Ex Parte Martinez et al

Patent Trials and Appeals Board

Feb 6, 2019

14350890 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/350,890 06/16/2014 Jesus V alenciano Martinez
23413 7590 02/08/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
EXD0026US 6454
EXAMINER
GATEWOOD, DANIELS
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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 JESUS VALENCIANO MARTINEZ, LUCA BRISOTTO,
and FRANCISCO TRINIDAD LOPEZ
Appeal2018-002872
Application 14/350,890
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's decision to reject claims 1, 3---62, and 9-16 under 35 U.S.C.
§ 103(a) as obvious over Clement3 in view of Wetzel4 and adding
1 Appellant is the applicant, Exide Technologies, which, according to the
Brief, is the real party in interest. Appeal Br. 2.
2 The Examiner lists claim 2 as rejected, but claim 2 has been canceled.
Amendment of Sept. 6, 2016.
3 Clement et al., US 2011/0318643 Al, published Dec. 29, 2011.
4 Wetzel et al., WO 2010/098796 Al, published Sept. 2, 2010.
Appeal2018-002872
Application 14/350,890
Monconduit5 to reject claims 7 and 8. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM-IN-PART. Because our analysis differs from that of the
Examiner, we denominate our affirmance as involving a new ground of
rejection.
The claims are directed to a flooded lead-acid battery containing a
pasting substrate. Claim 1 is illustrative:
1. A flooded lead-acid battery, comprising:
a container;
a plurality of positive plates disposed in the container;
a plurality of negative plates disposed in the container;
a pasting substrate embedded into an active material of at
least one surface of either the positive plates or the negative
plates of each respective plurality,
wherein the pasting substrate has a basis weight of
23 g/m2 to 31 g/m2 and
the pasting substrate and [sic] comprises greater
than about 50 wt.% glass fibers based on a total weight of
the pasting substrate,
wherein the pasting substrate comprises a blend of
fibers having an average fiber diameter of 5 µm to 8 µm
with fibers having an average fiber diameter of 11 to 14
µm; and
an electrolyte disposed in the container to a sufficient
level to flood the plurality of positive and negative plates.
Appeal Br. 19 (claims appendix) (formatting added).
5 Monconduit, US 2004/0018427 Al, published Jan. 29, 2004.
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Application 14/350,890
OPINION
The Examiner rejects claims 1, 3---6, and 9-16 as obvious over
Clement in view of Wetzel and adds Monconduit to reject claims 7 and 8.
Final Act. 5-8. We sustain the rejection of claims 1, 3-5, and 11-16, but we
do not sustain the rejections of claims 6-10. Although we agree with the
Examiner that the combination of Clement and Wetzel would have rendered
claims 1, 3-5, and 11-16 obvious within the meaning of§ 103, we
determine that the Examiner's explanation of the rejection was inadequate.
Therefore, we present the following explanation as a new ground of
rejection as to the rejection of claims 1, 3-5, and 11-16.
First, there is no dispute that flooded lead-acid batteries including a
container, a plurality of positive plates, negative plates, and electrolyte
disposed in the container as required by claim 1 were known in the art.
Clement ,r 2; Wetzel Fig. 2, ,r,r 42--43.
As to the pasting substrate required by claim 1, Clement's sheet
comprising glass microfibers, cut glass filaments, and binder (Clement
,r,r 17, 24) is a pasting substrate as it is a substrate that holds pasting active
material (Clement ,r 14).
As to the basis weight of the pasting substrate, Clement teaches a
weight range of greater than or equal to 10 g/m2, which encompasses the 23
g/m2 to 31 g/m2 range of claim 1. See Clement ,r 39. The preferred ranges
overlap the range of the claim. Id.
As to the percentage of glass fibers, Clement teaches a blend of glass
microfibers and cut glass filaments in ranges that result in an overlap with
the greater than about 50 wt% range of claim 1. Clement ,r,r 25-30.
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Application 14/350,890
(disclosing ranges of 10 to 99.9 parts for glass microfibers and Oto 70 parts
for cut glass filaments).
As to the diameters of the blend of fibers, Clement discloses a range
abutting the 5 µm to 8 µm range of claim 1 for the microfibers and a range
encompassing the 11 µm to 14 µm range for the cut glass filaments.
Clement ,r,r 22, 37.
Under the facts of the present case, the diameter ranges taught by
Clement are sufficient to give rise to a prima facie case of obviousness
because the ranges are not taught as restrictive in a way that teaches away
from other diameters that might work. Clement states that "[m]ore
particularly, said glass microfibers may present a diameter less than 5
micrometers (µm)" ( Clement ,r 22 ( emphasis added)) and " [ m] ore
particularly, said material of the invention may be such that said cut glass
filaments present a diameter greater than or equal to 5 µm" ( Clement ,r 3 7
( emphasis added)). The words "more particularly" and "may" connote
flexibility in the ranges. See In re Patel, 566 F. App'x 1005, 1010 (Fed. Cir.
2014) (explaining that an obviousness rejection based on ranges that
"approach[] each other might well be appropriate where there is teaching in
the prior art that the end points of the prior art range are approximate, or can
be flexibly applied.").
A claimed invention can be rendered prima facie obvious by a prior
art reference that discloses a range that touches the range recited in the
claim. In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974)). The ranges disclosed by
Clement are not presented as exact cut off points and Clement does not state
any particular reason for selecting 5 micrometers as the maximum for the
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Application 14/350,890
microfiber range. There is no specific teaching away from slightly higher
diameters for the microfibers. Thus, Clement provides evidence that the
outer boundaries of the ranges are not critical. The evidence is sufficient to
support a prima facie case of obviousness and the burden shifts to Appellant
to show that the prior art either taught away from the 5-8 micrometer range
of claim 1 or to show that Appellant obtains unexpected results using
diameters in the range of the claim. See In re Malagari, 499 F.2d at 1303;
see also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (discussing
cases in which a difference between the claimed invention and the prior art
was a concentration range or difference in another variable and stating that
"in such a situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.").
This leaves us with the requirement that the pasting substrate be
embedded into an active material of at least one surface of either the positive
plates or the negative plates. There is no particular extent of embedding
required by claim 1. Even the slightest embedding will meet the embedding
requirement of the claim.
We determine that the required embedding inherently occurs, or
would have been obvious, in the process of using the pasting substrate of
Clement to enable the active material paste to be held mechanically and
more securely close to its initial position within the battery as taught by
Clement. Clement ,r 14. The pasting substrate of Clement has a high degree
of porosity, i.e., greater than or equal to 85%, preferably greater than or
equal to 90%. Clement ,r,r 15, 40. The active material is itself a paste.
Clement ,r 2 (paste based on lead/lignin/mineral fibers/acid). Given the
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Application 14/350,890
porosity of the pasting substrate, the paste consistency of the active material,
and the desire to hold the active material mechanically, some amount of
embedding would inherently occur or at least would have been obvious to
achieve the desired mechanical hold.
Wetzel supports a conclusion of obviousness with regard to
embedding. The purpose of the pasting substrate is to retain the active
material on the grid while the plate is being fabricated. Clement ,r 2. Wetzel
discloses that the pasting substrate prevents the separation of the active
material from the grids and plates and/or ensures easy handling of the active
material during manufacture of the plates. Wetzel ,r 3. Wetzel specifically
states that "[i]t is also known to embed in active material a pasting material
formed of polyesters, polypropylenes, or viscous rayon, instead of paper, to
prevent or reduce separation and handling problems." Id. (emphasis added).
Wetzel also discloses that the pasting textile of the invention disclosed in
Wetzel is "provided on or into the active material" (Wetzel ,r 5 ( emphasis
added)) in conformance with the idea that embedding was known in the art.
Thus, embedding was known in the art and the teachings of Clement and
Wetzel render the flooded lead-acid battery of claim 1 obvious.
Turning to claim 3, we note that claim 3 is improperly dependent on
itself. It appears it is supposed to depend from claim 1, not claim 3.
Claim 3 limits the average length of fibers within the blend. It recites
that "the pasting substrate comprises a blend of fibers having an average
fiber length of 5 millimeters to 7 millimeters with fibers having an average
fiber length of 11 millimeters to 14 millimeter[ s]."
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Clement does not disclose the length of the microfibers, but discloses
that the cut glass filaments have a length of 3 mm or greater, a range that
encompasses the ranges of claim 3. Clement ,r 3 7.
The microfibers of Clement inherently have lengths. It follows that
the ordinary artisan would have to select microfibers of useful length just as
one would have to select the useful lengths of the cut glass filaments.
Finding the optimal or workable range of average fiber lengths would have
been a matter of routine experimentation well within the skill of the ordinary
artisan. "[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation." E.I. DuPont de Nemours & Co. v. Synvina C. V., 904 F.3d
996, 1006 (Fed. Cir. 2018) (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955)). The burden has shifted to Appellant to rebut the prima facie case of
obviousness. Id.
Turning to claim 4, we find that Clement teaches forming the pasting
substrate as a non-woven substrate given that Clement teaches using a
papermaking process to form the pasting substrate. See, e.g., Clement ,r 50.
A substrate made by a papermaking machine is not woven. Moreover,
Wetzel suggests forming pasting textile substrates into non-woven fiber
webs. Wetzel ,r 59. It would have been obvious to form the pasting
substrate of Clement as a non-woven web as Wetzel suggests that this form
of substrate material will function as a pasting substrate in a lead acid
battery.
As to claim 5, the average diameter/fiber length ratios would have
been obvious for the same reasons the diameter and length requirements of
claims 1 and 3 would have been obvious. "The mere fact that multiple
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Application 14/350,890
result-effective variables were combined does not necessarily render their
combination beyond the capability of a person having ordinary skill in the
art." In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012).
As to claims 11-16, these claims further limit the extent of embedding
from at least 5% of its nominal thickness ( claim 11 ), to at least 10% ( claim
12), at least 20% (claim 13), at least 50% (claim 14), between 10 and 90%
( claim 15), and between 50 and 7 5% ( claim 16).
Given that the general condition of embedding was known in the art,
as evidenced by Wetzel, the prior art supports a determination that finding
the workable or optimal extent of embedding would have been a matter of
routine experimentation for obtaining the desired mechanical hold and ease
of handling. Clement ,r 14; Wetzel ,r 3. The burden thus shifts to Appellant
to rebut the prima facie case of obviousness such as by showing that the
ranges of the claims provide unexpected results.
As to the rejection of claim 6, and claims 7-10 that depend from claim
6, we agree with Appellant that the Examiner reversibly erred in rejecting
these claims. Appeal Br. 11; Reply Br. 4--5.
Claim 6 requires the pasting substrate thickness have a compressed
thickness within the container that is at least 10 to 20% less than the initial
thickness. The Examiner finds that paragraph 40 of Clement, which teaches
that Clement's pasting substrate is porous, supports a finding that the
substrate is compressible and a result-effective variable. Final Act. 6. This
finding is not supported. Clement is not concerned with compressibility.
There is no convincing evidence that the ordinary artisan would have viewed
compressibility as a result-effective variable. Nor has the Examiner
adequately established that a porous material is necessarily compressible.
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A preponderance of the evidence fails to support the Examiner's
rejection of claim 6 and claims 7-10, which depend from claim 6. The
Examiner's application of Monconduit to reject claims 7 and 8 does not cure
the deficiency.
CONCLUSION
In summary:
We sustain the Examiner's rejection of claims 1, 3-5, and 11-16
under 35 U.S.C. § 103(a) as obvious over Clement in view of Wetzel, but
because our reasoning differs from that of the Examiner, we denominate our
affirmance as a new ground of rejection to give Appellant an opportunity to
respond.
We do not sustain the Examiner's rejection of claims 6, 9, and 10
under 35 U.S.C. § 103(a) as obvious over Clement in view of Wetzel.
We do not sustain the Examiner's rejection of claims 7 and 8 under 35
U.S.C. § 103(a) as obvious over Clement, Wetzel, and Monconduit.
DECISION
The Examiner's decision is affirmed-in-part.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
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37 C.F.R. § 4I.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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