Ex Parte Snyder et al

Patent Trial and Appeal Board

Sep 26, 2016

12784287 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121784,287 05/20/2010
8791 7590 09/27/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
Shawn W. SNYDER
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.
4861.P21542 8504
EXAMINER
VO, JIMMY
ART UNIT PAPER NUMBER
1723
MAILDATE DELIVERY MODE
09/27/2016 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, JOSEPH A. KEATING,
PAUL C. BRANTNER, JOHN T. THAN,
and BERND J. NEUDECKER
Appeal2014-003994
Application 12/784,287
Technology Center 1700
Before JENNIFER D. BAHR, JOHN C. KERINS, and JILL D. HILL,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shawn W. Snyder et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1--44. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
Appeal2014-003994
Application 12/784,287
THE INVENTION
Appellants' claimed invention is directed to a method for integrating
an electrochemical device with a fixture. Claim 1, reproduced below, is
illustrative:
1. A method of integrating an electrochemical device with a
fixture comprising:
providing an electrochemical device comprising a negative
electrode, an electrolyte, and a positive cathode, said positive
cathode having substantially a least charge state that is less than
the upper stability limit of the charge state of said positive
cathode at room temperature;
providing a fixture;
heating said fixture and said electrochemical device at a
temperature for a time period; and
affixing said electrochemical device to said fixture.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1--4, 6-8, 39, and 43 under 35 U.S.C. § 102(b) as being
anticipated by Kanno (US 2005/0167474 Al, published Aug. 4, 2005
(hereafter "Kanno '4 7 4) ), in consideration of evidence provided in Strauss; 1
(ii) claim 40 under 35 U.S.C. § 102(b) as being anticipated by Kanno
(US 7,399,321 B2, issued July 15, 2008 (hereafter "Kanno '321)) in
consideration of evidence provided in Strauss and Messler; 2
(iii) claims 9, 11, 15, 17, 21, 23, 27, 29, 33, and 35 under 35 U.S.C.
1 Strauss, Rudolf, "Reflowsoldering", ch. 2, SMT Soldering Handbook
(Second Ed.) 1998, pp. 148-233.
2 Messler Jr., Robert W., The Basic Metallurgy of Welding, Brazing, and
Soldering, ch. 9, p. 483, 13 July 2007.
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Application 12/784,287
§ 102(b) as being anticipated by Kanno '321, in consideration of evidence
provided in Strauss and N eudecker; 3
(iii) claims 10, 16, 22, 28, and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Kanno '321 in view ofNeudecker;
(iv) claims 5, 12-14, 18-20, 24--26, 30-32, and 36-38 under 35
U.S.C. § 103(a) as being unpatentable over Kanno '321 in view of
Neudecker;
(v) claims 41 and 42 under 35 U.S.C. § 103(a) as being unpatentable
over Kanno '321 in view ofKaun (US 2007/0160901 Al, published July,
2007); and
(vi) claim 44 under 35 U.S.C. § 103(a) as being unpatentable over
Kanno '321 in view of Lenhart (US 5,939,864, issued Aug. 17, 1999).
ANALYSIS
Claims 1--43--NEW GROUND OF REJECTION--§ 112, second paragraph--
Indefiniteness
Claims 1--43 are rejected as being indefinite for failure to particularly
point out and distinctly claim that which Appellants regard as their
invention.
The essence of this statutory requirement is that the language of the
claims must make it clear what subject matter they encompass. In re
Hammack, 427 F.2d 1378, 1382 (CCPA 1970). This has been frequently
stated, in a shortened form, as a requirement that the claims set forth the
"metes and bounds" of their coverage. See, e.g., In re Venezia, 530 F.2d
3 Neudecker, B .. J. et al., "Lithium silicon tin oxynitride (LiySiTON): high-
performance anode in thin-film lithium-ion batteries for microelectronics,
Journal of Power Sources 81-82 (1999) 27-32.
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Application 12/784,287
956, 958 (CCPA 1976); Jn re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); Jn
re Watson, 517 F.2d465, 477(CCPA1975); In re Knowlton, 481F.2d1357,
1366 (CCP A 1973). This requirement has usually been viewed from the
perspective of a potential infringer, "so that they may more readily and
accurately determine the boundaries of protection involved and evaluate the
possibility of infringement and dominance." Hammack, 427 F.2d at 1382.
Claim 1 requires, in a method of integrating an electrochemical device
with a fixture, that the electrochemical device include a positive cathode
"having substantially a least charge state that is less than the upper stability
limit of the charge state of said positive cathode at room temperature." Br.,
Claims Appendix. Appellants' Specification discloses that, in a preferred
embodiment, "the electrochemical device is placed in the least-possible
charged state" prior to being affixed to the claimed fixture. Spec., para. 18.
That paragraph further provides an example of a battery having a LiCo02
cathode that is fully charged at 4.2V. Id. In further discussing that battery,
Appellants disclose that, '[i]f the battery charge is at a voltage of less than
about 4.2V (ideally in the range of 1.3-3.7V), the battery components may
remain chemically stable at high temperatures and/or pressures for a period
of time. Id. Nowhere else in the Specification is mention found of a "least-
possible charged state" or, as claimed, "least charge state."
Appellants, however, describe Figure 1 therein as illustrating a
relationship between a charge state of a LiCo02 cathode as a function of
voltage versus a reference electrode or existing Li electrode, and discuss
that, for charge states greater than zero, the cathode may undesirably become
meta-stable. Spec., para. 20. Given that Figure 1 displays charge states
ranging from 0% to 100%, it would seem to be the case that 0% would be
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Application 12/784,287
the least charge state as called for in claim 1. This might be regarded as
being reinforced by a possible correlation between the voltage being at or
less than 3.8V at 0% charge state (see Figure 1), and the disclosure noted
above that 3.7V is the upper end of an ideal voltage for that battery.
Were this the only pertinent disclosure, a person of ordinary skill in
the art might reasonably conclude that the "substantially a least charge state"
in claim 1 is synonymous with "substantially a 0% charge state." Such an
interpretation, however, would render superfluous the further claim language
imposing the condition that the charge state is to also be "less than the upper
stability limit of the charge state of said positive cathode at room
temperature."
In addition, Appellants' Specification and certain claims depending
from claim 1 evidence that this recitation is not intended to be so limited.
Appellants' Figure 2 is described as illustrating "the maximum charge state
(in volts) of an exemplary LiCo02 cathode" for a particular exposure
temperatures and time (one hour) such that the cathode is not substantially
damaged by such exposure. Spec., para. 22. This is intended to demonstrate
that, whereas "Figure 1 shows that the upper stability limit of a charged
LiCo02 cathode at room temperature ... is at a voltage potential of about
4.2V," the upper stability limit may be lower when exposed to elevated
temperatures for extended periods. Spec., para. 23, 24. Figure 2 shows no
data points for charge states lower than 3.90 volts, with, as noted above,
3.8V representing a 0% charge state in Figure 1, and shows data points for
charge states as high as the 4.20V seen in Figure 1 to correspond to a 100%
charge state. As such, it appears that Appellants do not regard 0% as the
substantially least charge state claimed.
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This is further borne out by the recitations in dependent claims 9, 15,
21, 27, and 33, which state, respectively, that the claimed upper stability
limit of the charge state of the positive cathode is to be 4.2V, 4.1 V, 4.05V,
4.0V, and 3.95V. Referring back to Appellants' Figure 1, those upper
stability voltage limits correspond to charge states from about 60% (3.95V)
to effectively 100%. Although an argument could be advanced that, in each
of these cases, a voltage of 3. 8V or less, corresponding to a 0% charge state,
would be less than each of those values for charge state upper stability limit,
those limitations would be effectively meaningless were claim 1 to be
interpreted as being limited to substantially a 0% charge state.
Having concluded that a person of ordinary skill in the art would not
understand claim 1 to be so limited, it remains entirely unclear what value or
range of values of charge state fall within the scope of "substantially a least
charge state," particularly in view of the dependent claims discussed above
seemingly allowing for charge states approaching 100%. As a potential
infringer would not reasonably be apprised of the boundaries of protection
involved with the scope of claim 1, nor reasonably be able to evaluate the
possibility of infringement and dominance afforded this claim, the claim is
rejected as being indefinite under 35 U.S.C. § 112, second paragraph.
Claims 2--43 depend from claim 1, and are regarded as being
indefinite due to the inclusion of the limitation discussed above as a result of
their dependency.
Claims 1--43--Rejections (i)-(v) Based on Prior Art
Because we have concluded that the limitation in each of claims 1--43
directed to a positive cathode having a "least charge state" that is less than
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the upper stability limit of the charge state of the positive cathode is
indefinite, the prior art rejections of claims 1--43 must fall because they are
necessarily based on a speculative assumption as to the meaning of the
claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962).
We thus do not sustain the rejections of claims 1--43 under 35 U.S.C.
§§ 102(b) and 103(a). It should be understood, however, that our decision in
this regard is based solely on the indefiniteness of the claimed subject
matter, and does not reflect on the adequacy of the prior art evidence applied
in support of the rejection.
Claim 44--Unpatentable over Kanno '321/Lenhart
Independent claim 44 does not include the limitation directed to the
positive electrode having a least charge state, found above to be indefinite.
The Examiner finds that Kanno '321 discloses the recited method steps, with
the exception of "not satisfactorily disclos[ing] a battery not previously
charged after assembly." Final Act. 10-11. The Examiner concludes that it
would have been obvious in view of Lenhart to employ, in the Kanno '321
solder reflow process, a lithium battery that has not previously been charged,
so as to simplify the manufacturing process and reduce the possibility of
damage due to short circuits. Id. at 11.
Appellants assert that Kanno '321 fails to anticipate the claim
limitation requiring that "said electrochemical device having not been
previously charged," and that Lenhart does not "correct the deficiency"
alleged to exist with Kanno '321. Br. 14. These assertions are essentially of
the same type as those presented in In re Lovin, and do not apprise us of
Examiner error. In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) ("we hold that
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the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
The rejection of claim 44 under 35 U.S.C. § 103(a) is sustained.
DECISION
The rejections of claims 1--43 under 35 U.S.C. §§ 102(b) and 103(a)
are reversed.
The rejection of claim 44 under 35 U.S.C. § 103(a) is affirmed.
Claims 1--43 are rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim that which Appellants
regard as the invention. This is a NEW GROUND OF REJECTION made
pursuant to our authority under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to 3 7
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
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of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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