Ex Parte Anderson et al

Patent Trial and Appeal Board

Apr 19, 2016

13149276 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/149,276 05/31/2011
89145 7590 04/21/2016
Armstrong Teasdale LLP (W ARF-28243)
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Marc A. Anderson
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.
Pl00192US01 1130
EXAMINER
ZHANG, HAIXIA
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
04/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC A. ANDERSON and KEVIN C. LEONARD
Appeal2014-009148
Application 13/149,276
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 through 20. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
The subject matter on appeal is directed to an electrochemical device
comprising, inter alia, an anode, a cathode, and an electrically conductive
material coated with a nanoporous oxide between the anode and cathode,
and to an electronic card comprising the electrochemical device and a
1 Appellants identify the Real Party in Interest as Wisconsin Alumni
Research Foundation (Appeal Brief filed March 11, 2014 ("App. Br.") at 1.)
Appeal2014-009148
Application 13/149,276
memory storing data that at least intermittently receives power from the
electrochemical device. (Spec. i-fi-1 6, 9.)
Details of the appealed subject matter are recited in representative
claims 1 and 15, reproduced below from the Claims Appendix to the Appeal
Brief.
1. An electrochemical device comprising:
an anode;
a cathode;
an electrolyte separating the anode from the cathode; and
an electrically conductive material between the anode
and the cathode, wherein the electrically conductive material is
coated with a nanoporous oxide, and wherein the average pore
diameter size of the nanoporous oxide coating is from about
0.01 nm to about 500 nm.
15. An electronic card comprising:
an electrochemical device comprising:
an anode;
a cathode;
an electrolyte separating the anode from the
cathode; and
an electrically conductive material between the
anode and the cathode, wherein the electrically
conductive material is coated with a nanoporous oxide,
and wherein the average pore diameter size of the
nanoporous oxide coating is from about 0.01 nm to about
500 nm; and
a memory storing data, said memory at least
intermittently receiving power from the electrochemical device.
(App. Br. 13, 15 Claims Appendix.)
The Examiner maintains the following grounds of rejection in the
Answer entered into the record on June 12, 2014 ("Ans."):
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Application 13/149,276
Claims 1-20 under 35 U.S.C. § 112, second paragraph as being
indefinite for failing to particularly point out and distinctly claim the subject
matter that Applicants regard as the invention;
Claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of U.S. Patent Application Publication 2007 /0224502 Al
published in the name of Affinito et al. on September 27, 2007 (hereinafter
referred to as "Affinito") in view of U.S. Patent Application Publication
2005/0079418 Al published in the name of Kelley et al. on April 14, 2005
(hereinafter referred to as "Kelley") and U.S. Patent Application Publication
2007 /0027015 Al published in the name of Zhou et al. on February 1, 2007
(hereinafter referred to as "Zhou"); and
Claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Affinito in view of Kelley, Zhou, and U.S. Patent Application
Publication 2004/0230887 Al published in the name of Sellen et al. on
November 18, 2004 (hereinafter referred to as "Sellen").
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we sustain the Examiner's§§ 103(a) and 112
rejections of claims 1-20 for the reasons set forth in the Final Rejection and
the Answer. We add the discussion below primarily for emphasis and
completeness.
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Application 13/149,276
Rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over
Affinito, Kelley, and Zhou 2
Appellants do not timely dispute the Examiner's finding that Affinito
discloses an electrochemical cell comprising an anode, a cathode, a solid or
gel electrolyte that functions as a separator between the anode and the
cathode, and a multi-layered structure positioned between the anode and the
electrolyte. 3 (Compare Final Act. 4--5 with App. Br. 4--10.) The Examiner
finds that Affinito discloses that the multi-layered structure comprises a
polymer layer made of an electrically-conductive polymer coated with a
single-ion conductive material layer (i.e., a nanoporous metal oxide), which
corresponds to the electrically conductive material coated with a nanoporous
oxide recited in claims 1 and 15. (Ans. 9-11; Affinito i-fi-137, 83, 94.) The
Examiner acknowledges that Affinito does not specifically disclose that the
average pore diameter of the nanoporous oxide coating is from about 0.01
2 Appellants argue claims 1-18 as a group on the basis of independent claims
1, 8, and 15, and present the same arguments for claims 1 and 8. (See
generally App. Br. 8-11.) Therefore, for the purposes of this appeal, we
select claims 1 and 15 as representative, and decide the propriety of the
rejection of claims 1-18 on the basis of these claims alone.
37 C.F.R. § 41.37(c)(l)(iv)(2013).
3 Appellants argue for the first time in the Reply Brief that the electrolyte
disclosed in Affinito "cannot satisfy the electrolyte element of the claims of
the instant application in one instance, and satisfy the separator element in
another instance." (Reply Br. 4.) However, we do not consider this new
argument because it was not timely presented in the Appeal Brief. See 37
C.F.R. § 41.41(b)(2) (2013); see also Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (Informative) ("the reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not.").
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Application 13/149,276
nm to about 500 nm, as recited in claims 1 and 15, and that its
electrochemical device is part of an electronic card comprising a memory
storing data that at least intermittently receives power from the
electrochemical device, as recited in claim 15. (Final Act. 5---6.) To remedy
the above differences in Affinito, the Examiner relies on Zhou's disclosure
that nanopores include mesopores having an average diameter of 2 nm to 10
nm, and on Kelley's disclosure of a thin film battery connected to a variety
of circuits, including a radio frequency identification (RFID) circuit, on an
electronic card to provide continuous power to memory used to store data in
the RFID circuit, which Appellants do not dispute. (Compare Final Act. 5-7
citing Kelley i-fi-137 and 73 with App. Br. 4--10.)
Based on the above findings, the Examiner concludes that the
collective teachings of Affinito, Zhou, and Kelley would have rendered the
invention recited in claims 1 and 15 obvious to one of ordinary skill in the
art at the time of the invention, because the electrochemical device
comprising a polymer layer made of an electrically-conductive polymer
coated with a single-ion conductive material layer (i.e., a nanoporous metal
oxide inclusive of those having the nanopores recited in claim 1) disclosed
in Affinito is a known electrical power source in the thin film battery field
suitable for a memory storing data in Kelley's electronic card. (Final Act.
5.)
Appellants argue that Affinito fails to disclose a nanoporous oxide
layer because Affinito discloses that the nanopores of the single ion
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Application 13/149,276
conducting material are filled with a polymer that protects the electrode by
impeding the diffusion of damaging species, such as electrolyte, towards the
electrode. (App. Br. 6, 9.) Appellants further argue that one skilled in the
art would not have combined Affinito with Zhou because Zhou discloses
that electrolyte can be easily placed in the nanopores of Zhou's mesoporous
composite structure, contrary to Affinito' s disclosure of filling the nanopores
in the single-ion conductive layer with a polymeric substance to impede
diffusion of electrolyte. (App. Br. 9.)
However, we find Appellants' arguments unpersuasive of reversible
error because they are contrary to the disclosures of Affinito. Specifically,
Affinito discloses that the nanopores of the single-ion conductive layer may
be partially filled with a transport-inhibiting substance such as a polymer,
and discloses that less than 10 % of the nanopores in the layer can be filled
with a polymer. (Affinito i-fi-181, 88, 94.) Claims 1and15 do not require the
nanoporous oxide to have a particular level of porosity, nor do they preclude
the presence of some of the nanopores of the nanoporous oxide coating that
are filled with a transport-inhibiting polymeric substance. In other words,
Affinito' s disclosure of some unfilled nanopores of the nanoporous oxide
coating meets or is suggestive of the nanopores recited in claims 1 and 15.
Therefore, Appellants' argument based on Affinito' s supposed disclosure of
filling the nanopores of the single-ion conductive layer are unpersuasive of
reversible error.
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Appellants also argue that the Examiner appears to assert that
Affinito's single-ion conductive material corresponds to both the electrically
conductive material and the nanoporous oxide coating recited in claims 1
and 15, while claims 1 and 15 require these elements to be separate and
distinct. (App. Br. 7.) However, contrary to Appellants' argument, as
discussed above, the Examiner finds that the electrically-conductive polymer
layer disclosed in Affinito corresponds to the electrically conductive
material recited in claims 1 and 15 (Ans. 10-11), and the nanoporous metal
oxide single-ion conductive material layer disclosed in Affinito corresponds
to the nanoporous oxide coating recited in claims 1 and 15. (Ans. 9-11.)
Thus, the Examiner identifies separate and distinct elements of Affinito' s
electrochemical cell that correspond to the electrically conductive material
and nanoporous oxide coating recited in claims 1 and 15, and Appellants'
argument is therefore unpersuasive of reversible error.
Appellants further argue that one skilled in the art would not have
combined Affinito with Zhou because Zhou teaches a range of pore sizes
specifically designed for a mesoporous material, rather than a nanoporous
material. (App. Br. 8-9.) Appellants further contend that the Examiner fails
to consider the teachings of Zhou as a whole, and improperly engages in
picking and choosing disclosures from Zhou that support the Examiner's
position, to the exclusion of the full appreciation of what Zhou would have
fairly suggested to one of ordinary skill in the art. (App. Br. 9-10.)
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However, we find Appellants' arguments regarding lack of a reason to
combine Affinito and Zhou unpersuasive of reversible error because
Affinito' s disclosure of a nanoporous metal oxide layer is sufficient to
render the nanoporous oxide coating recited in claims 1 and 15 prima facie
obvious. Affinito' s use of the term "nanopores" to describe the pores in the
single-ion conductive layer indicates that the size of the pores is in the
nanometer range, inclusive of the very broad range of average nanopore
diameter sizes recited in claims 1 and 15. ( Affinito i-fi-1 41, 81, 94.) In other
words, the nanopores of Affinito's metal oxide, single-ion conductive layer
would encompass, or at least overlap, nanopores having a diameter of about
0.01 nm to about 500 nm, as recited in claims 1 and 15. In re Peterson, 315
F.3d 1325, 1329-30 (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 ....
Selecting a narrow range from within a somewhat broader range disclosed in
a prior art reference is no less obvious than identifying a range that simply
overlaps a disclosed range. In fact, when as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap.")
Nevertheless, to the extent that Affinito' s disclosure is not sufficient
to render the nanoporous oxide coating recited in claims 1 and 15 prima
facie obvious, Appellants do not dispute the Examiner's finding that Zhou
discloses that nanopores include mesopores having an average diameter of 2
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Application 13/149,276
nm to 10 nm. (App. Br. 4--10.) In essence, Zhou is used to explain that
Affinito's "nanoporous" oxide single-ion conductive layer includes nano-
sized pores having an average diameter of, inter alia, 2 nm to 10 nm, which
is within the range of about 0.01 nm to about 500 nm recited in claims 1 and
15. Thus, Affinito, as explained by Zhou, indicates that the size of the
nanopores in its metal oxide, single-ion conductive layer overlaps with the
range recited in claims 1 and 15, rendering the recited range prima facie
obvious. Peterson, supra. We therefore find Appellants' arguments to be
lacking in persuasive merit.
Appellants also argue that "the ranges recited in the instant claims and
the ranges disclosed in Zhou [] impart more than a difference in degree to
make the ranges recited in the instant claims separately patentable from the
range specifically designed for a mesoporous material as disclosed in
Zhou."4 (App. Br. 8-9.) However, Appellants do not provide any evidence
establishing that the ranges recited in claims 1 and 15 "impart more than a
difference in degree" relative to the nanopore range disclosed in Zhou or any
nanopores disclosed in Affinito. (App. Br. 4-10.) See In re De Blauwe, 736
4 Appellants appear to be arguing that the claimed range imparts unexpected
results. In re Budde, 319 F.2d 242, 246 (1963) (finding no unexpected
results where ranges of reaction time and temperature constituted only a
difference in degree rather than in kind); In re Aller, 220 F.2d 454, 456-57
(1955) (finding no unexpected results where improved yields over the prior
art, measured by percentages, reflect a difference in degree, not in kind).
Unexpected results is a factual determination. In re Mayne, 104 F.3d 1339,
1343 (Fed. Cir. 1997).
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Application 13/149,276
F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA
1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974). Appellants' argument is therefore
unpersuasive of reversible error.
Appellants also argue that one skilled in the art would not have
combined Affinito with Kelley and Zhou because when Kelley is considered
as a whole, "it is clearly directed to a method for fabricating thin film
batteries using an aperture mask deposition technique." (App. Br. 8.)
Appellants contend that the Examiner improperly cites Kelley only for its
disclosure of a thin film battery that can be used in an electronic card, thus
picking and choosing only disclosures from Kelley that support the
Examiner's position, to the exclusion of other parts of the reference
necessary for the full appreciation of what the reference would have
suggested to one of ordinary skill in the art. (App. Br. 8-10.)
However, Kelley discloses that thin film batteries are commonly
connected to radio frequency identification (RFID) integrated circuits on an
electronic card, and further discloses connection of a thin film battery to an
RFID circuit in order to provide continuous power to memory used to store
data in the RFID. (Kelley i-fi-137, 72.) Appellants do not question that the
electrochemical cell (battery) disclosed in Affinito is from the same thin film
battery field discussed by Kelley and could be connected to an RFID circuit
on an electronic card for the same purpose of providing at least intermittent
power to the memory used to store data in the RFID as suggested by Kelley.
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Application 13/149,276
(App. Br. 4--10.) Accordingly, we agree with the Examiner that Affinito and
Kelley, as a whole, reasonably would have led one of ordinary skill in the
art, through no more than ordinary skill and creativity, to use the
electrochemical cell disclosed in Affinito as the thin film battery on Kelley's
electronic card to connect to an RFID circuit in order to provide power to
memory used to store data in the RFID, as recited in claim 15. Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). We therefore
find Appellants' arguments to be lacking in persuasive merit.
It follows that on this record, we are unpersuaded of reversible error
in the Examiner's determination that one of ordinary skill in the art, armed
with the knowledge provided by the combined disclosures of the applied
prior art, would have been led to form the electrochemical device of claim 1,
and the electronic card of claim 15. Accordingly, we sustain the Examiner's
rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over the
disclosures of Affinito in view of Zhou and Kelley.
Rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Affinito, Kelley, Zhou, and Sellen
Appellants rely on the same arguments advanced in connection with
the Examiner's rejection of claims 1 and 15 based on Affinito in view of
Zhou and Kelley, and further assert that Sellen fails to remedy the
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Application 13/149,276
.. r- • • ro ,.,. ro i:;; / • T"""lti. -1 A -1 -1 >. T"""lti.
aenc1enc1es or mese rererences.J ~App. tir. lU-11.J tiecause we are
unpersuaded of reversible error in the Examiner's rejection based on
Affinito, Zhou, and Kelley as discussed supra, we sustain the rejection of
claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over Affinito,
Zhou, Kelley, and Sellen.
Rejection of Claims 1-20 under 35 U.S.C. § 112, Second Paragraph for
Indefiniteness
Appellants do not timely contest the Examiner's rejection of claims 1-
20 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter that
Applicants regard as the invention. 6 (App. Br. 4--10.) Accordingly, we
summarily sustain this rejection. 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
In view of the reasons set forth in the Final Action, Answer, and
above, we affirm the Examiner's rejections of claims 1-20 under 35 U.S.C.
5 We do not consider Appellants' arguments regarding Sellen presented for
the first time in the Reply Brief (Reply Br. 4) because they were not timely
presented in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2); see also Ex
parte Borden, 93 USPQ2d at 1474.
6 Appellants argue for the first time in the Reply Brief that the term "about"
recited in claims 1, 8, and 15 is definite, and the rejection under 35 U.S.C.
§ 112, second paragraph, should therefore be reversed. (Reply Br. 1-2.)
However, we do not consider this new argument because it was not timely
presented in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2).
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Application 13/149,276
§ 103(a) and the Examiner's rejection of claims 1-20 under 35 U.S.C. § 112,
second paragraph.
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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