Ex Parte RE41,886 E et al

Patent Trial and Appeal Board

Jan 23, 2018

95001684 (P.T.A.B. Jan. 23, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,684 07/11/2011 RE41,886 E ENZH.255771 2547
5251 7590 01/24/2018
SHOOK, HARDY & BACON LLP
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD
KANSAS CITY, MO 64108-2613
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
01/24/2018 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
____________

Spectrum Brands, Inc.
Requester

v.

Patent of
Energizer Brands, LLC1
Patent Owner and Appellant
____________

Appeal 2016-005093
Reexamination Control 95/001,684
Patent RE 41,886 E
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REHEARING

1 Patent Owner provided notice that the real party-in-interest changed from
Eveready Battery Company, Inc. to Energizer Brands, LLC, as evidenced by
an assignment of ownership recorded at Reel 36019/Frame 814, on July 24,
2015 in a paper entitled “NOTICE OF CHANGE IN REAL
PARTY-IN-INTEREST”.
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Reexamination Control 95/001,684
Patent RE 41,886 E

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In a Decision on Appeal issued December 6, 2016 (“Decision”), this
panel of the Patent Trial and Appeal Board affirmed the Examiner’s
rejections of claims 1–14 and 25–74 of United States Reissued Patent RE
41,886 E (hereinafter the “’886 Patent”).
Patent Owner Energizer Brands, LLC (“Patent Owner”) requests
rehearing of the decision affirming the Examiner’s rejection of the claims
under 37 C.F.R. § 41.79. Request for Rehearing (“Request” or “Req.
Reh’g”) dated January 6, 2017. Third-Party Requester Spectrum Brands,
Inc. (hereinafter “Requester”) submitted comments on Patent Owner’s
Request for Rehearing on February 6, 2017 (hereinafter “Comments”).
Patent Owner contends that the Board (Request 3):
1. Overlooked the entirety of the evidence by failing to address a
transcript from a preliminary injunction hearing in district court
litigation2 (“Wisconsin Transcript”) and
2. Misapprehended certain portions of Declaration testimony of
Requester’s expert, Dr. Ceder.3
Requester contends that Patent Owner’s Request generally violates at
least 37 C.F.R. §§ 41.67(c)(1)(vii), 41.73(e)(1), and 41.79(b)(1), because
none of Patent Owner’s arguments were made during the underlying
reexamination or in Patent Owner’s Appeal Brief. (Comments 3–6.)

2 Transcript of Preliminary Injunction Hearing of October 30, 2008,
Energizer v. Spectrum, US District Court of Western District of Wisconsin,
Case No. 08-CV-00431. (Exhibit Y to Request)
3 Declaration of Dr. Gerbrand Ceder under 37 C.F.R. § 1.132 executed on
July 11, 2011 and filed with the Request for Reexamination (“First Ceder
Declaration”).
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37 C.F.R. § 41.79(b) states:
(1) The request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked
in rendering the Board’s opinion reflecting its decision.
Arguments not raised in the briefs before the Board and
evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or
respondent may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of
rejection made pursuant to § 41.77(b) are permitted.

We address the points raised in Patent Owner’s Request to the extent
they comply with 37 C.F.R. § 41.79(b).

DISCUSSION
Patent Owner’s entire argument with respect to unexpected results as
presented in Patent Owner’s Appeal Brief4 is reproduced below (Appeal Br.
18):
Further, the results achieved by implementing the
teachings of the '886 patent were unexpected, in that the results
did not reduce battery capacity as would be expected. See
Ex.Al, First White Dec. ¶¶21, 22 [Declaration Under 37 C.F.R.

4 In accordance with 37 C.F.R. §41.73(a): “An appeal decided on the briefs
without an oral hearing will receive the same consideration by the Board as
an appeal decided after an oral hearing.” Accordingly, to the extent Patent
Owner relies on arguments made during Oral Argument in the course of this
reexamination proceeding, which extend beyond the arguments made in
Patent Owner’s Appeal Brief, such arguments have not been considered.
(See Request 2.)
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§ 1.132 of Ralph E. White dated March 2, 2012]; See also pages
105-107 of [the Wisconsin] Transcript (Ex.Al8)(Court
weighing evidence of secondary considerations). In fact, battery
capacity is increased, as recognized by Consumer Reports
(Ex.A 7), which recently rated the Eveready Li/FeS2 batteries
as the only “excellent” and “recommended” batteries among all
those tested. See also, Ex.Al, First White Dec. ¶22.

The Decision expressly references this portion of Patent Owner’s
Appeal Brief (Decision 13) and then discusses in detail the First White
Declaration and Consumer Reports, concluding that “we are of the view that
when the evidence of record is evaluated as a whole, the evidence in favor or
obviousness outweighs the evidence in favor of non-obviousness.”
(Decision 13–16.)

Wisconsin Transcript
Regarding the Wisconsin Transcript, the Decision states: “We
observe that in the cited portion of the [Wisconsin] Transcript contains
references to evidence of copying and commercial success. (Trans. P. 106,
ll. 12–22.) We have not been directed to such evidence of commercial
success and copying on this record.” (Decision 13, FN 27.)
Patent Owner contends that the “Board did not address or
acknowledge the evidentiary weight of the other material in the preliminary
injunction transcript, which includes specific findings that objective indicia
evidence weighs strongly in favor of nonobviousness.” (Request 5–8.)
Patent Owner contends that: “Not only do the district court’s findings
provide strong evidence of objective indicia of nonobviousness, but the
arguments by Energizer’s counsel similarly provide compelling evidence in
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favor or nonobviousness.” (Request 8, emphasis added.) Patent Owner
contends that the district court’s determinations also establishes long felt, but
unresolved need. (Request 8.) Patent Owner argues that the “district court’s
findings themselves are substantial evidence.” (Request 9.) Patent Owner
argues that the Board’s Decision relies on an improper standard with respect
to objective indicia of nonobviousness, by stating that “a definitive
conclusion with respect to unexpected results cannot be reached.” (Request
10, quoting Decision 13.)
Requester contends that Patent Owner has waived arguments to the
objective considerations as presented in the Request by not including them
in Patent Owner’s Appeal Brief. (Comments 6–9.) In addition, Requester
contends that the Wisconsin Transcript itself is not evidence of objective
considerations and is not binding on the Board. (Comments 9–11.)
Requester contends that the Gan prior art before the district court (U.S.
Patent No. 6,171,729) is different and less extensive than the Gan prior art in
the reexamination (EP 0 930 664 A2). (Comments 11–12.) Requester
argues that the Board considered all of the evidence related to unexpected
results and found it insufficient. (Comments 12–13.) Requester contends
that neither the Board nor the Examiner applied the wrong legal standard in
evaluating the evidence of unexpected results, and that no improper burden
was applied to Patent Owner with respect to unexpected results. (Comments
14–15.)
We are of the view that we did not misapprehend or overlook the
Wisconsin Transcript in assessing the evidence of record in this appeal.
Initially, we view Patent Owner’s contentions of long felt, but unresolved
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need as untimely because such considerations were not raised in Patent
Owner’s Appeal Brief as readily discerned from the reproduced portion of
Patent Owner’s Appeal Brief supra.5 37 C.F.R. § 41.79(b)(1). As readily
discernable from Patent Owner’s Appeal Brief, the amount of discussion
regarding objective indicia is minimal. Significantly, the Patent Owner’s
citation to the Transcript in the Appeal Brief was in the context of
unexpected results—not evidence of copying or commercial success. The
Decision analyzes the evidence, referred to in passing in Patent Owner’s
Appeal Brief, and appropriately weighed such evidence in conjunction with
the evidence in favor of obviousness to reach an overall conclusion with
respect to the obviousness determination. (Decision 12–16.)
In this regard, the Wisconsin Transcript was considered, but as
indicated in the Decision, without the underlying evidence with respect to
commercial success and copying discussed in the Wisconsin Transcript
being of record in the instant case,6 as well as the differences in the prior art
applied here and in the district court litigation, the conclusions made by the
district court have limited pertinence to the determination in this
reexamination proceeding. (Decision 13, FN 27; Comments 10–12.) In
addition, as correctly noted by Requester (Comments 10), arguments made

5 See Oral Hearing Transcript, 5:3–6:13, discussing such arguments with
respect to unexpected results newly raised in oral argument and the
importance of properly raising arguments before the Examiner. See also
Oral Hearing Transcript 7:19, 19:16–20, emphasizing the incentive to
properly argue secondary considerations in a case, which was characterized
by Patent Owner as “close”.
6 See Manual of Patent Examining Procedure (9th Ed., Rev. 7) § 2686,
discussing 37 C.F.R. § 1.985 discussing entry of papers from concurrent
proceedings involving the patent under reexamination.
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by Patent Owner’s counsel in the district court hearing are not evidence.
Arguments of counsel cannot take the place of factually supported objective
evidence. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996).
Thus, we did not misapprehend or overlook any aspects related to the
Wisconsin Transcript in the Decision.
In addition, Patent Owner’s argument that the use of the word
“definitive” in the Decision constituted an improper burden shift regarding
the requirements of establishing unexpected results is illusory. (Request 10.)
The relevant portion of the Decision is reproduced below:
The Examiner found this evidence unpersuasive, because
“[t]he comparison with alkaline or nickel oxyhydroxide
batteries in the [Consumer Reports] article is not a fair
comparison in view of the fact that the prior art is directed to
lithium batteries such as the Li/FeS2 cell.” (RAN 98.) The
Examiner also found that the exact A/C input ratios and battery
structures for the Energizer batteries allegedly produced in
accordance with the ’886 Patent and the comparative batteries
are not known, such that a definitive conclusion with respect to
unexpected results cannot be reached. (RAN 98-99.) The
Examiner again points to Gan for the position that Gan
discloses that swelling occurs in in alkali metal electrochemical
cells, which Gan solves by employing an A/C capacity ratio
balanced to improve cell swelling without detracting
appreciably from cell efficiency. (RAN 99-100.)

(Decision 13.) (Emphasis added.)
The reproduced portion of the Decision is a summary of the
Examiner’s position, which rather than placing an improper burden on
Patent Owner, articulates why the Examiner found Patent Owner’s evidence
insufficient to outweigh the evidence in favor of obviousness. The use of
the term “definitive” merely highlights the deficiencies in the evidence, and
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does not set forth a burden on Patent Owner that is higher than required by
the controlling case law. As pointed out by Requester, Patent Owner is
charged with presenting evidence to outweigh the evidence in support of
obviousness. (Comments 14.) Indeed, Patent Owner has acknowledged as
much. (Request 4, citing In re Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011).)
The Examiner and the Decision properly followed this guidance, and to the
extent that the Examiner’s use of the word “definitive” was incorrect, the
error was harmless.

First Ceder Declaration
Patent Owner argues that the Board misapprehended the First Ceder
Declaration, because in the portion of the First Ceder Declaration cited in the
Decision, Dr. Ceder does not dispute either the 20–25% improvement in
energy density or the 10% increase in cathode solids in the ’886 Patent over
electrochemical cells having an anode to cathode input ratio not falling
within the claimed range. (Request 12–13.) Patent Owner argues that there
is unrebutted testimony that the improvements in discharge capacity were
unexpected, citing to the Declaration of Dr. White. (Request 13–15.)
Requester contends that the First Ceder Declaration provides analysis
of the available data suggesting that the results asserted in the ’886 Patent
rely on an incorrect method of calculating the improvement in energy
density. (Comments 13–14.)
Regarding the First Ceder Declaration, the Decision states:
Although not directly argued by Patent Owner, the
Examiner also observed that the ’886 Patent states in column 2,
lines 50-55: “We have discovered, unexpectedly, that the
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energy density for the cell both volumetrically and
gravimetrically can be improved by approximately 20 to 25%
while only increasing the volume of the cathode coating solids
by approximately 10% through a unique and novel cathode
coating formulation.” (RAN 98.) As noted by the Examiner,
the ’886 Patent does not provide any comparative data to
support this statement. (RAN 98.) There is also unrebutted
testimony on the record suggesting that such calculations are
inaccurate, and that the increase in discharge capacity would
have been expected when properly taking all variables into account.
(See First Ceder Declaration, ¶¶112-115.)

(Decision 15–16.)
It is true that the First Ceder Declaration does not address the 20–25%
improvement in discharge capacity as a result of increasing the cathode
coating solids by approximately 10% as disclosed in the ’886 Patent and that
the First Ceder Declaration addresses specifically calculations of counterpart
European Patent EP 1,1518, 287. However, we are not persuaded that we
misapprehended the relevance of the First Ceder Declaration with respect to
the evidence of unexpected results. That is, as explained in paragraphs
112–115 of the First Ceder Declaration, the ’886 Patent does not provide any
evidence, including comparative results to support the position that the cells
recited in the claims produce the 20–25% improvement in discharge
capacity as a result of increasing the cathode coating solids by
approximately 10% as disclosed in the ’886 Patent. Paragraph 115 of the
Ceder Declaration calls into question the methodology employed by Patent
Owner in a similar context in order to calculate the increase in total
discharge capacity. We agree with Requester that Dr. White’s testimony
(regarding the unexpected nature of batteries having a total anode to cathode
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ratio of 1 or less than 1 would still provide the full capacity of the cell) does
not address the statements supported by evidence cited in the First Ceder
Declaration. (Comments 13–14.)
In addition, as explained in the Decision with respect to the First
White Declaration:
We have considered the evidence of unexpected results
presented by Patent Owner and we are not persuaded that such
evidence, when weighed against the evidence in favor of
obviousness, is sufficient to support a finding of
nonobviousness. That is, as discussed above, the First White
Declaration, in opining that a cell having an interfacial anode to
cathode capacity of less than or equal to one produces
unexpected results, begins with the premise that as of the time
of the invention, one of ordinary skill in the art would have
selected an anode overbalance, i.e., an anode to cathode
capacity ratio of greater than one. (First White Decl. ¶21.)

However, as discussed by the Examiner, and previously
discussed in the ’360 Decision, Gan discloses A/C ratios of less
than or equal to one, without detracting from cell efficiency.
(’360 Decision, p. 10-12; Gan, Paras. [0001], [0031], [0039],
[0040].) Thus, there is evidence of record contradicting the
premise in support of the opinions set forth in the First White
Declaration regarding unexpected results, namely the existence
of cells having an anode to cathode capacity of less than or
equal to one.

(Decision 14–15.)
Accordingly, we did not misapprehend or overlook aspects of the First
Ceder Declaration or the First White Declaration.
Therefore, we decline to make any changes in the Decision mailed
December 6, 2016. Accordingly, the Request for Rehearing is denied.

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DENIED

PATENT OWNER:
Shook, Hardy & Bacon LLP
Intellectual Property Department
2555 Grand Blvd.
Kansas City, MO 64108-2613

THIRD-PARTY REQUESTER:
Sterne, Kessler, Goldstein & Fox PLLC
1100 New York Avenue, N.W.
Washington, D.C. 20005