Ex Parte Kozinsky et al

Patent Trial and Appeal Board

Dec 30, 2016

12437822 (P.T.A.B. Dec. 30, 2016)

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.
12/437,822 05/08/2009 Boris Kozinsky 1576-0305 8305
28078 7590 12/30/2016
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
12/30/2016 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 BORIS KOZINSKY, JOHN F. CHRISTENSEN, NALIN
CHATURVEDI, JASIM AHMED, and INNA KOZINSKY
____________

Appeal 2015-007322
Application 12/437,822
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 rejecting claims 1–14.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Appellants identify the Real Party in Interest as Robert Bosch GmbH,
LLC. (Appeal Brief filed February 3, 2015 (“App. Br.”), 2.)
2 Non-Final Office Action entered September 5, 2014 (“Office Act.”).
Appeal 2015-007322
Application 12/437,822

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STATEMENT OF THE CASE
The subject matter on appeal is generally directed to an
electrochemical cell comprising a first electrode and a second electrode
spaced apart from the first electrode. (Spec. ¶ 16.) The second electrode
includes a form of lithium and a substrate with active material, and the
substrate is formed with a plurality of interconnected chambers defined by a
respective one of a plurality of inwardly curving walls. (Id.)
Details of the appealed subject matter are recited in representative
claim 1, which is reproduced below from the Claims Appendix to the Appeal
Brief:
1. An electrochemical cell, comprising:
a first electrode; and
a second electrode spaced apart from the first electrode,
the second electrode including
a substrate with active material into lithium is inserted,
the substrate formed with a plurality of interconnected
chambers defined by a respective one of a plurality of inwardly
curving walls, the active material defining the plurality of
inwardly curving walls, and
a form of lithium.

(App. Br. 14, Claims Appendix.)
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer entered on June 1, 2015
(“Ans.”):
Claims 1–6 and 8–13 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of U.S. Patent application 2008/0038638 Al, published in the
name of Zhang et al. on February 14, 2008 (hereinafter referred to as
“Zhang”); and
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Application 12/437,822

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Claims 7 and 14 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Zhang in view of U.S. Patent application 2004/0214085 Al,
published in the name of Sheem et al. on October 28, 2004 (hereinafter
referred to as “Sheem”).
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the Examiner’s rejection of claims 1–6
and 8–13 under 35 U.S.C. § 102(b), and the Examiner’s rejection of claims 7
and 14 under 35 U.S.C. § 103(a), for the reasons set forth in the Office
Action and the Answer. We add the discussion below primarily for
emphasis and completeness.
Rejection of Claims 1–6 and 8–13 under 35 U.S.C. § 102(b)3
Appellants do not dispute the Examiner’s finding that Zhang discloses
an anode material with lithium-alloying silicon particles (active material) for
a lithium ion battery. (Compare Office Act. 3, with App. Br. 3–11.) Nor do
Appellants dispute the Examiner’s finding that Zhang discloses
incorporating the lithium-alloying particles within a highly porous inorganic
ceramic support matrix (substrate) that has porosity channels and expansion
accommodation pores (chambers interconnected by the channels).
(Compare Office Act. 3; Ans. 7, with App. Br. 3–11.) Appellants admit that

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). Appellants rely on the arguments presented for claim 1 to
address the rejection of claims 2–6 and 8–13. (App. Br. 11–12.) Therefore,
for the purposes of this appeal, we decide the propriety of the rejection of
claims 1–6 and 8–13 based on claim 1 alone.

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Zhang discloses that the walls of the porous matrix (substrate) are inwardly
curved. (App. Br. 6.) The Examiner finds that the lithium-alloying particles
would define the inwardly curving walls of the matrix by virtue of their
incorporation within the matrix. (Ans. 7.) Appellants do not dispute the
Examiner’s finding that Zhang discloses that the porosity channels in the
support matrix allow lithium ions within a solvent electrolyte to diffuse
through the matrix. (Compare Office Act. 3, with App. Br. 3–11.) Nor do
Appellants dispute the Examiner’s finding that a lithium ion battery
inherently has a negative electrode separated from a positive electrode.
(Compare Office Act. 3, with App. Br. 3–11.)
Appellants argue that Zhang does not disclose an active material that
defines inwardly curving walls because Figure 1 of Zhang depicts the
lithium-alloying particles as beads with outwardly curved surfaces, and
depicts the beads positioned on the inwardly curved wall of Zhang’s
substrate. (App. Br. 4–6.) Appellants contend that the Examiner fails to
explain any nexus between the location of the active material disclosed in
Zhang and any curvature defined by the active material. (App. Br. 4–5.)
We begin our analysis by determining the meaning of “the substrate
formed with a plurality of interconnected chambers defined by a respective
one of a plurality of inwardly curving walls, the active material defining the
plurality of inwardly curving walls” recited in claim 1, 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
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specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.”).
Appellants’ Specification indicates that the electrochemical cell of
their invention comprises a negative electrode that includes a substrate
formed of a mixture of an active material and inert materials. (Spec. ¶ 21.)
Appellants’ Specification further indicates that the substrate includes
chambers or pores that have inwardly curing walls and are interconnected by
passages. (Spec. ¶¶ 22, 27.) Thus, under a broadest reasonable
interpretation of the language of claim 1 consistent with the Specification,
the anode active material is incorporated into the porous substrate and is part
of the porous substrate, and the inwardly curving walls of the pores in the
substrate are therefore formed from (or defined by) the active material.
Zhang discloses that lithium-alloying particles (anode active material)
can be incorporated within a highly porous matrix (substrate), and discloses
that ball milling or other physical mixing techniques, as well as chemical
vapor deposition processes, can be used to incorporate the particles into the
porous matrix. (Zhang ¶ 22.) In light of Appellants’ admission in their
Appeal Brief (discussed above) that Zhang discloses that the walls of the
porous matrix (substrate) are inwardly curved (App. Br. 6), we find no error
in the Examiner’s finding that the lithium-alloying particles disclosed in
Zhang would define the admitted inwardly curving wall of Zhang’s porous
matrix due to their incorporation within or deposition on the porous matrix,
as recited in claim 1 as we have interpreted it. Appellants’ arguments
regarding Figure 1 of Zhang are therefore unpersuasive of reversible error
because they do not take into account the entirety of Zhang’s disclosures,
particularly the relied-upon disclosures in paragraph 22.
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Appellants also argue that the lithium-alloying particles disclosed in
Zhang expand when they are lithiated, which places the outer surface of the
lithium-alloying particles (active material) into tension, whereas in the
electrochemical cell of claim 1, in which the active material defines
inwardly curving walls, the active material is placed into compression during
lithiation. (App. Br. 6–7.) Appellants contend that the device disclosed in
Zhang therefore suffers from the limitations of the prior art discussed in
Appellants’ Specification in which the surface of a passivation layer formed
on an electrode fractures when the active material is placed into tension. (Id.
citing Spec. ¶ 11.)
However, Appellants’ arguments do not take into account Zhang’s
teaching discussed above of incorporating the lithium-alloying particles
within the porous matrix, resulting in the lithium-alloying particles defining
the inwardly curving walls of the matrix as required by claim 1. (Zhang
¶ 22.) According to Appellants’ Specification, such a configuration would
place the lithium-alloying particles disclosed into Zhang into compression
during lithiation, contrary to Appellants’ arguments. (Spec. ¶ 27.)
Appellants further argue that the Examiner misconstrues claim 1 to
only require a substrate with inwardly curing walls and some form of an
active material, which is contrary to the plain meaning of the claim and the
way in which the subject matter of claim 1 is described in Appellants’
Specification. (App. Br. 8–10.) Appellants contend that the Examiner’s
construction improperly renders superfluous the limitation recited in claim 1
that the active material defines the plurality of inwardly curving walls.
(App. Br. 10–11.)
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However, Appellants arguments are unpersuasive of reversible error
because they do not take into consideration the Examiner’s reliance on
Zhang’s disclosure of incorporating the lithium-alloying particles (active
material) within the porous matrix, resulting in the lithium-alloying particles
(active material) defining the inwardly curving walls of the matrix as
required by claim 1. (Ans. 7.)
Accordingly, we sustain the Examiner’s rejection of claims 1–6 and
8–13 under 35 U.S.C. § 102(b).
Rejection of Claims 7 and 14 under 35 U.S.C. § 103(a)
Appellants rely on the same arguments advanced in connection with
the rejection of claim 1 under U.S.C. § 102(b) for the rejection of claims 7
and 14 under 35 U.S.C. § 103(a), and do not substantively address or further
distinguish the cited secondary reference based on the additional limitations
of dependent claims 7 and 14. (App. Br. 12–13.) Therefore, we sustain the
Examiner’s rejection of claims 7 and 14 under 35 U.S.C. § 103(a) for the
reasons stated above for claim 1.

DECISION
In view of the reasons set forth above and in the Office Action and the
Answer, we affirm the Examiner’s decision rejecting claims 1–6 and 8–13
under § 102(b) and rejecting claims 7 and 14 under 35 U.S.C. § 103(a).
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