Ex Parte Snyder et al

Patent Trial and Appeal Board

Feb 1, 2017

12545673 (P.T.A.B. Feb. 1, 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.
12/545,673 08/21/2009 Shawn W. Snyder 4861.P21524XCD2 1837
8791 7590 02/01/2017
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
MARKS, JACOB B
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
02/01/2017 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 SHAWN W. SNYDER and BERND J. NEUDECKER
Appeal 2015-004489
Application 12/545,673
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-004489
Application 12/545,673
The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1—8
and 10-24.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
BACKGROUND
The subject matter on appeal relates to a method of fabricating an
electrochemical apparatus—in particular, a lithium-based, solid-state, thin-
film, secondary or primary battery with improved capacity density, energy
density, and power density (Specification, hereinafter “Spec.,” 12).
Representative claim 1, the sole independent claim on appeal, is reproduced
from page 13 of the Appeal Brief (Claims Appendix, emphasis added), with
key disputed limitations highlighted in bolded, italicized text, as follows:
1. A method of fabricating an electrochemical
apparatus comprising:
(a) providing a substrate of material comprising at least
one of metal, metalized polymeric and silicon;
(b) depositing a first barrier layer comprising a plurality
of chemically different sublayers wherein said substrate is on a
first side of said first barrier layer;
(c) fabricating a first electrochemically active cell
comprising a positive part and a negative part, said parts each
1 The Appellants state that the real party in interest is “Infinite Power
Solutions, Inc.” (Appeal Brief filed October 10, 2013, hereinafter “Br.,” 2).
PTO records reveal, however, that Infinite Power Solutions, Inc., recorded a
name change to “FEENEX, INC.” on November 7, 2014 (Reel
034192/Frame 0790), which subsequently assigned its interest to
“SAPURAST RESEARCH LLC” in a Patent Assignment recorded on
November 19, 2014 (Reel 034298/Frame 0730).
2 Br. 4—12; Final Office Action, notice delivered electronically on May 30,
2013, hereinafter “Final Act.,” 2—9; Examiner’s Answer mailed January 5,
2015, hereinafter “Ans.,” 2—11.
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Appeal 2015-004489
Application 12/545,673
comprising one or more terminals, wherein said first cell is
located on a second side of said first barrier layer, and said first
barrier layer chemically separates said first cell from said
substrate; and
(d) fabricating said first barrier layer wherein a sublayer
of said first barrier layer contacts another sublayer of said first
barrier layer, and wherein said first barrier layer is in
electrical communication with said first cell and said
substrate.
REJECTIONS ON APPEAL
The Examiner rejected the claims under pre-AIA 35 U.S.C. § 103(a)
as follows:
I. Claims 1—7, 10-13, 15—20, and 24 as unpatentable over
Kwak et al.3 (hereinafter “Kwak”) in view of Jacobs et
al.4 (hereinafter “Jacobs”) and Henley et al.5 (hereinafter
“Henley”); and
II. Claims 8, 14, and 21—23 as unpatentable over Kwak,
Jacobs, and Henley, as applied to claim 1, further in view
of Iwamoto et al.6
(Final Act. 2—9; Ans. 2—9.)
DISCUSSION
The Examiner found that Kwak describes every limitation recited in
claim 1 except for the two limitations highlighted in reproduced claim 1
above (i.e., “depositing a first barrier layer comprising a plurality of
3 US 6,280,875 Bl, issued August 28, 2001.
4 US 2002/0037756 Al, published March 28, 2002.
5 US 2002/0090758 Al, published July 11, 2002.
6 US 2003/0232248 Al, published December 18, 2003.
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Application 12/545,673
chemically different sublayers” and “wherein said first barrier layer is in
electrical communication with said first cell and said substrate”) (Ans. 2—3).
Regarding the latter limitation, the Examiner found that “Jacobs . . .
disclose[s] that it is conventional to place a thin film battery directly on top
of the substrate layer and does not indicate that there is an oxide layer” {id.
at 2) (internal citations omitted). Based on this finding, the Examiner
concluded that “it would have been obvious to one of ordinary skill in the art
to manufacture the battery of Kwak . . . directly on the substrate without a
metal oxide layer because Jacobs . . . disclose[s] that such a configuration is
conventional” {id. at 2—3) (emphasis added).
Regarding the former limitation, the Examiner found that “Henley . . .
disclose[s] that a substrate comprised of multilayered silicon can be used as
it can be handled more easily” {id. at 3) (internal citation omitted). The
Examiner concluded from this finding that “it would have been obvious to
one of ordinary skill in the art to use a multilayered silicon susbtrate [sic] the
susbtrate [sic] and barrier layer in the invention of the Kwak combination
because Henley . . . disclose[s] that such a substrate allows for it to be
handled” {id.).
The Appellants contend “that there is absolutely no disclosure of a
metal oxide layer in Jacobs” (Br. 6). According to the Appellants, both the
Appellants and the Examiner agree that the combined teachings of Kwak
and Jacobs would have resulted in the removal of the only disclosed barrier
layer—i.e., Kwak’s metal oxide layer 24 as shown in Figure 3 (id. ).
Furthermore, the Appellants argue that the “Examiner has provided
absolutely no basis as to why one of ordinary skill in the art would look at
Henley . . . and replace the barrier layer of Kwak . . . with the handle wafer
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Appeal 2015-004489
Application 12/545,673
401 of Henley ...” {id. at 8) (underlining omitted). The Appellants argue
that the Examiner’s proposed replacement of Jacobs’s metal oxide layer with
Henley’s multilayered silicon to arrive at a method encompassed by claim 1
is “merely conclusory and fails to support a legal conclusion of obviousness”
{id. at 9). Moreover, the Appellants urge that the Examiner’s proposed
combination results in a structure different than that specified in method
claim 1 and, therefore, the combined prior art references fail to teach or
suggest the disputed limitation {id. at 10).
We agree with the Appellants. For the reasons discussed below, we
determine that the Examiner failed to articulate a sufficient reason with some
rational underpinning to support a conclusion that a person having ordinary
skill in the art would have combined the references in the manner claimed by
the Appellants. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval mKSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
To address the limitation in claim 1 that “said first barrier is in
electrical communication with said first cell and said substrate,” the
Examiner relied on Jacobs’s Figure 1A (labeled as “Prior Art”) (Ans. 2).
Jacobs’s Figure 1A is reproduced below:
FIG. 1A (Prior Art)
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Appeal 2015-004489
Application 12/545,673
According to Jacobs, Figure 1A above depicts a thin-film battery 20 in
which cathode current collector 32 and anode current collector 34 are
formed directly on substrate 22 (Jacobs, 14).
Thus, even assuming that a person having ordinary skill in the art
would have combined Kwak and Jacobs in the manner proposed by the
Examiner, the resulting battery would be disposed “directly on the substrate
without a metal oxide layer” (emphasis added), as acknowledged by the
Examiner {id. at 2—3). Such a structure, however, would not result in a “first
barrier layer” that “chemically separates said first cell from said substrate,”
as required by claim 1.
In an apparent attempt to bridge that gap, the Examiner relied further
on Henley (Ans. 3) (citing Henley, 121). Henley’s Figure 4 is reproduced
below:
JQj.BAA JfOUOQ
JOIN
'>403
A
Handle Wafer 401
Fig. 4
Henley’s Figure 4 above depicts part of a manufacturing process for an
integrated circuit, wherein an upper implanted surface of a donor substrate
structure bonded to a handle wafer 401 through an adhesive interface 403
(112 and 21). Henley discloses that the handle wafer 401 “can be made of
any suitable material such as bulk silicon, multilayered, and the like” and
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Appeal 2015-004489
Application 12/545,673
that the adhesive interface 403 “can be almost any type of adhesive layer”
(e.g., “often a high quality dielectric material such as thermal oxide”) (121).
As the Appellants point out (Br. 8), the Examiner failed to articulate a
sufficient reason or motivation explaining why a person having ordinary
skill in the art would have added Henley’s handle wafer to Kwak’s device.
Moreover, the Examiner’s rejection fails to account for all claim limitations.
Even assuming that a person having ordinary skill in the art would have
combined Henley with the other two references, the Examiner failed to
articulate a sufficient reason explaining how and/or why the resulting handle
wafer 401 and/or adhesive interface 403 would be further modified to
provide “electrical communication with said first cell and said substrate,” as
required by claim 1.
Because both rejections rely on the flawed combination of Kwak,
Jacobs, and Henley, we cannot uphold them.
SUMMARY
The Examiner’s final decision to reject claims 1—8 and 10—24 is
reversed.
REVERSED
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