rejections of claims 2, 10, and 12 for the reasons discussed
above, Appellant’s position as to these rejections is also without merit. We
accordingly sustain the Examiner’s rejections of claims 5, 8, 11, 15, and 18
under 35 U.S.C. § 103(a).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s rejections of claims 1—19 under
35 U.S.C. § 103(a).
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)(iv).
AFFIRMED
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