Ex Parte StevanovicDownload PDFPatent Trial and Appeal BoardMay 31, 201611508680 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111508,680 08/23/2006 138364 7590 06/02/2016 Marshall, Gerstein & Bornn LLP/Duracell 233 South Wacker Drive 6300 Willis Tower Chicago, IL 60606-6357 FIRST NAMED INVENTOR Maya Stevanovic 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. 32549/50256 3592 EXAMINER MARKS, JACOB B ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 06/02/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAY A STEV ANO VIC 1 Appeal2015-001557 Application 11/508,680 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's maintained final rejection of claims 20, 21, 23, 26, 28-33, 35, 37-39, 42, 43, 45, 47--49, 52, and 59. We have jurisdiction pursuant to 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellant, the Real Party in Interest is the Gillette Company, a wholly owned entity of the Procter & Gamble Company. App. Br. 1. Appeal 2015-001557 Application 11/508,680 CLAIMED SUBJECT MATTER Appellant's claimed invention is generally directed to a method of making a cathode for a battery. Spec. 1, 11. 24-25; claims 20 and 59. Independent claim 20 reproduced from the Claims Appendix of the Appeal Brief ("Br.") is illustrative: 1. A method of making a cathode for a battery, the method compnsmg: forming a slurry comprising iron disulfide, a solvent, and conductive aid including graphite and carbon black; applying the slurry to a substrate having a first side and a second side opposite the first side; drying the slurry to form a cathode material supported by the substrate; after drying, calendaring the cathode material supported by the substrate to provide the cathode, wherein after calendaring (a) at least one of the first side and the second side of the substrate supports more than 21. 5 milligrams of the cathode material per square centimeter of the first side and/or the second side; (b) the cathode material comprises between 91 % and 99% by weight of the iron disulfide and between 1 % and 3% by weight of the conductive aid, and (c) the cathode does not include an electrolyte; and contacting the cathode with a liquid electrolyte. REJECTIONS The Examiner maintains the following grounds of rejection under 35 U.S.C. § 103(a): I. Claims 20, 21, 23, 26, 28-33, 35, 37-39, 42, 43, 45, 47, 48, 52, and 592 stand rejected over Marple (US 2003/0228518 Al, published 2 The Examiner inadvertently includes claim 49 in the heading for the statement of the rejection (Ans. 2) where claim 49 is rejected over the combination further including Ilic (Ans. 8-9). The Examiner also 2 Appeal 2015-001557 Application 11/508,680 December 11, 2003) in view of Fukumine et al. (US 2005/0287437 Al, published December 29, 2005) ("Fukumine") and Smesko et al. (US 5,902,696, issued May 11, 1999) ("Smesko"). II. Claim 49 stands rejected over Marple in view of Smesko, Fukumine, and Ilic et al. (US 5,158,722, issued October 27, 1992) ("Ilic"). DISCUSSION3 Having reviewed the Examiner's obviousness rejections in light of arguments advanced by Appellant in the Appeal Brief, we affirm the Examiner's decision rejecting claims 20, 21, 23, 26, 28-33, 35, 37-39, 42, 43, 45, 47--49, 52, and 59 under 35 U.S.C. § 103(a) as unpatentable for obviousness based on the applied prior art. However, we designate our affirmance of the rejections as including new grounds of rejection because our reasons for affirmance materially differ from those expressed by the Examiner. In re Leithem, 661F.3d1316, 1319 (Fed. Cir. 2011) ("Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection where the Board relies on new facts and rationales not previously raised to the applicant by the examiner."). We add the following for explanation and emphasis. inadvertently omits claim 59 from the heading for the statement of the rejection (Ans. 2), but includes the rejection of claim 59 in the body of the rejection (Ans. 7). 3 We refer to the Final Office Action (mailed December 27, 2013), the Appeal Brief (filed January 16, 2014), and the Examiner's Answer (mailed June 5, 2014). 3 Appeal 2015-001557 Application 11/508,680 Rejection/ The Examiner relies on Marple for its disclosure of a nonaqueous cell (battery) including a cathode comprising iron disulfide and a method of manufacturing the cathode for such nonaqueous cell battery. Ans. 2-9. Marple' s method involves preparing a cathode slurry that includes iron disulfide, acetylene black, and graphite; applying the slurry to both sides of a cathode substrate; drying the slurry; and calendaring the resultant cathode coating. Marple i-fi-121-24. Marple further discloses that the thickness of the cathode coating affects the capacity of the cathode. Marple i-fi-f 18, 25. Marple teaches, accordingly, that a cathode thickness is a known result- effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."). It follows, therefore, that one of ordinary skill in the art would have been led by this disclosure to determine an appropriate amount of cathode materiai through nothing more than routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCP A 1980) ("[D]iscovery of an optimum value of a result effective variable is ... ordinarily within the skill of the art."). The Examiner, in concluding that it would have been obvious to one of ordinary skill in the art to change the thickness of the cathode active layer disclosed in Marple because one of ordinary skill in the art would recognize that such a change in size would increase the electrode capacity (Ans. 3, 9) did not explicitly set forth that the thickness of the cathode active layer, and concomitantly the amount of cathode material per square centimeter, was a result-effective variable. For this reason, we designate our affirmance as a new ground. 4 Appeal 2015-001557 Application 11/508,680 As to the cathode material including between 1 % and 3 % by weight of a conductive aid including carbon black and graphite, the Examiner finds that Marple discloses a cathode material that includes from 1 % to 3% acetylene black (corresponding to carbon black) and from 3% to 6% graphite and relies on Smesko and Fukumine to address the differences in the amounts of these components. Ans. 2--4. Smesko discloses a cathode material for an electrochemical cell that includes iron disulfide as the active component, and discloses that the active material can be combined with a discharge promoter including carbon black and graphite. Smesko col. 4, 11. 44--45, 51-60; col. 5, 11. 5-8. Smesko discloses that cathode preferably comprises about 80% to about 99% by weight of the active material. Smesko col. 4, 11. 61-63. Fukumine discloses a cathode composition that includes an active material and conductive fine particles of graphite or acetylene black. Fukumine iii! 22, 47. Fukumine discloses that the amount of conductive fine particles in the cathode composition is preferably 1 to 20 parts by weight on the basis of 100 parts by weight of the active material, and further discloses that if the amount of conductive fine particles is too low, the conductivity of the cathode is compromised, but if the amount is too large, difficulties arise when dispersing the conductive fine particles. Fukumine i-f 4 7. The Examiner determines from these disclosures from Smesko and Fukumine that the amount of conductive aid in a cathode material is a known result-effective variable, and concludes that it therefore would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the amount of conductive aid, including acetylene black and graphite, in the cathode material disclosed in Marple. Ans. 4. 5 Appeal 2015-001557 Application 11/508,680 Claims 20, 21, 23, 26, 28-33, 35, 37-39, 42, 43, 45, 47, 48, and 52 Appellant argues these claims as a group on the basis of independent claim 20, to which we limit our discussion. Br. 6. Claim 20 recites a method of making a cathode for a battery where the method includes forming a slurry comprising iron disulfide, a solvent, and between 1 % and 3% by weight of a conductive aid including graphite and carbon black. Appellant argues that one of ordinary skill in the art would not have modified Marple' s cathode in view of the disclosures of Fukumine because the references are directed to different types of batteries, and accordingly have different aims and goals. Br. 7. Specifically, Appellant contends that Marple is directed towards improving performance and increasing energy and discharge efficiency of a primary battery that includes an iron disulfide cathode active material, and does not contain electrolyte after drying and calendaring, while Fukumine is directed towards improving the cycle life of a secondary battery that does not include iron disuifide as a cathode active material, and does contain a solid polymeric electrolyte. Br. 7-8. In support of these arguments, Appellant relies on a Rule 132 Declaration executed by Michael Pozin, an employee of the "Real Party in Interest" of the instant application, which was submitted to the Patent and Trademark Office on August 5, 2013 ("the Pozin Declaration"). Br. 8. According to the Declarant, "[b ]ecause of the substantial differences in the goals and design characteristics of primary batteries compared to secondary batteries, I would not have considered Fukumine' s disclosure to modify Marple' s cathode so that it would include, on a solids weight basis, less than at least 4.0 weight percent combined carbon additives." Pozin Declaration ii 5. 6 Appeal 2015-001557 Application 11/508,680 Appellant further argues, again relying on the Pozin Declaration, that changing the combined acetylene black and synthetic graphite content in Marple' s battery would have involved careful consideration of the impact of this change on the cathode porosity, as well as the amount of liquid electrolyte used during the process of making the cathode, but Fukumine provides no discussion regarding cathode porosity or liquid electrolyte. Br. 7-8; Pozin Declaration i-f 6. We find these arguments and the Declaration unpersuasive of reversible error because neither Appellant's arguments nor the Declarant address the fundamental basis for the Examiner's reliance on Fukumine, which is demonstration of a recognition in the prior art that the amount of conductive aid including carbon black and graphite in a cathode material affects the conductivity of the cathode, thus establishing that this amount is a known result-effective variable. Br. 6-8; Pozin Declaration i-fi-1 4---6. Applied Materials, 692 F.3d at 1297 ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations."); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion."); Yorkey v. Diab, 601F.3d1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another "unless no reasonable trier of fact could have done so"). We agree with the Examiner that one of ordinary skill in the art would have been led by this disclosure in 7 Appeal 2015-001557 Application 11/508,680 Fukmnine to determine an appropriate amount of conductive aid including acetylene black and graphite to use in the cathode material disclosed in Marple having an iron disulfide active component, and would have arrived at an appropriate amount, such as that recited in claim 20, through nothing more than routine experimentation. Boesch, 617 F.2d at 276. Moreover, Marple discloses that the cathode material preferably comprises from 1 to 3 weight % acetylene black (corresponding to carbon black) and from 3 to 6 weight% graphite. Marple i-f 13. Because this disclosure refers to the preferred amounts only, one of ordinary skill in the art reasonably would have understood that the other useful amounts of carbon black and graphite could be little less than or greater than the preferred amounts disclosed in Marple, and would have been led to determine an appropriate workable or useful amount, such as the amount recited in claim 20, through routine experimentation, as discussed above. AppeUant aiso argues that the Examiner impermissibiy reiies on hindsight to combine Smesko with Marple because one of ordinary skill in the art would not have had a reason to selectively pick iron disulfide from the "plethora of various [cathode] active materials" disclosed in Smesko, and also would not have had a reason to pick an unrelated teaching of conductive aids from Smesko, including the conductive aids disclosed in Example 1, because Smesko is focused on a non-woven film for an electrode, rather than the amount of conductive aid present in an iron disulfide cathode. Br. 8-9. Appellant's argument is unpersuasive, however, as picking and choosing particular elements from various disclosures from a cited reference, here picking and choosing various cathode active materials from those disclosed in Smesko, is "entirely proper in the making of a [section] 8 Appeal 2015-001557 Application 11/508,680 103[] obviousness rejection." In reArkley, 455 F.2d 586, 587-88 (CCPA 1972). Moreover, Smesko's disclosure of a multitude of effective combinations of cathode active materials and conductive aids does not render any particular formulation less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose."); In re Susi, 440 F .2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include[ d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives"). We, therefore, sustain the Examiner's rejection of claims 20, 21, 23, 26, 28--'33, 35, 37--'39, 42, 43, 45, 47, 48, and 52 under 35 U.S.C. § 103(a). Claim 59 Independent claim 59 recites a method of making a cathode for a battery where cathode material is supported by a substrate, and where at least one of the first and second sides of the substrate supports more than 25 milligrams of the cathode material per square centimeter of the substrate after the cathode material has been calendared. Appellant argues, again relying on the Pozin Declaration, that one of ordinary skill in the art would have understood from Marple' s disclosures that increasing the thickness of Marple' s cathode coating to a level that would provide more than 25 mg of cathode material per square centimeter of 9 Appeal 2015-001557 Application 11/508,680 substrate would cause the cathode coating to crack. Br. 10-11; Pozin Declaration iii! 7-9. We are not persuaded of reversible error, however, as we agree with the Examiner that Appellant's arguments and the statements in paragraphs 7-9 of the Pozin Declaration are unsupported by objective evidence. Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368. In other words, on the record before us, the objective evidence does not support the position that increasing the thickness of Marple' s cathode coating would cause the coating to crack. Br. 10-12; Pozin Declaration iii! 7-9. Although Appellant indicates that paragraph 4 of Marple "discusses the general issue" of avoiding cracks in the cathode coating, this portion of Marple does not indicate that cracking is related to the thickness of the coating. Br. 10. Nor do we find any objective evidence that supports the position that making the disclosed cathode coating in Marple thicker would require any effort beyond merely routine experimentation. Br. 10-12; Pozin Declaration iii! 7-9. Rejection II Claim 49--depending from claim 20---requires the cathode material to have a porosity of 30% or less. The Examiner acknowledges that Marple does not disclose that the porosity of the cathode material is 30% or less and, to address this deficiency in Marple, relies on Illic' s disclosure of an iron disulfide electrode having high energy density and a porosity of between 24% and 30%. Ans. 9. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify Marple' s cathode material having an iron disulfide active component to have 10 Appeal 2015-001557 Application 11/508,680 a porosity of between 24% and 30% as disclosed in Illic so that the cathode would have high energy density. Id. Appellant argues that Illic' s mere disclosure of an iron disulfide electrode would not have provided a suggestion to modify Marple' s cathode material as proposed by the Examiner, and Appellant repeats the argument that, as stated in the Pozin Declaration, changing the combined acetylene black and synthetic graphite content in Marple' s battery would have involved careful consideration of the impact of this change on the cathode porosity. Br. 12-13; Pozin Declaration i-f 6. Appellant further contends that battery chemistry is an unpredictable art, and "there is no basis in Illic or the primary references" that a porosity of 30% or less would have been feasible for Illic' s electrode, and for the cathode material recited in claim 49. Br. 13. However, we agree with the Examiner that Illic' s disclosures reasonably would have led one of ordinary skill in the art to an iron disulfide cathode materiai having a porosity of between 24% and 30%. As discussed above, Illic discloses that electrodes having a porosity of between 24% and 30% have high energy density, and discloses that preferred active materials for such electrodes include iron disulfide. Illic col. 3, 11. 3---6, 19-20, 24--26. Illic further discloses that such electrodes can be used broadly in both primary and secondary batteries. Illic col. 3, 11. 19-23. In view of these disclosures, one of ordinary skill reasonably would have been led, through nothing more than ordinary skill and creativity, to modify Marple' s cathode material including an iron disulfide active material to have a porosity of between 24% and 30%, overlapping the range recited in claim 49, and in so doing would have had a reasonable expectation of successfully producing a cathode having high energy density. 11 Appeal 2015-001557 Application 11/508,680 Accordingly, we concur with the Examiner that the evidence of obviousness, on balance, outweighs the evidence ofunobviousness relied upon by Appellant. Therefore, we sustain the Examiner's rejection of claim 49 under§ 103(a). DECISION The Examiner's rejections of claims 20, 21, 23, 26, 28-33, 35, 37-39, 42, 43, 45, 47--49, 52, and 59 under 35 U.S.C. § 103(a) are AFFIRMED, and our affirmance of these rejections is designated as including new grounds of rejection. Section 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that 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 proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... 12 Appeal 2015-001557 Application 11/508,680 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED; NEW GROUNDS OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) 13 Copy with citationCopy as parenthetical citation