Ex Parte Pirk et al

Patent Trial and Appeal Board

Sep 21, 2017

13114162 (P.T.A.B. Sep. 21, 2017)

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.
13/114,162 05/24/2011 Tjalf Pirk 2178-0070 1981
10800 7590 09/21/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
CHUO, TONY SHENG HSIANG
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
09/21/2017 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 TJALF PIRK, ANDREAS KRAUSS,
THOMAS TEUSCHEL, and LAURA BOHNE1
____________________

Appeal 2017-001482
Application 13/114,162
Technology Center 1700
____________________

Before: TERRY J. OWENS, MARK NAGUMO, and AVELYN M. ROSS,
Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 and 3–7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify the real party in interest as Robert Bosch GmbH.
Appeal Br. 2.
2 In our Decision we refer to the Specification (“Spec.”) originally filed May
24, 2011, as amended, the Final Office Action (“Final Act.”) dated
December 17, 2015, the Appeal Brief (“Appeal Br.”) filed June 15, 2016, the
Examiner’s Answer (“Ans.”) dated September 8, 2016, and the Reply Brief
(“Reply Br.”) filed November 4, 2016.
Appeal 2017-001482
Application 13/114,162

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STATEMENT OF THE CASE
The subject matter on appeal relates to “a method for production of a
thin-film battery, as well as a barrier for a mount structure for production of
a thin-film battery, and an energy store.” Spec. 2. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for production of a thin-film battery,
comprising:
applying a first unmasked flow of a first electrode material
to a mount structure in order to form a first electrode layer on the
mount structure;
applying a second unmasked flow of an electrolyte
material directly on the surface of the first electrode layer in
order to form a battery layer on the first electrode layer;
applying a third unmasked flow of a second electrode
material directly on the surface of the battery layer in order to
form a second electrode layer on the battery layer;
repeating the step of applying a second unmasked flow of
an electrolyte material directly on the surface of the second
electrode layer to form a battery layer on the second electrode
layer;
repeating the applying steps commencing with applying an
unmasked flow of the first electrode material directly on the
surface of the battery layer formed on the second electrode
layer and ending with the step of applying a third unmasked flow
of a second electrode material in order to produce a thin-film
battery which includes a plurality of first electrode layers, a
plurality of battery layers and a plurality of second electrode
layers; and
thereafter structuring the thin-film battery.
Appeal Br. 10 (Claims App’x).
Appeal 2017-001482
Application 13/114,162

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REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1 and 5 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Nieh3 in view of Matsuyama.4 Final
Act. 2.

B. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Matsuyama, and further in view
of Liang.5 Id. at 4.

C. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Matsuyama, and further in view
of Chiang.6 Id. at 5.

D. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Matsuyama, and further in view
of Honda.7 Id. at 6.

E. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Matsuyama, and further in view
of Jenson.8 Id.

F. Claims 1 and 5 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Nieh in view of Klaassen.9 Id. at 7.

3 Nieh et al., US 2009/0208671 A1, published August 20, 2009 (“Nieh”).
4 Matsuyama et al., US 2011/0014521 A1, published January 20, 2011
(“Matsuyama”).
5 Liang et al., US 2011/0076550 A1, published March 31, 2011 (“Liang”).
6 Chiang et al., US 2009/0246636 A1, published October 1, 2009
(“Chiang”).
7 Honda et al., US 2005/0118502 A1, published June 2, 2005 (“Honda”).
8 Mark L. Jenson, US 2002/0001746 A1, published January 3, 2002
(“Jenson”).
9 Jody J. Klaassen, US 2007/0015061 A1, published January 18, 2007
(“Klaassen”).
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Application 13/114,162

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G. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Klaassen, and further in view of
Liang. Id. at 9.

H. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Klaassen, and further in view of
Chiang. Id. at 10.

I. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Klaassen, and further in view of
Honda. Id.

J. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nieh, Klaassen, and further in view of
Jenson. Id. at 11.

Appellants request reversal of Rejections A–J. See generally Appeal
Br. Appellants argue for the patentability of independent claim 1
(Rejections A and F), but do not present additional argument in support the
patentability of the remaining claims separate from what is argued in support
of claim 1 (Rejections A and F). See id. Because the basis for our
reversal—i.e., the lack of a reason to combine Nieh with Matsuyama or
Klaassen—is required for all pending claims, we limit our discussion below
to claim 1.

OPINION
Obviousness (Nieh in view of Matsuyama)
The Examiner rejects claim 1 as obvious over Nieh and Matsuyama.
Final Act. 3. The Examiner finds that Nieh teaches all but “the steps of
repeating the step of applying a second unmasked flow of an electrolyte
material directly on the surface of the second electrode layer” and “repeating
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the applying step commencing with applying an unmasked flow of the first
electrode material and ending with the step of applying a third unmasked
flow of a second electrode material.” Id. But, the Examiner finds that
Matsuyama discloses a stacked battery structure having these aspects of
claim 1. Id. The Examiner reasons that it would have been obvious to one
skilled in the art to modify the method of Nieh to include the repeating steps
of Matsuyama “in order to increase the energy density and capacity of the
battery while improving the lifespan and durability of the battery.” Id. at 4.
Appellants urge that there is no reason to combine Nieh and
Matsuyama because Matsuyama does not discuss increasing “energy density
and capacity,” and where Matsuyama discusses improving battery lifespan,
Matsuyama does not attribute the improvement to stacking the battery
layers. Appeal Br. 5.
Appellants’ argument persuades us of reversible error by the
Examiner. As Appellants note (Appeal Br. 5; Reply Br. 2.), a motivation to
“increase the energy density and capacity of the battery” originates from
Nieh—not Matsuyama. See Nieh ¶ 44. And, while Matsuyama does teach
improving the durability and lifespan characteristics of the battery,
Matsuyama attributes this improvement to binders on the collector side of
the electrode as opposed to a stacked design. Matsuyama ¶ 116. In
particular, Matsuyama states that “it becomes apparent that durability
(lifespan characteristic) under high temperature condition can be
significantly improved by allowing much more binders at the collector side
by adding a plurality of binders having different specific gravities in the
active material layer of the electrode.” Id.; see also id. ¶ 27 (the improved
lifespan characteristic results “when the binders are relatively more present
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around he collector, the adhesiveness between the active material and the
collector is improved.”); ¶ 32 (“a binder having a greater specific gravity is
present at the collector side. Thus it becomes possible to improve the
lifespan characteristic.”); and ¶ 33(“it becomes possible to improve the
lifespan characteristic by improving the adhesiveness between the collector
and the active material layer”). Therefore, lacking in the Examiner’s
analysis is a reason to modify Nieh to include the stacked structure of
Matsuyama. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(the
inquiry is “to determine whether there was an apparent reason to combine
the known elements in the fashion claimed by the patent at issue.”).
Therefore, on this record, we do not sustain the Examiner’s §103 rejections
based on the combination of Nieh and Matsuyama (Rejections A–E).

Obviousness (Nieh in view of Klaassen)
The Examiner rejects claim 1 as obvious over Nieh and Klaassen.
Final Act. 7. The Examiner finds that Nieh teaches all features of claim 1
except “the steps of repeating the step of applying a second unmasked flow
of an electrolyte material directly on the surface of the second electrode
layer” and “repeating the applying step commencing with applying an
unmasked flow of the first electrode and ending with the step of applying a
third unmasked flow of a second electrode material.” Id. at 8. But, the
Examiner finds that Klaassen discloses a stacked battery structure having
these aspects of claim 1. Id. The Examiner reasons that it would have been
obvious to one skilled in the art to modify the method of Nieh to include the
repeating steps of Klaassen “in order to provide a parallel connected battery
that provides higher output current.” Id. at 8–9.
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Appellants argue that the Examiner’s reason to modify Nieh and
Klaassen—i.e., to provide a parallel connected battery that provides higher
output current—is “a fact that is well-known in electrical engineering” and
not attributable to the stacked arrangement of Klaassen, which can be either
connected in series or parallel. Appeal Br. 7. Therefore, according to
Appellants, there is no reason found in Nieh or Klaassen to modify the side-
by-side configuration described by Nieh in a stacked manner as required in
claim 1. Id. at 7–8.
We agree. “[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[T]he
question is whether there is something in the prior art as a whole to suggest
the desirability, and thus the obviousness, of making the combination.” See
In re Beattie, 974 F.2d 1390, 1311 (Fed. Cir. 1992)(emphasis added); KSR,
550 U.S. at 414 (same). Here, the Examiner reasons that the skilled artisan
would have found it obvious to combine the teachings of Nieh and Klaassen
to arrive at Appellants’ invention “in order to provide a parallel connected
battery that provides higher output current, the Nieh battery would
necessarily be modified to include a plurality of battery cells.” Final Act. 8–
9; Ans. 18. But, this reasoning lacks an explanation of why the skilled
artisan would have reason to create the stacked structure of Klaassen in the
battery of Nieh. The Nieh battery, like the Klaassen battery, can be designed
as a parallel connected battery to provide higher output current; the parallel
connection is independent of the stacked configuration. Thus, the Examiner
has not met the initial burden of showing that the claimed subject matter
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would have been prima facie obvious over the prior art of record and we do
not sustain the rejections based on the combination of Nieh and Klaassen
(Rejections F–J).
CONCLUSION
Appellants have identified a reversible error in the Examiner’s
rejection of claims 1 and 3–7 based on the combination of Nieh and
Matsuyama (among others) (Rejections A–E).
Appellants have identified a reversible error in the Examiner’s
rejection of claims 1 and 3–7 based on the combination of Nieh and
Klaassen (among others) (Rejections F–J).

DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 3–7 is
reversed.

REVERSED