Ex Parte Pirk et alDownload PDFPatent Trial and Appeal BoardSep 21, 201713114162 (P.T.A.B. Sep. 21, 2017) Copy Citation 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 2 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 3 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”). Appeal 2017-001482 Application 13/114,162 4 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 Appeal 2017-001482 Application 13/114,162 5 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 Appeal 2017-001482 Application 13/114,162 6 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. Appeal 2017-001482 Application 13/114,162 7 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 Appeal 2017-001482 Application 13/114,162 8 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 Copy with citationCopy as parenthetical citation