Ex Parte Bosnyak et al

Patent Trials and Appeals Board

Jan 9, 2019

14128318 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/128,318 12/20/2013
130577 7590 01/11/2019
ANDREWS KURTH KENYON LLP
600 Travis Street
Suite 4200
Houston, TX 77002
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Clive P. Bosnyak
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.
DENA-0006WO/US(223 l 82) 2377
EXAMINER
STUCKEY, PHILIP A
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
01/11/2019 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):
patenttrademarks@andrewskurth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIVE P. BOSNYAK and KURT W. SWOGGER1
Appeal2017-002323
Application 14/128,318
Technology Center 1700
Before BRADLEY R. GARRIS, MARK NAGUMO, and BRIAND.
RANGE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 31 and 36-42. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Molecular Rebar Design, LLC is identified as the real party in interest
(App. Br. 1).
Appeal2017-002323
Application 14/128,318
Appellants claim a negative electrode for an energy storage device
wherein the electrode includes a sheet comprising discrete carbon nanotubes
( sole independent claim 31 ).
Further details regarding Appellants' claimed subject matter are set
forth in independent claim 31 and dependent claims 37--40, a copy of which
taken from the Claims Appendix of the Appeal Brief appears below.
31. A negative electrode for an energy storage device,
compnsmg:
a current collector;
a corrosion-resistant conductive coating secured to at least
one face of the current collector;
a sheet comprising carbon particles and discrete carbon
nanotubes wherein the discrete carbon nanotubes further
comprise 1- 15 percent by weight of oxidized species with aspect
ratio of from about 10 to about 500, wherein at least a part of the
discrete carbon nanotubes are open ended, said sheet adhered to
the corrosion-resistant conductive coating:
a tab portion extending from a side of the negative
electrode;
a lug comprising a lead or lead alloy that encapsulates the
tab portion; and
a cast-on strap comprising lead or lead alloy above the lug
and encapsulating at least part of the lug.
3 7. The electrode of Claim 3 1, wherein the discrete carbon
nanotubes are individualized and non-agglomerated.
3 8. The electrode of Claim 31, wherein energy storage device
is a lead-acid battery.
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Appeal2017-002323
Application 14/128,318
39. The electrode of Claim 38, wherein the lead-acid battery
comprises discrete carbon nanotubes and exhibits at least 10%
increase in ion transport at any temperature for a given
electrolyte concentration compared to those batteries without
carbon nanotubes at the same electrolyte concentration and
temperature.
40. The electrode of Claim 3 8, wherein the lead-acid battery is
useful for vehicles equipped with energy regenerative braking systems or
start-stop technology for improved fuel efficiency.
The Examiner rejects claims 37, 39, and 40 under 35 U.S.C. § 112(b)
or§ 112, 2nd paragraph, as being indefinite (Final Action 2-3). For example,
the Examiner determines that "[t]he terms 'individualized' and 'non-
agglomerated' in claim 37 are relative terms which render[] the claim
indefinite" (id. at 3).
We agree with Appellants that these claims are not indefinite (App.
Br. 18-19) based on the record provided by the Examiner.
For example, Appellants convincingly explain that paragraphs 3 and
30 of their Specification reveal the above quoted terms of claim 37 are used
in their plain and ordinary meaning whereby one with ordinary skill in this
art would be able to determine whether carbon nanotubes are individualized
and non-agglomerated as claimed (id.). In response, the Examiner states that
Appellants' Figures 3 and 4 show "the [inventive] carbon nanotubes are in a
mixture having relative clusters and overlapping areas" (Ans. 4) and
accordingly that "one of ordinary skill in the art is unable to determine what
is or is not an 'individualized' or a 'non-agglomerated' or a 'discrete' carbon
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Appeal2017-002323
Application 14/128,318
nanotube" (id. at 4 ). 2 As support for these statements, the Examiner presents
an annotated Figure 3 having arrows pointing to such nanotubes (id. at 5).
However, the Examiner's annotated Figure 3 is so obscurely depicted that
the areas identified by arrows cannot be discerned with any reasonable
clarity. Moreover, we emphasize that the claims require at least some, but
not necessarily all, carbon nanotubes to be discrete or individualized and
non-agglomerated and that at least some such carbon nanotubes are shown
with reasonable clarity in Appellants' Figures 3 and 4.
In the record of this appeal, the Examiner fails to establish a prima
facie case that the identified terms of claims 37, 39, and 40 render these
claims indefinite. As a consequence, we do not sustain the Examiner's
rejection of claims 37, 39, and 40 as being indefinite.
The Examiner rejects claims 38--40 under 35 U.S.C. § 112(d) or
§ 112, 4th paragraph, as failing to further limit the subject matter of the claim
from which they depend (Final Action 4). According to the Examiner, "it is
unclear how claim 38 [and correspondingly claims 39 and 40 which depend
from claim 3 8] further limits the negative electrode of [independent] claim
31 by reciting that the energy storage device is a lead-acid battery" (id.).
2 The Examiner indicates that an artisan would be unable to determine
whether a carbon nanotube is discrete. However, no indefiniteness rejection
based on the claim term "discrete" is in the record before us as correctly
observed by Appellants (Reply Br. 3).
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Appeal2017-002323
Application 14/128,318
We agree with Appellants that these claims are proper dependent
claims (App. Br. 19) in the sense that they further limit the negative
electrode of independent claim 31 by requiring the electrode to be
structurally and functionally capable of being used for an energy storage
device in the form of a lead-acid battery. Therefore, we also do not sustain
the above rejection of claims 3 8--40.
Finally, the Examiner rejects independent claim 31 under 35 U.S.C.
§ I03(a) as unpatentable over WO '729 (WO 2010/059729 Al; May 27,
2010) in view of Adzic (US 2010/0097742 Al; Apr. 22, 2010) (Final Action
4--6) and correspondingly rejects dependent claims 36--42 as unpatentable
over these references alone or in combination with an additional prior art
reference (id. at 6-9). In rejecting the independent claim, the Examiner
finds that paragraphs 58 and 68 of WO '729 disclose carbon nanotubes
which are discrete as claimed (id. at 5) and implies that paragraph 49 of
Adzic also discloses discrete carbon nanotubes (id. at 6 (i.e., by referring to
"the discrete carbon nanotubes" of Adzic) ).
We are persuaded by Appellants' argument that neither WO '729 nor
Adzic contains any teaching or suggestion of "discrete" carbon nanotubes in
the paragraphs cited by the Examiner (App. Br. 6-7, 9-10). In responding to
this argument, the Examiner does not deny that the cited paragraphs fail to
characterize the disclosed nanotubes as discrete (Ans. 3-6). Rather, the
Examiner implies that the claim term "discrete" includes the nanotubes of
WO '729 and Adzic based on the earlier discussed proposition that
Appellants' Figures 3 and 4 and the Examiner's annotated Figure 3 show
"the [inventive] carbon nanotubes are in a mixture having relative clusters
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Appeal2017-002323
Application 14/128,318
and overlapping areas" (id. at 4; see also id. at 5---6). For the reasons given
above, this proposition is without convincing merit.
Under these circumstances, we also do not sustain the Examiner's
§ 103 rejections of claims 31 and 36-42.
The decision of the Examiner is reversed.
REVERSED
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