Ex Parte Kozinsky et al

Patent Trial and Appeal Board

Dec 28, 2015

12437791 (P.T.A.B. Dec. 28, 2015)

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.
12/437,791 05/08/2009 Boris Kozinsky 1576-0304 8242
28078 7590 12/28/2015
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
MOHADDES, LADAN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
12/28/2015 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 BORIS KOZINSKY, JOHN F. CHRISTENSEN,
NALIN CHATURVEDI, and JASIM AHMED
____________

Appeal 2014-003802
Application 12/437,791
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 4, 5, 8, 9, 11, and 12.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to an electrochemical cell
comprising a first electrode that includes a form of sulfur as an active
material, a second electrode spaced apart from the first electrode that

1 Appellants identify the Real Party in Interest as Robert Bosch GmbH
(Appeal Brief filed August 20, 2013 (“App. Br.”) at 1.)
2 The Examiner withdrew the rejections under 35 U.S.C. § 103(a) of claims
3, 6, 10, and 13 in the Answer, and we accordingly only address claims 1, 2,
4, 5, 8, 9, 11, and 12.
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includes a plurality of nanowires, and a flexible transfer member operably
contacting the first electrode and the second electrode. (Spec. ¶ 12.) Details
of the appealed subject matter are recited in representative claim 1 which is
reproduced below from the Claims Appendix to the Appeal Brief (emphasis
added).
1. An electrochemical cell, comprising:
a first electrode including a form of sulfur as an active
material;
a second electrode spaced apart from the first electrode,
the second electrode including a plurality of nanowires; and
a flexible transfer member operably contacting the first
electrode and the second electrode to transfer volume between
the first electrode and the second electrode, wherein the flexible
transfer member is configured such that as pressure in the first
electrode increases, the increased pressure causes the
electrolyte to press against the flexible member causing the
flexible transfer member to flex and the volume of the first
electrode increases while the volume of the second electrode
decreases, and as pressure in the first electrode decreases, the
flexible transfer member flexes and the volume of the first
electrode decreases while the volume of the second electrode
increases.

(App. Br. 27, Claims Appendix.)

Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer mailed on December 18, 2013
(“Ans.”):
Claim 1 under 35 U.S.C. § 112, second paragraph as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention.
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Claims 1, 2, 4, 5, 8, 9, 11, and 123 under 35 U.S.C. § 102(e) as
anticipated by the disclosure of U.S. Patent Application Publication
2010/0143798 A1 published in the name of Zhamu on June 10, 2010
(hereinafter referred to as “Zhamu”) as evidenced by U.S. Patent
Application Publication 2006/0127740 A1 published in the name of Morris
on June 15, 2006 (hereinafter referred to as “Morris”).
DISCUSSION
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we determine that Appellants have not identified
reversible error in the Examiner’s finding that Zhamu, as evidenced by
Morris, describes the subject matter recited in claims 1, 2, 4, 5, 8, 9, 11, and
12 within the meaning of 35 U.S.C. § 102(e). In addition, Appellants have
not challenged the Examiner’s rejection of claim 1 under 35 U.S.C. § 112,
second paragraph as being indefinite. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 112, second paragraph rejection of claim 1, and the

3 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(1)(iv) (“[w]hen multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.”) Appellants argue claims 1, 2, 4, 5, 8, 9,
11, and 12 as a group on the basis of limitations in claim 1. (See generally
App. Br. 5–9.) Therefore, for the purposes of this appeal, we select claim 1
as representative and decide the propriety of the rejection based on this
claim alone.

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Examiner’s § 102(e) rejection of claims 1, 2, 4, 5, 8, 9, 11, and 12 as
anticipated by Zhamu, as evidenced by Morris, for the reasons set forth in
the Final Rejection and the Answer. We add the discussion below primarily
for emphasis and completeness.
Rejection of Claim 14 under § 112, second paragraph
Appellants do not dispute the Examiner’s finding that “the
electrolyte” recited in claim 1 lacks antecedent basis. (Compare Ans. 3 with
App. Br. 3–26.) Nor do Appellants dispute the Examiner’s finding that this
lack of antecedent basis renders claim 1 indefinite. (Compare Ans. 3 with
App. Br. 3–26.) Instead, Appellants indicate for the first time in the Reply
Brief that they believe the rejection was overcome by an amendment to
claim 1 filed August 19, 2013, the day before Appellants filed their Appeal
Brief, in which “the electrolyte” was replaced with “an electrolyte”. (Rep.
Br. 2.) Appellants urge in the Reply Brief that if “the Examiner has refused
entry of the amendment without informing the Appellants of such refusal,
the Board is respectfully requested to direct the Examiner to enter the
amendment.” (Id.) We find no indication in the record that the amendment
filed August 19, 2013 was entered, and we advise Appellants that any non-
entry of after-final amendments is reviewable by a timely filed petition
under 37 C.F.R. § 1.181, and is therefore not within the jurisdiction of the

4 In the event of further prosecution of this application, we remind both
Appellants and the Examiner that dependent claims incorporate all of the
limitations, including any indefinite limitations, of the independent claims
from which they depend.
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Board. In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1395, 1403–1404 (CCPA 1971)); Ex Parte Frye, 94
USPQ.2d 1072, 1078 (BPAI 2010) (precedential).
Because Appellants do not dispute that lack of antecedent basis for the
phrase “the electrolyte” in claim 1 renders the claim indefinite, we
summarily affirm the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Rejection of Claim 1 under § 102(e)
Appellants do not dispute the Examiner’s finding that Zhamu
discloses a lithium ion battery (corresponding to the claimed electrochemical
cell) comprising an anode that includes a plurality of nanowires, a cathode
that includes metal sulfides, and a separator disposed between the anode and
cathode. (Compare Ans. 3, citing Zhamu §§ 86, 102, 107, Fig. 2B with App.
Br. 5–9.) Appellants also do not dispute the Examiner’s finding that Zhamu
discloses that the separator may be a porous polypropylene film. (Compare
Ans. 3, citing Zhamu § 113 with App. Br. 5–9.) Appellants further do not
dispute the Examiner’s reliance on Morris as providing evidence that the
conventional porous polypropylene (polyelefin) separator disclosed in
Zhamu is flexible, and accommodates expansion and contraction of
components of the lithium ion battery (electrochemical cell). (Compare
Ans. 3–4, citing Morris ¶ 17 with App. Br. 5–9); In re Baxter, 952 F.2d 388,
390 (Fed. Cir. 1991) (“Extrinsic evidence may be considered when it is used
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to explain, but not to expand, the meaning of a reference [relied upon to
show anticipation].”).
Instead, Appellants assert that the flexible transfer member recited in
claim 1 must be structured and arranged within an electrochemical cell such
that the electrolyte does not flow through or around it. (App. Br. 6.)
Appellants argue that such a flexible transfer member contrasts with porous
“prior art cells such as described in Zhamu . . . [in which] any electrolyte
flows through or around the separator.” (App. Br. 7) We find this argument
lacking in persuasive merit because it is based on limitations that do not
appear in claim 1, as discussed below. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
We begin our analysis by determining the meaning of the claims,
giving terms the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art. In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(During prosecution of patent applications, “the 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.”).
Claim 1 recites a “flexible transfer member,” and claim 2 recites that
the flexible transfer member of claim 1 comprises a separator. Claim 3,
which depends from claim 2, recites that the electrochemical cell further
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comprises a pouch, and recites that the separator is less rigid than the pouch.
Claim 4 depends from claim 3 and recites that “the separator is configured to
allow fluid to pass from the first electrode to the second electrode.” Because
claims 3 and 4 indirectly depend from claim 1, claims 3 and 4 necessarily
further limit the scope of claim 1, and claim 1 therefore does not exclude a
flexible transfer member that is less rigid than the pouch and allows fluid to
pass from the first electrode to the second electrode. In re Tanaka, 640 F.3d
1246, 1250 (Fed. Cir. 2011) (“Claims of narrower scope can be useful to
clarify the meaning of broader, independent claims under the doctrine of
claim differentiation.”); 37 C.F.R. § 1.75(c) (“One or more claims may be
presented in dependent form, referring back to and further limiting another
claim or claims in the same application.).
In addition, the Specification defines a “transfer member” as “a
component through which pressure is transferred between electrodes or
which allows the respective volumes of the electrodes to be modified in an
inverse relationship.” (Spec. ¶ 23.) The Specification further discloses that
a “separator that is less rigid than the cell pouch, and which allows fluid to
move between electrodes, functions as both a volumetric transfer member
and a pressure transfer member,” and the Specification indicates that such
separators can be made of porous polypropylene. (Spec. ¶ 24.)
Accordingly, the Specification and the claims indicate that the flexible
transfer member recited in claim 1 includes flexible porous polypropylene
which allows fluid to pass from the first electrode to the second electrode,
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and therefore functions as both a volumetric transfer member and a pressure
transfer member. Thus, claim 1 does not require the flexible transfer
member to be structured and arranged within an electrochemical cell such
that electrolyte does not flow through or around it, as Appellants assert.
Accordingly, Appellants’ attempt to distinguish the claimed flexible transfer
member from Zhamu’s flexible porous polypropylene separator is
unavailing. (App. Br. 6–7.)
Appellants further argue that the flexible transfer member recited in
claim 1 must be configured such that as the pressure in one anode increases,
the electrolyte forces the separator to deform. (App. Br. 6.) Appellants
argue that this contrasts with prior art electrochemical cells such as the
lithium ion battery described in Zhamu in which “the electrolyte does not
deform the separator region,” but instead physical contact between the active
materials/inert matrix in the electrode physically deforms the separator.
(App. Br. 7.)
As discussed above, there is no dispute that Zhamu, as evidenced by
Morris, discloses a flexible, porous polypropylene separator. (Compare
Ans. 3–4 with App. Br. 5–9.) Like Zhamu, Appellants’ Specification
discloses the flexible transfer member recited in claim 1 that can be made of
flexible porous polypropylene (Spec. ¶ 24). In other words, Zhamu’s
separator appears to be made of material identical to the material of which
the flexible transfer member recited in claim 1 is made. In addition, we find
no disclosure in the Specification indicating that the flexible transfer
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member recited in claim 1 must be configured in any particular way in order
for the electrolyte to deform the separator as pressure increases in an anode
section. Like Appellants’ Specification, Zhamu also does not appear to
disclose how the separator is configured in the lithium ion battery, and one
of ordinary skill in the art would therefore have understood Zhamu’s
separator to be configured in the battery in a conventional manner as
explained by Morris. Because Zhamu’s separator appears to be structurally
identical to the flexible transfer member recited in claim 1, there is a
reasonable basis for finding that Zhamu’s separator is capable of being
deformed by the electrolyte in the anode section as pressure increases in an
electrode of Zhamu’s lithium ion battery. See In re Schreiber, 128 F.3d
1473, 1477-79 (Fed. Cir. 1997)(“Schreiber’s contention that his structure
will be used to dispense popcorn does not have patentable weight if the
structure is already known” and “the Board [correctly] found that the Harz
dispenser [for dispensing lubricating oil] would be capable of dispensing
popcorn in the manner set forth in claim 1 of Schreiber’s application.”).
Thus, the burden is shifted to Appellants to show that the structure of the
separator taught Zhamu is materially different from the structure of
Appellants’ flexible transfer member. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). (“Where . . . the claimed and prior art products are identical
or substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess the characteristics of his
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claimed product.”); see In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
(“[W]hen the prior art evidence reasonably allows the PTO to conclude that
a claimed feature is present in the prior art, the evidence ‘compels such a
conclusion if the applicant produces no evidence or argument to rebut it.’”
(quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)). However,
Appellants do not demonstrate that the flexible transfer member recited in
claim 1 is composed of a material that is patentably different from the
material of Zhamu’s separator, or that the flexible transfer member recited in
claim 1 has a particular configuration within the electrochemical cell that
patentably differs from the conventional configuration of Zhamu’s separator.
(App. Br. 3–9.) Nor do Appellants demonstrate that Zhamu’s separator is
not capable of being deformed due to the electrolyte as pressure increases in
an electrode of Zhamu’s lithium ion battery. (Id.)
Accordingly, we sustain the Examiner’s decision rejecting claim 1
under 35 U.S.C. § 102(e).
Rejection of Claims 2, 4, 5, 8, 9, 11, and 12 under § 102(e)
Appellants rely on the arguments advanced above in connection with
claim 1 for dependent claims 2, 4, 5, 8, 9, 11, and 12. (App. Br. 9.) We
accordingly sustain the Examiner’s rejection of these claims based on the
reasons stated above for claim 1.
CONCLUSION
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In view of the reasons set forth in the Final Action, Answer, and
above, we affirm the Examiner’s § 102(e) rejection of claims 1, 2, 4, 5, 8, 9,
11, and 12, and affirm the Examiner’s § 112, second paragraph rejection of
claim 1.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

KRH