Ex Parte Phares

Patent Trials and Appeals Board

Jun 20, 2019

13905730 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/905,730 05/30/2013
23628 7590 06/24/2019
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
Denis Phares
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.
D0796.70000US01 1355
EXAMINER
MOHADDES, LADAN
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENIS PHARES
Appeal 2017-011689
Application 13/905,730
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 1-28 under 35 U.S.C. § 103(a) as
unpatentable over at least the basic combination of Eskra et al. (U.S.
2013/0309414 Al, published Nov. 21, 2013, (hereinafter "Eskra")) in view
of either one of Tsutsumi et al. (U.S. 2012/0214040 Al; Aug. 23, 2012
(hereinafter "Tsutsumi")) or Gu et al. (U.S. 2006/0172179 Al; Aug. 3, 2006
1 Appellant is the applicant, Dragonfly Energy Corp., which is also
identified as the real party in interest (Appeal Br. 2).
Appeal 2017-011689
Application 13/905,730
(hereinafter "Gu"))2. An oral hearing was held on June 17, 2019. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight the main disputed limitation):
1. A process for forming a conductive particle film
compnsmg:
mixing conductive particles with a binder to form a
mixture;
aerosolizing the mixture;
applying a charge to the aerosol mixture;
resistively heating a substrate; and
applying the charged aerosolized mixture to at
least one side of the heated substrate to form the
conductive particle film.
Independent claim 12 is directed to a system corresponding to the
method of claim 1. Independent claim 28 is directed to a method similar to
claim 1 except the last clause recites "simultaneously applying the charged
aerosol mixture to both sides of the heated substrate at a location the heat is
applied to the substrate to form the conductive particle film."
Appellant argues the claims mainly as a group, and focuses mainly on
independent claim 1, but also presents separate remarks for dependent claim
9 (Appeal Br. 14) and the group of claims 23, 26, and 28 (Appeal Br. 15-
17). Appellant relies upon the arguments for claim 1 for independent claim
12 as well as for all the dependent claims except 9, 23, and 26.
2 The Examiner applied additional references to reject dependent claims 5,
16, 24, and 27 (Ans. 4, 5). Discussion of these rejections is not needed for
disposition of this appeal.
2
Appeal 2017-011689
Application 13/905,730
ANALYSIS
The § 112 Re} ection
At the outset, we reverse the Examiner's rejection of claims 1, 23, 26,
and 28 under§ 112 as indefinite. We agree with Appellant that the terms the
Examiner objects to (i.e., "the heated substrate" in claims 1, 23, and 28),
"the resistive heat" in claim 26) (Ans. 2) "are clear as to the subject matter
they encompass" (Appeal Br. 17). The Examiner's conclusory statement
that "the heated substrate" has insufficient antecedent basis (Ans. 2) where,
as here, the claim previously recited "heating the substrate" is inadequate
(Ans. 7). Furthermore, it has been held that a lack of antecedent basis is not
per sea reason for finding a claim indefinite. "In Bose Corp. v. JBL, Inc.,
274 F.3d 1354, 1359 (Fed. Cir. 2001) the court held that despite the absence
of explicit antecedent basis, '[i]f the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite."'
Energizer Holdings Inc. v. U.S. ITC, 435 F.3d 1366, 1370-71 (Fed. Cir.
2006). Antecedent basis can be present by implication. See Slimfold Mfg.
Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Because
the Examiner has not explained why the scope of claims 1, 23, 26, and 28
would not be reasonably ascertainable by those skilled in the art, a prima
facie case of indefiniteness resting on the allegation that the above-noted
terms lack antecedent basis has not been established.
The§ 103 Rejections
We review the appealed § 103 rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
3
Appeal 2017-011689
Application 13/905,730
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Having considered
the evidence presented in this Appeal and each of Appellant's contentions,
we are not persuaded that Appellant identifies reversible error, and we
affirm the Examiner's§ 103 rejections for the reasons expressed in the Final
Office Action and the Answer.
We add the following primarily for emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he 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." Id. at 418.
Even assuming arguendo that Appellant's claim interpretation of
resistively heating a substrate is adopted (that is, that a resistive heater must
be located within the substrate), the Examiner has rejected all the claims
based on the combined prior art of Eskra and Gu, which addresses the
interpretation urged by Appellant.
We are not persuaded by Appellant's argument that it would not have
been obvious to use a resistive heat option as disclosed by Gu as an
alternative for the heat options described in Eskra (e.g., Appeal Br. 12;
Reply Br. 8). Likewise, Appellant's arguments that Gu is non-analogous art
(Appeal Br. 12) and its combination with Eskra would render Eskra unfit
4
Appeal 2017-011689
Application 13/905,730
because Eskra is a continuous process versus Gu's batch process (Appeal Br.
13-14) are also not persuasive.
The Examiner correctly finds that claims 1 and 12 encompass Eskra's
method and system, including heating the ( e.g., electrode) substrate, except
Eskra does not explicitly suggest resistively heating its substrate (Ans. 3;
Eskra ,i,i 3 5, 3 7 (Eskra broadly describes that any heating device may be
used to heat the substrate, and heat may be applied on one side
simultaneously with the spray on the other side of the substrate)). Gu
explicitly teaches the use of resistively heating an electrode substrate as an
alternative to a radiant heater for heating the substrate ((e.g., Gu ,i 37;
Ans. 2). Contrary to Appellant's contention that Gu is non-analogous art,
Gu is in the field of endeavor described in the Specification's "Field of the
Invention" section (Spec. 2 ("This invention is directed to conductive
particle films and to methods for the manufacture" thereof)). See In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (to rely on a reference as a
basis for rejection of the applicant's invention, the reference must either be
in the field of the applicant's endeavor or, if not, then be reasonably pertinent
to the particular problem with which the inventor was concerned).
Furthermore, the issue of heating a substrate in Gu is also clearly
pertinent to the claimed heating of a substrate. Cf In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (holding that
analogous art with regard to a folding mechanism of a treadmill, may come
from any area describing hinges, springs, latches, counterweights, or other
similar mechanisms); see also Wyers v. Master Lock Co., 616 F.3d 1231,
1238 (Fed. Cir. 2010) ("The Supreme Court's decision in KSR International
Co. v. Teleflex, Inc., 550 U.S. 398 ... (2007), directs us to construe the
5
Appeal 2017-011689
Application 13/905,730
scope of analogous art broadly, stating that 'familiar items may have obvious
uses beyond their primary purposes .... "').
Finally, we are not persuaded by Appellant's argument that modifying
Eskra to use a resistively heated substrate would render Eskra unfit because
Gu uses a batch process while Eskra describes a continuous process. It is
well established that the obviousness inquiry does not ask "whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole." In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller,
642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference"); In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). One of ordinary skill would
have readily appreciated how to adapt details of a batch process into a
continuous process. Notably, Appellant's Specification is devoid of any
details as to how to resistively heat its continuous substrate, so such details
must be well within the ordinary skill in the art, or Appellant's Specification
would not be enabling.
Contrary to Appellant's argument, a preponderance of the evidence
supports the Examiner's position that an artisan would have reasonably
inferred that using a known resistive heating alternative in Eskra would also
produce a satisfactory heating of the substrate, and would have been
reasonably expected to function comparable thereto. To the extent there
may be any differences, an artisan of ordinary skill would have weighed the
advantages and disadvantages of each known heating alternative. "The fact
6
Appeal 2017-011689
Application 13/905,730
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another." Winner Int'! Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000).
Appellant has not provided persuasive reasoning or credible evidence
why one of ordinary skill in the art would not have, using no more than
ordinary creativity, predictably used a known alternative heater as
exemplified in Gu as the heater(s) for the substrate of Eskra (e.g., Ans. 3;
Appeal Br., and Reply Br. generally). See KSR, 550 U.S. at 421 ("A person
of ordinary skill is also a person of ordinary creativity, not an automaton.").
A person of ordinary skill in the art would have had a reasonable expectation
of success for using the known alternative disclosed in Gu for the heater(s)
in Eskra. "[O]bviousness does not require absolute predictability of success
... all that is required is a reasonable expectation of success." In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894,
903-04 (Fed. Cir. 1988)).
Appellant's arguments with respect to dependent claims 9, 23, and 26
along with independent claim 28, are likewise unpersuasive of error in the
Examiner's rejection for reasons explained above and set out by the
Examiner (e.g., Ans. 10; Appeal Br. 14-16). Notably, Appellant's
Specification is devoid of any details as to how the aerosolized mixture is
applied to both sides "at a location the heat is applied to the substrate" as
recited in claim 28 (similar language is recited in claims 23 and 26).
Accordingly, the Examiner's determination that the claim language
encompasses Eskra' s use of multiple heaters directly adjacent both before
7
Appeal 2017-011689
Application 13/905,730
and after the mixture is applied to the substrate, as well as heating
simultaneously on the opposite side of the powder spray, is reasonable (see,
e.g., Eskra, Figs. 1, 4). Furthermore, once one modifies Eskra to have
resistive heater(s) within the continuous substrate as suggested by Gu, it is
readily apparent that the spray mixture will de facto be applied at a location
heat is applied.
We also affirm the Examiner's rejections based on Eskra and
Tsutsumi as we agree with the Examiner that Appellant's Specification
describes that the heating device may be either a resistive heating device
(that is, an electric heater) as exemplified in Tsutsumi to be a known
alternative heater to, e.g., Eskra' s radiant heater. Although Appellant urges
that the Specification describes two resistive heating alternatives on pages 2
and 3, one of which is a resistive heating device located within the substrate,
Appellant's Specification is devoid of any such explicit description.
Furthermore, the language used at page 3 of the Specification merely
describes the use of the heater in the system (apparatus) versus the process
described at page 2 of the Specification. Appellant's attempt to read these as
different resistive heating embodiments is not well taken. One of ordinary
skill may reasonably interpret the resistive heating described in Appellant's
Specification as encompassing only the use of a resistive heater located
adjacent to the substrate for heating the substrate as the Examiner
determined and as discussed in the Specification with respect to the
corresponding apparatus to be used in the invention. In construing claims,
"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
8
Appeal 2017-011689
Application 13/905,730
interpretation." ICON Health & Fitness, 496 F.3d at 1379 (emphasis
added). Notably, we do not find-and Appellant has not directed our
attention to-any limiting definitions in the Specification, nor does
Appellant provide any persuasive reasoning or credible evidence to establish
that the Examiner's interpretation of the language of claim 1 is
unreasonable.
Therefore, we affirm all of the Examiner's§ 103 rejections of all the
claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6.
AFFIRMED
9