Ex Parte Fork et al

Patent Trial and Appeal Board

Aug 2, 2016

12972384 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/972,384 12/17/2010
65650 7590 08/04/2016
MARGERJOHNSON/PARC
888 SW 5th A venue, Suite 1050
PORTLAND, OR 97204
FIRST NAMED INVENTOR
David K. Fork
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.
20100505Q-US-NP-984 l-0228 9775
EXAMINER
THOMAS, BRENT C
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
docketing@techlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID K. FORK
and KARL LITTAU
Appeal2014-009770
Application 12/972,384
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
WESLEY B. DERRICK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an
Examiner's decision finally rejecting claims 1-3, 5, 8, 14, and 16 under
35 U.S.C. § 103(a) as unpatentable over Narang. 1 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 US 2002/0074972 Al, published June 20, 2002.
Appeal2014-009770
Application 12/972,384
Independent claims 1 and 16 are reproduced below from the Claims
Appendix of the Appeal Brief dated June 16, 2014 ("App. Br."). The
limitations at issue are italicized.
1. An electrode structure, comprising:
a layer of at least two interdigitated materials, a first
material being an electrode material formed into an array of
first features and a second material being an ionically
conductive material formed into an array of second features
interdigitated with the array of first features, the materials
residing co-planarly on a membrane and the ionically
conductive material has a greater width than the electrode
material, at least one of the features having an aspect ratio
greater than one, the second material extends only partially
across a height of the structure from a first side,
wherein the electrode material forms one of an anode or
a cathode portion of a battery structure.
App. Br. 8 (emphasis added).
16. An electrode structure, comprising:
a membrane;
a layer of three co-planarly interdigitated materials
residing on the membrane, comprising:
first electrode material in a first feature traversing
a width of the structure;
an ionically conductive material in a second
feature that only partially traverses the width of the
structure from a first side; and
a second electrode material in a third feature being
more conductive than the first electrode material that
only partially traverses the width of the structure from a
second side.
App. Br. 9 (emphasis added).
2
Appeal2014-009770
Application 12/972,384
B. DISCUSSION
1. Claim 16
The Examiner finds Narang discloses an electrode structure, as recited
in claim 16, comprising a layer of three interdigitated materials, i.e., an
anode, an electrolyte, and a cathode. Ans. 3 (citing Narang i-fi-132, 33, 38;
Narang Figs. 3, 4). 2 The Appellants argue that the structure disclosed in
Narang is a battery, not an electrode structure as claimed. App. Br. 5.
We find N arang expressly describes a "battery" comprising "cathodes
250 and anodes 260 having interdigitated microplates separated by an
electrolyte 230." Narang i132. Thus, the issue on appeal is whether the term
"electrode structure" in the preamble of claim 16 excludes the battery
disclosed in Narang.
The Appellants do not expressly define the term "electrode structure"
in the Specification. Nonetheless, we find that one of ordinary skill in the
art would have understood that the term "electrode," in the context of the
electrochemical cell described in the Appellants' Specification, refers to
either an anode or a cathode. See Spec. i1 41; see also Reply Br. 2 ("[a Jn
electrode would be one or the other of the cathode or anode"). 3 For this
reason, we conclude that the term "electrode structure" in the preamble of
claim 16 excludes the battery disclosed in N arang, which comprises an
anode, an electrolyte, and a cathode. Therefore, the§ 103(a) rejection of
claim 16 is not sustained.
2 Examiner's Answer dated July 16, 2014.
3 Reply Brief dated September 16, 2014.
3
Appeal2014-009770
Application 12/972,384
2. Claim 1
The Examiner finds Narang discloses an electrode structure
comprising at least two interdigitated materials comprising a first electrode
material and a second electrolyte material, wherein the first electrode
material forms one of an anode or a cathode portion of a battery structure.
Ans. 2 (citing Narang i-fi-132, 33, 38; Narang Figs. 3, 4).
The Appellants argue that the second electrolyte in Narang does not
reside co-planarly on a membrane with the first electrode material as recited
in claim 1. App. Br. 5.
In response, the Examiner finds:
N arang teaches an anode and cathode extending from separate
current collectors, however both current collectors and the
electrodes extending from them are laminated against the same
glass fiber separator (membrane) [0032, 0038, fig. 3]. Narang
further teaches an electrolyte that would fill any open space
between then [sic, the] anode and cathode and would therefore
also reside on the same glass fiber separator (membrane).
Ans. 5. The Appellants do not direct us to any error in the Examiner's
findings.
The Appellants also argue that the layer of the three interdigitated
materials disclosed in Narang (i.e., a first anode, a second electrolyte, and a
third cathode) is a battery, not an electrode structure as claimed. App. Br. 5.
The Appellants' argument is not persuasive of reversible error. Claim
1 recites "[a Jn electrode structure comprising," inter alia, "a layer of at least
two interdigitated materials." App. Br. 8 (emphasis added). Narang Figure
4, in combination with Narang paragraph 34, disclose a layer of two
interdigitated materials comprising a first electrode material (i.e., high aspect
ratio microplates 264) and a second ionically conductive material (i.e.,
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Appeal2014-009770
Application 12/972,384
electrolyte )4 positioned between current collector portion 262 and the top of
high aspect ratio microplates 254. Thus, we find Narang discloses an
electrode structure as recited in claim 1.
The§ 103(a) rejection of claim 1 is sustained.
3. Claims 2, 3, and 14
The Appellants do not direct us to any error in the Examiner's
findings of fact or conclusions of law as to claims 2, 3, and 14. Rather, the
Appellants merely repeat the claim language of claims 2, 3, and 14 and
summarily state that Narang does not show, teach, or suggest those claim
limitations. App. Br. 5---6.
We find the Appellants' statements do not amount to arguments in
support of the separate patentability of any of claims 2, 3, and 14 under 37
C.F.R. § 41.37 (c)(iii) (2014). See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding element were not
found in the prior art."). Therefore, the§ 103(a) rejection of claims 2, 3, and
14 is sustained for the reasons set forth above sustaining the§ 103(a)
rejection of claim 1.
4. Claims 5 and 8
Claim 5 recites "[ t ]he structure of claim 1, further comprising a third
material interdigitated with the first and second material," and claim 8
depends from claim 5. App. Br. 8.
4 The Appellants' claim 2 recites that "the ionically conductive material
comprises an electrolyte." App. Br. 8.
5
Appeal2014-009770
Application 12/972,384
The Examiner finds the cathode disclosed in N arang corresponds to
the third material recited in claim 5. Ans. 2-3. For the reasons discussed
above with respect to the rejection of claim 16, we find the addition of a
cathode to the electrode structure disclosed in Narang results in a battery, not
an electrode structure as recited in claim 1. Therefore, the§ 103(a) rejection
of claims 5 and 8 is not sustained.
C. DECISION
The decision of the Examiner rejecting claims 1-3 and 14 under 35
U.S.C. § 103(a) as unpatentable over Narang is affirmed.
The decision of the Examiner rejecting claims 5, 8, and 16 under 35
U.S.C. § 103(a) as unpatentable over Narang is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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