Ex Parte Jagannathan

Patent Trial and Appeal Board

Nov 21, 2017

13413923 (P.T.A.B. Nov. 21, 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.
13/413,923 03/07/2012 Sudhakar Jagannathan EXD0015US2 8789
23413 7590 11/24/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street CHUO, TONY SHENG HSIANG
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
11/24/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUDHAKAR JAGANNATHAN
Appeal 2017-003545
Application 13/413,923
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—14 of Application 13/413,923
under 35 U.S.C. § 112,12 as indefinite. Final Act. 4 (June 19, 2015). The
Examiner further rejected claims 1—14 under 35 U.S.C. § 103(a) as obvious.
Id. at 5, 8, 10. Appellant1 seeks reversal of these rejections2 pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
1 Exide Technologies is identified as the real party in interest. Appeal Br. 2.
2 Claims 1—57 are pending in the ’545 Application. Of these, claims 1—14
are rejected and claims 15—57 are withdrawn from consideration. Final Act.
1.
Appeal 2017-003545
Application 13/413,923
For the reasons set forth below, we reverse the § 112,12, rejection
for indefiniteness and affirm the § 103(a) rejections.
BACKGROUND
The ’923 Application describes energy storage devices, such as lead-
acid batteries. Spec. 11. The ’923 Application further describes methods of
improving the performance of such batteries through the incorporation of
one or more carbon-based additives. Id.
Claim 1 and 10 are representative of the ’923 Application’s claims
and are reproduced below from the Claims Appendix to the Appeal Brief:
1. An energy storage device, comprising:
an electrode comprising lead;
an electrode comprising lead dioxide;
a separator between the electrode comprising lead and the
electrode comprising lead dioxide;
an aqueous electrolyte solution containing sulfuric acid;
a first carbon-based additive having an oil absorption
number of 100 to 300 ml/100 g and surface area from 50 m2/g to
2000 m2/g; and
a second carbon additive having a surface area from 3 m2/g
to 50 m2/g.
10. The energy storage device according to Claim 7, wherein
the lead-acid battery has a static charge acceptance from 50% to
150% greater than standard when charged at 2.4 V/Cell for 10
min at 0 °F.
Appeal Br. 10, 11.
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Application 13/413,923
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 10-12 and 14 are rejected under 35 U.S.C. § 112,12 as
indefinite.3 Answer 2.
2. Claims 1—12 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Honbo4 and Ho.5 Final
Act. 5; Answer 3.
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Honbo, Ho, and Dickinson.6 Final Act.
8; Answer 5.
4. Claims 1—12 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Honbo and Hohjo.7 Final
Act. 8; Answer 5.
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Honbo, Hohjo, and Dickinson. Final
Act. 10; Answer 7.
3 The Examiner has withdrawn the rejection of independent claim 1 from
Rejection 1. Answer 8. The Examiner omitted dependent claims 2—9 and
13 from Rejection 1 in the Answer. See id. at 2—3. It appears that the
Examiner originally rejected these claims as indefinite under 35 U.S.C.
§ 112,12 for reciting limitations that the Examiner determines are no longer
indefinite. See Final Act. 4—5; Answer 8. Accordingly, we conclude the
Examiner has also withdrawn the indefmiteness Rejection 1 of claims 2—9
and 13.
4 US 2003/0049528 Al, published Mar. 13, 2003.
5 US 2011/0250500 Al, published Oct. 13, 2011.
6 US 2010/0015531 Al, published Jan. 21, 2010.
7 US 5,156,935, issued Oct. 20, 1992.
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Application 13/413,923
DISCUSSION
Rejection 1. The Examiner rejected claims 10—12 and 14 as
indefinite. Final Act. 2; Answer 2.
Each of these claims recites a “standard.” The Examiner determined
that each claim recites indefinite limitations because the “standard” for the
properties of “static charge acceptance,” “charge power,” “discharge
power,” and “standard in a HRPSoC test” are not clearly defined. Answer
2—3; see, e.g., claim 10 supra. The Examiner further determined that
[n]one of the terms “static charge acceptance”, “charge power”,
“discharge power” are clearly defined in the claims. Also,
without knowing what the “standard” is referring to, one of
ordinary skill in the art would not be able to ascertain what the
metes and bounds of the claims are.
Answer 9.
Appellant asserts, but has not provided any evidence in the Appeal
Brief,8 that the properties described in the disputed claims are terms of art
that would be readily understood by the ordinary skilled artisan. Appeal Br.
5. According to Appellant, “the Examiner’s rejections are inappropriate on
this point and should be reversed.” Id.
8 We note that Appellant’s Reply Brief argues, for the first time, that
Appellant is not required to supplement the evidentiary record because:
(i) the terms of art are clearly defined in the Specification and (ii) the
Specification further provides exemplifications of claimed ranges and
“control (standard) configurations.” Reply Br. 3. These arguments are
untimely because they are raised for the first time in the Reply Brief. 37
C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”).
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Application 13/413,923
Whether a claim is indefinite under 35 U.S.C. § 112,12 requires
giving the claims the broadest reasonable interpretation and then
determining whether the metes and bounds of the claimed invention are
unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). The Board
has explained that “[t]he Office ‘determines the scope of claims . . . not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Ex parte McAward, No.
2015-006416, slip op. at 5 (PTAB August 25, 2017) (precedential in relevant
part) (alteration in original) (quoting Phillips v. AWHCorp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (available at http://bit.lv/2xFXlpee)).
In this case, the Specification describes that “the terms ‘standard’
‘reference’ or ‘control’ refer to an energy storage device . . . comprising
substantially the same components, arranged in substantially the same
manner, as an energy storage device of the present invention, but lacking the
first and second carbon based additives.” Spec. 1 61 (emphasis added); see
also id. H 78, 79.
The Specification discloses that “[t]he static charge acceptance of an
energy storage device is ability of the device to accept charge at low
temperature when fully discharged or at partially discharged state.” Id. 1 63
(emphasis added); see also id. H 74, 80.
The Specification explains that
[t]he charge power of an energy storage device is ability of the
device to accept high pulse charges at various partial state of
charge, thus, an increase in charge power improves the ability of
a device to accept charges at partial state of charge conditions
which would otherwise be wasted as heat.
Id. 1 64 (emphasis added); see also id. 1175, 80.
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Application 13/413,923
The Specification describes that “[t]he discharge power of an energy
storage device is ability of a device to discharge the entire battery capacity
within a specified time.” Id. 1 65 (emphasis added); see also id. 1176, 80.
The Specification discloses that
the term ‘HRPSoC cycle life ’ refers to a high rate partial state of
charge cycle life test performed to replicate the actual use of an
energy storage device. The device is discharged initially to a
partial state of charge and cycled using a given charge-discharge
cycle. The end of the test is reached when the device reaches the
minimum voltage[.]
Id. 1 67 (emphasis added); see also id. 177.
Accordingly, the claims are clear that the requisite “standard” for each
property means the ability of a reference or control energy storage device to
exhibit each claimed property, respectively. Thus, one of ordinary skill in
the art would understand that such a reference or control energy storage
device means an energy storage device of the present invention, which lacks
the first and second carbon based additives. Furthermore, the meaning of
each claimed property would be clear to the ordinary skilled artisan based on
the definitions and examples provided in the Specification. We, therefore,
conclude that the Examiner has not provided sufficient fact finding to
support the legal conclusion that claims 10—12 and 14 are indefinite.
Thus, we conclude that the rejected claims meet the necessary
thresholds of clarity and precision when read through the eyes of a skilled
artisan and in view of this disclosure. We, therefore, reverse Rejection 1.
Rejections 2—5. Appellant argues for the reversal of the obviousness
rejections to claims 1—14 on the basis of limitations present in independent
claim 1. See Appeal Br. 5—9; Reply Br. 3—5. We, therefore, limit our
analysis for these rejections to claim 1.
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Application 13/413,923
Rejection 2. The Examiner rejected claims 1—12 and 14 as obvious
over the combination of Honbo and Ho. Final Act. 5; Answer 3.
The patent examiner bears the initial burden of establishing a prima
facie case that an application’s claims are obvious based upon what was
known in the prior art. See In re Dillon, 919 F.2d 688, 701 (Fed. Cir. 1990).
An applicant facing an obviousness rejection may argue that the examiner
erred in determining that there was a prima facie case of obviousness. Id. If
the examiner correctly determined that there was a prima facie case of
obviousness, the applicant may present rebuttal evidence. Id. Upon
submission of rebuttal evidence, the determination of obviousness vel non is
made on the entire record. Id.
In this case, the Examiner found that Honbo discloses a lead-acid
battery comprising two carbon-based additives: (i) carbon black having a
specific surface are of 254 m2/g and the requisite oil absorption; and (ii)
active carbon added to the anode. Answer 3 (citing Honbo H 21, 49-54,
Table 2). The Examiner further found that Honbo describes or suggests
every limitation in claim 1 except for, inter alia, the surface area from 3
m2/g to 50 m2/g of the second carbon additive. Answer 3^4.
The Examiner found that Ho teaches suitable carbon additives, which
include activated carbon and graphite having a surface area from 9—25 m2/g.
Id. at 4 (citing Ho 118). According to the Examiner, “activated carbon and
graphite having a surface area from 9-25 m2/g are functional equivalents for
use in lead-acid batteries as carbon additives.” Answer 4.
Appellant’s principal argument on appeal is that “Honbo only teaches
a singular surface area for a carbon constitution,” whereas “the present
invention is specifically related to a specific formulation with plural carbon-
based additives.” Appeal Br. 7. Appellant further argues “that BOTH
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Application 13/413,923
Honbo and Ho ONLY teach formulations of carbons having a single
surface area.” Reply Br. 4.
These arguments do not persuade us that the Examiner erred by
concluding that claim 1 would have been obvious to a person of ordinary
skill in the art. The Supreme Court has made clear that an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). That is because
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
In this case, the Examiner identified a reason for a person of ordinary
skill in the art to combine Honbo and Ho. As explained by the Examiner,
the use of Ho’s graphite having a surface area from 9-25 m2/g as Honbo’s
second carbon additive amounts to the substitution of a known equivalent for
the active carbon described in Honbo. Answer 4. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” See KSR, 550 U.S. at 416;
see also In re Font, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious.”).
Appellant argues that “[tjhere is no basis in the prior art” for any such
functional equivalence between activated carbon and graphite having a
surface area from 9-25 m2/g. Reply Br. 5.
Appellant’s arguments ignore Ho’s teaching that “[njonlimiting
examples of suitable carbon additives include activated carbon, graphite, or
combinations thereof.” Ho 118. Likewise, Appellant’s arguments dismiss
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Application 13/413,923
Honbo’s suggestion that there can be a combination of two different carbon-
based additives (Honbo, 119). We agree with the Examiner that Honbo
suggests such a combination by disclosing a lead-acid battery ‘“using, as the
carbon, at least one member selected from carbon black,. . . , active carbon’
and . characterized in that the following active carbon . . . and/or carbon
black ... is added into the anode’.” Answer 10 (citing Honbo Tflf 19, 21);
see In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that
a prior art reference is relevant for all that it teaches to those of ordinary skill
in the art.”). Therefore, Appellant has not persuaded us that the Examiner
erred in determining that these embodiments would have suggested to the
ordinary skilled artisan that Honbo’s active carbon may be replaced with
Ho’s graphite having a surface area from 9—25 m2/g.
Appellant suggests that the claimed invention “produce[s] unexpected
and beneficial results.” Appeal Br. 7. We are not persuaded by this
argument because Appellant has not identified evidence of record that
establishes the unexpected nature of the differences (if any) between the
claimed invention and the prior art. Superiority alone is not sufficient to
show that the result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be unexpected
to be considered as evidence of non-obviousness.”).
In view of the foregoing, we affirm the Examiner’s Rejection 2 of
claim 1 as unpatentable over the combination of Honbo and Ho. Claims 2—
14 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we further
affirm the Examiner’s Rejection 3.
Rejection 4. The Examiner rejected claims 1—12 and 14 as obvious
over the combination of Honbo and Hohjo. Final Act. 8; Answer 5.
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As set forth above in Rejection 2, the Examiner found that Honbo
describes or suggests every limitation in claim 1 except for, inter alia, the
surface area from 3 m2/g to 50 m2/g of the second carbon additive. Answer
5-6.
The Examiner further found that Hohjo discloses carbon whiskers
having a surface area from 10 to 40 m2/g that are added to the positive and
negative plates. Id. (citing Hohjo, Example 1). The Examiner determined
that it would have been obvious to the ordinary skilled artisan to modify
Honbo’s battery to include carbon whiskers having a surface area from 10 to
40 m2/g in order to: (i) enhance the rate of utilization of active materials of
the negative plate; (ii) improve the charge acceptability of the active
materials of the negative plate; and (iii) improve the long cycle service life
performance. Answer 6 (citing Hohjo 3:25—34).
With respect to Honbo, Appellant relies on the same arguments set
forth above in Rejection 2. See Answer 8—9. Appellant further argues that
Hohjo teaches that “only a low surface area carbon is used, and again, there
is not any teaching (or suggestion) in any reference to have both high and
low surface area carbons in a formulation.” Appeal Br. 9.
These arguments are not directed to the Examiner’s rationale for
modifying Honbo to incorporate Hohjo’s carbon whiskers having a surface
area from 10 to 40 m2/g. With respect to Appellant’s arguments concerning
Honbo, we are not persuaded for the reasons set forth above. Furthermore,
the Supreme Court has held that such combinations as Honbo’s known
carbon black having a specific surface are of 254 m2/g with Hohjo’s known
carbon whiskers having a surface area from 10 to 40 m2/g are likely to be
obvious. KSR, 550 U.S. at 416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
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Application 13/413,923
than yield predictable results.”). Appellant has not persuaded us that the
Examiner erred in concluding that their claimed combination of familiar
elements would have been obvious.
In view of the foregoing, we affirm the Examiner’s Rejection 4 of
claim 1 as unpatentable over the combination of Honbo and Hohjo. Claims
2—14 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we further
affirm the Examiner’s Rejection 5.
CONCLUSION
For the reasons set forth above, we reverse the § 112,12,
indefmiteness rejection of claims 10—12 and 14 of the ’923 Application. We
affirm the § 103 obviousness rejections of claims 1—14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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