Ex Parte Nardi

Board of Patent Appeals and Interferences

Mar 31, 2003

09213544 (B.P.A.I. Mar. 31, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 22

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN C. NARDI

____________

Appeal No. 2002-1116
Application No. 09/213,544
____________

HEARD: February 11, 2003
____________

Before WALTZ, PAWLIKOWSKI and MOORE, Administrative Patent
Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 1-13 and 15-21. Claim 14 has been
cancelled.
Claim 1 is representative of the subject matter on appeal,
and is set forth below:
1. An electrochemical cell comprising a positive
electrode having an active material and an
electrically conductive carbon material including
expanded graphite particles having a kerosene
absorption value in the range of 2.2 to 3.5 ml/g.

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Application No. 09/213,544

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On page 5 of the brief, appellant indicates that the claims
stand or fall together, and we therefore consider claim 1 in
this appeal. 37 CFR § 1.192(c)(7)(2000).
The examiner relies upon the following reference as
evidence of unpatentability:
Mototani et al. (Mototani) 5,482,798 Jan. 09, 1996

Claims 1-13 and 15-21 stand rejected under 35 U.S.C. § 103
as being unpatentable over Mototani.1

OPINION
For the reasons set forth in the answer and below, we
affirm the rejection.
On page 3 of the answer, the examiner finds that Mototani
discloses alkaline manganese batteries containing manganese
dioxide and expanded graphite, and refers to column 3, lines 40-
52 of Mototani. The examiner recognizes that Mototani does not
disclose the kerosene absorption values of the disclosed
expanded graphite.
In the paragraph bridging pages 3-4 of the answer, the
examiner states that Mototani teaches that expanded graphites
may be formed from a variety of graphitic starting materials,
including artificial graphite, naturally occurring graphite, and
flaky graphite, and the examiner refers to column 5, line 24
through column 6, line 3 of Mototani.
We agree with the examiner’s findings as described above.
We also refer to example 1 found in column 3 of Mototani
wherein the manner in which the battery is prepared is set

1 We do not include claim 14 in this rejection because claim 14 has
been canceled. See Paper No. 8 (the amendment filed on October 19,
2000).
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Application No. 09/213,544

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forth. Specifically, example 1 indicates that the carbon
material used is made from conventional artificial graphite
particles or expanded graphite particles which have been
prepared by introducing sulfuric acid “into between interlayers
of the artificial graphite used as starting material and heating
rapidly the graphite at a temperature of from 800° to 1000°C, to
expand greatly spaces between the interlayers of the graphite”.
We also observe that page 8 of appellant’s specification
beginning at line 8, indicates that the expanded graphite
additive preferably includes a natural graphite. This graphite
is soaked in sulfuric acid and nitric acid until each of the
graphite layers has been acid soaked therein. Once the graphite
layers are acid soaked by vacuum impregnation, the graphite is
ready for heat treatment at a temperature of approximately
1000°C, and within a range of from 850°C to 1100°C.
As noted on page 3 of the answer, the examiner states that
because the process for forming expanded graphite as disclosed
by appellant (as described in the previous paragraph) is similar
to the process disclosed by Mototani, the materials produced
would also be similar. We must agree for the following reasons.
We refer to the case of In re Best, 562 F.2d 1252, 1255,
195 USPQ2d 430, 433 (CCPA 1970). In this case, the court sets
forth the following:
[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed
by things in the prior art, does not cause a claim
drawn to those things to distinguish over the prior
art. Additionally, where the Patent Office has reason
to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the
authority to require the applicant to prove that the
subject matter shown to be in the prior art does not
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Application No. 09/213,544

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possess the characteristic relied on. [58 CCPA at
1031, 439 F.2d at 212-13, 169 USPQ at 229.] This
burden was involved in In re Ludtke, 58 CCPA 1159,
441 F.2d 660, 169 USPQ 563 (1971), and is applicable
to product and process claims reasonably considered as
possessing the allegedly inherent characteristics.

Hence, it is applicant’s burden to prove that the subject
matter shown to be in the prior art does not possess the
characteristics relied on for patentability. However, we
determine that appellant has not met this burden for the
following reasons.
On page 9 of the brief, appellant indicates that he has
attempted to manufacture expanded graphite particles according
to the teachings described in Mototani, but submits that
Mototani does not describe, in sufficient detail, how to make
the expanded graphite “so as to enable one skilled in the art to
make samples with a definite known kerosene absorption”. This
is also indicated on page 2 of the Declaration of Paper No. 9.
Hence, the Declaration of Paper No. 9 sets forth examples of
several commercially available expanded graphites with their
corresponding kerosene absorption values. However, this
Declaration does not set forth an example representative of the
expanded graphites of Mototani.
From our perspective, the disclosure of Mototani is
presumed to be enabling because Mototani, a U.S. Patent, enjoys
a statutory presumption of validity, 35 U.S.C. § 282, and
enablement is a prerequisite to validity, 35 U.S.C. § 112, first
paragraph. Compare In re Spence, 261 F.2d 244, 246, 120 USPQ
82, 83 (CCPA 1958); see also In re Vaeck, 947 F.2d 488, 496
n.23, 20 USPQ2d 1438, 1444-45 n.23 (Fed. Cir. 1991)(“The first
paragraph of 35 U.S.C. 112 requires nothing more than objective
enablement. In re Marzocchi, 439 F.2d 200, 223, 169 USPQ 367,
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Application No. 09/213,544

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369 (CCPA 1971). How such a teaching is set forth, either by
use of illustrative examples or by broad terminology, is
irrelevant.”). This presumption has not been rebutted by any
objective evidence of record. In re Sasse, 629 F.2d 675, 679,
207 USPQ 107, 111 (CCPA 1980); Spence, 261 F.2d at 246, 120 USPQ
at 83. For example, on this record, the appellants have not
presented any clear and convincing evidence that one of ordinary
skill in the art would not have been able to make the expanded
graphite material of Mototani from the information provided in
Mototani, and the knownledge in the art at the time of the
invention, without undue experimentation. Compare Vaeck, 947
F.2d at 495, 20 USPQ2d at 1444.
Because appellant has not met the aforementioned burden, we
are unconvinced that a representative example of Mototani cannot
be reproduced.
Thus, having considered all of the evidence and arguments
advanced by the examiner and appellants, we determine that the
evidence of obviousness, on balance, outweighs the evidence of
nonobviousness. Accordingly, we affirm the examine’s decision
rejecting all of the appealed claims under 35 U.S.C. § 103.

Appeal No. 2002-1116
Application No. 09/213,544

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED

THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
)
)BOARD OF PATENT
) APPEALS AND
BEVERLY A. PAWLIKOWSKI ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )

BAP/sld
Appeal No. 2002-1116
Application No. 09/213,544

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EVEREADY BATTERY COMPANY, INC
PRICE HENEVELD COOPER DEWITT & LITTON
25225 DETROIT ROAD
P.O. BOX 450777
WESTLAKE, OH 44145