Ex Parte Christensen et al

Patent Trial and Appeal Board

Feb 10, 2016

13157859 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/157,859 06/10/2011
10800 7590 02/11/2016
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
FIRST NAMED INVENTOR
John F. Christensen
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.
1576-0740 8091
EXAMINER
LEWIS, BEN
ART UNIT PAPER NUMBER
1726
MAILDATE DELIVERY MODE
02/11/2016 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 JOHN F. CHRISTENSEN, PAUL ALBERTUS, and
BORIS KOZINSKY
Appeal2014-006718
Application 13/157,859
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Independent claim 1 is illustrative:
1. An electrochemical cell, comprising:
1 According to Appellants, the Real Party in Interest is Robert Bosch GmbH
(Br. 1 ).
Appeal2014-006718
Application 13/157,859
a negative electrode including a form of lithium;
a positive electrode spaced apart from the negative electrode
and including an electron conducting matrix and a lithium insertion
material which exhibits a volume change when lithium is inserted;
a separator positioned between the negative electrode and the
positive electrode; and
an electrolyte including a salt, wherein Lb02 or LbO is formed
as a discharge product.
The following rejections have been maintained by the Examiner:
A. Claims 1-7 and 12-17 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Narula et al. (US 2012/0100440 Al published Apr. 26,
2012 (hereinafter "N arula"));
B. Claim 8-10, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Narula in view ofKoshina (US 2011/0250506 Al
published Oct. 13, 2011);
C. Claims 11 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over N arula in view of Kim et al. (US 2011/0311882 A 1
published Dec. 22, 2011 (hereinafter "Kim")).
ANALYSIS
We have reviewed each of Appellants' arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's finding that the subject matter of claim 1 (as well as independent
claim 12) is anticipated within the meaning of§ 102 in view of the applied
prior art. Accordingly, we will sustain the§ 102 rejection for essentially
those reasons expressed in the Answer, including the Examiner's Response
to Argument section, and we add the following primarily for emphasis. On
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Application 13/157,859
the other hand, we reverse the§ 103 rejections of claims 8-11 and 18-20
essentially for reasons expressed by Appellants (Br. 11-16).
The§ 102 Rejection
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee." Id.
Appellants' arguments focus on Narula's lack of an explicit
description that the lithium insertion material discussed therein may be used
in a lithium air battery as opposed to a lithium ion battery (Br. 4--10). These
arguments are adequately addressed by the Examiner (e.g., Ans. 10-12).
A preponderance of the evidence supports the Examiner's de facto
position that one of ordinary skill would reasonably infer from Narula's
disclosure that the lithium insertion material may also be used in a lithium
air battery cell, as well as in a lithium ion cell. In re Preda, 401 F. 2d 825,
826 (CCP A 1968) (In determining whether a reference anticipates the
subject matter recited in a claim, "it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom." (emphasis
added)). Contrary to Appellants' arguments, one of ordinary skill in the art
would have reasonably viewed Narula's description of a lithium insertion
material in i-f 7 4 as applicable to its lithium air battery embodiments (N arula
i-f 74 "including any one or more of those [embodiments] discussed above"
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Application 13/157,859
repeated at least four times; emphasis added). Appellants have not directed
our attention to any persuasive reasoning or credible evidence to establish
that the Examiner's findings concerning Narula's disclosure are
unreasonable. As also pointed out by the Examiner, the claim language
encompasses, and does not distinguish over, the lithium air battery ofNarula
(Ans. 10, 12 (explaining that Example 3 ofNarula explicitly recites a
lithium/air battery)). Appellants have not directed our attention to any
persuasive reasoning or credible evidence to establish that the Examiner's
interpretation of the language is unreasonable.
The§ 103 Rejections
On the other hand, a preponderance of the evidence supports
Appellants' position that the Examiner has not explained how the combined
prior art teaches or suggests a redox couple that functions between Lb02 or
LbO discharge products and the electron conducting matrix as recited in
claims 8 and 18 (Br. 11, 12). The Examiner's response to this argument
does not sufficiently explain how Koshina's redox couple suggests a redox
couple which functions as recited in claims 8 and 18 (Ans. 13). We further
note the Examiner did not respond to Appellants' argument that dependent
claims 11 and 20 depend from claims 8 and 11, respectively, yet the
rejection is based solely on Narula and Kim, neither of which is relied upon
to teach the limitations of claims 8 and 11 (Br. 15, 16).
Accordingly, we must reverse the Examiner's§ 103 rejections.
In summary, we affirm the Examiner's§ 102 rejection of claims 1-7
and 12-17, and reverse the§ 103 rejections of claims 8-11and18-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
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Application 13/157,859
bar
ORDER
AFFIRMED-IN-PART
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