Ex Parte Tenzer et al

Patent Trials and Appeals Board

Jun 12, 2019

14406290 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/406,290 12/08/2014
24972 7590 06/14/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Martin Tenzer
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.
BOSC.P9076US/100076616 1090
EXAMINER
KANG, DANNY N
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR TIN TENZER and JEAN F ANO US
Appeal2018-007942
Application 14/406,290
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREYB. ROBERTSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 16-39. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM. Because our affirmance relies upon facts and
arguments that may differ from those forming the basis of the Examiner's
1 We cite the Substitute Specification ("Spec.") filed December 8, 2014;
Non-Final Office Action ("Final Act.") dated August 22, 2017; Appellant's
Appeal Brief ("App. Br.") filed February 12, 2018; Examiner's Answer
("Ans.") dated June 11, 2018; and Appellant's Reply Brief ("Reply Br.")
dated July 31, 2018.
2 Appellant is the Applicant, Robert Bosch GmbH, which is identified at
page 2 of the Appeal Brief as the real party in interest.
Appeal2018-007942
Application 14/406,290
decision, we designate the affirmance as a NEW GROUND OF
REJECTION.
BACKGROUND
The subject matter on appeal relates to manufacture of a
polyacrylonitrile-sulfur composite material, such as may be used in an
alkali-sulfur battery. Spec. 1. Claim 16 is illustrative:
16. A method for manufacturing a polyacrylonitrile-sulfur
composite material, comprising:
a) providing a matrix material, wherein the matrix
material comprises sulfur;
b) adding polyacrylonitrile to the matrix material to
produce a mixture made of sulfur and polyacrylonitrile; and
c) reacting sulfur and polyacrylonitrile.
App. Br. (Claims Appendix 1 ).
REJECTIONS
I. Claims 16-22, 25, and 28-39 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Miyuki3 and Yu. 4
II. Claims 23 and 24 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Miyuki, Yu and Fanous. 5
III. Claims 16, 26, and 27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over He6 and Yu.
OPINION
Rejection I
3 US 2011/0200875 Al, published August 18, 2011.
4 Xianguo Yu et al., 146 Journal of Power Sources (2005), pp. 335-339.
5 Jean Fanous et al., 23 Chemistry of Materials (2011), pp. 5024--5028.
6 US 2012/0059129 Al, published March 8, 2012.
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Application 14/406,290
Appellant argues the claims subject to Rejection I as a group, with the
exception of claim 39, which is argued separately. See App. Br. 3---6. We
select claim 16 as representative of the grouped claims. Claims 17-22, 25,
and 28-38 stand or fall with representative claim 16. Claim 39 is separately
addressed.
Claim 16
The Examiner finds that Miyuki discloses a manufacturing method
that comprises providing a matrix material, adding polyacrylonitrile to the
matrix material, and reacting sulfur and polyacrylonitrile by heating. Non-
Final Act. 3--4 (citing Miyuki ,r 13). The Examiner states that "Miyuki fails
to disclose wherein the matrix material comprises sulfur," and finds that Yu
teaches use of a matrix material comprising sulfur "for the purpose of
improving high and stable cyclability and better electrical conductivity." Id.
at 4. The Examiner concludes that it would have been obvious "provide a
matrix comprising sulfur in Miyuki" to obtain the benefits taught by Yu. Id.
Appellant argues that the Examiner erred in finding that Yu teaches
use of a sulfur-containing matrix material as claimed. App. Br. 4. Appellant
contends that Yu's disclosure of sulfur-containing materials regards material
that was synthesized by heating a mixture of polyacrylonitrile and elemental
sulfur, similar to the method taught in Miyuki. Id. Thus, Appellant argues,
Yu fails to teach adding polyacrylonitrile to a sulfur-containing matrix
material as claimed. Id.
Our consideration of Rejection I is complicated by the fact that the
Examiner does not particularly identify the material in Miyuki that is viewed
as the matrix material. In the Non-Final Office Action, the Examiner merely
states that Miyuki discloses a step of "providing a matrix material," and does
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Application 14/406,290
not identify Miyuki' s matrix material other than to find that it does not
comprise sulfur. Non-Final Act. 3--4. In the Answer, the Examiner states
that Miyuki' s "base powder" comprising sulfur powder mixed with
polyacrylonitrile powder "is considered the matrix material comprising
sulfur." Ans. 6-7. That characterization appears inconsistent with the
Examiner's finding that "Miyuki fails to disclose wherein the matrix
material comprises sulfur." Non-Final Act. 4. Moreover, as Appellant
points out (Reply Br. 2-3), if Miyuki's sulfur/polyacrylonitrile mixture is
viewed as a sulfur-containing matrix material, then the claimed step of
adding polyacrylonitrile to the matrix material is not met.
However, Appellant does not dispute the Examiner's principal finding
that Miyuki discloses adding polyacrylonitrile to sulfur powder, and reacting
the mixture by heating. Compare Ans. 3 ("Miyuki teaches a sulfur-modified
polyacrylonitrile manufacturing method that is characterized ... in that a
starting base powder that comprises sulfur powder and polyacrylontirile [sic]
powder is mixed and the mixture is heated") with, Reply Br. 3 ("sulfur
powder is mixed with polyacrylonitrile, and then the mixture is charged in a
collector for a cathode and then heated") (quoting Miyuki ,r 13). Yu,
likewise, discloses adding polyacrylonitrile to elemental sulfur and heating
the mixture. Yu (Abstract). As the Examiner correctly observes (Ans. 6),
Appellant's claim does not specify the recited matrix material other than to
require that it include sulfur. In that regard, the Specification reveals that the
matrix material of the invention can be sulfur. Spec. 5 ("[T]he matrix
material may be selected from the group including sulfur, silicon
compounds, such as silicon dioxide, and/or carbon modifications."); id. at 5-
6 ("in the case of the use of sulfur as a matrix material, each
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Application 14/406,290
polyacrylonitrile particle may be enclosed by sulfur and therefore a
polyacrylonitrile-sulfur composite material may be formed"). The use of
sulfur as the matrix material is characterized as an advantageous
embodiment of the invention because "the addition of further materials may
be omitted." Id. at 6.
Reading claim 16, in light of the foregoing teachings in the
Specification, we determine that the claimed matrix material encompasses
elemental sulfur. In light of that interpretation, we are not persuaded of error
in the Examiner's ultimate determination that the claimed process is not
patentable over Miyuki's and Yu's respective processes in which
polyacrylonitrile is added to elemental sulfur and the resulting mixture is
heated to react those materials.
Claim 39
With regard to claim 39, the Examiner finds that Miyuki teaches
reacting polyacrylonitrile by heating to 250-500 °C (Ans. 8) and that Yu
teaches sulfur-containing materials (CSMs) having improved cyclability are
obtained by when sulfur and polyacrylonitrile are reacted at a temperature
greater than 400 °C (Non-Final Act. 9). See Yu Abstract ("The cyclability is
improved remarkably for CSMs obtained above 400 °C.").
Appellant argues that neither Miyuki nor Yu specify reacting by
heating at two separate temperatures. App. Br. 5-6. We agree with
Appellant in that regard. Miyuki discloses heating to within a reaction
temperature range and optionally, after reaction, heating to within a second
temperature range to remove any unreacted sulfur. Miyuki ,r,r 43, 65-68.
Yu also heats to within a single reaction temperature range. Yu Abstract.
However, claim 39 recites that "polyacrylonitrile is reacted with sulfur at a
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first temperature in a range of greater than or equal to 250°C ... then at a
second, higher temperature in a range of greater than or equal to 400°C to
less than or equal to 600°C." The claim does not recite any length of heating
time at the respective temperatures. Because Miyuki' s disclosure of heating
to a temperature as high as 500°C, as well as Yu's disclosure of preferably
heating to above 400°C, necessarily would have included a prior step of
heating at a lower temperature, e.g. 250°C, the sequential heating recited in
claim 39 would have been satisfied.
Rejection II
With regard to Rejection II, Appellant solely relies on the same
argument that Yu does not teach use of a sulfur-containing matrix material
as claimed. App. Br. 6. However, He, like Miyuki and Yu, also teaches
combining polyacrylontrile with sulfur and heating the mixture to form
sulfurized polyacrylonitrile. See He ,r 5. Consistent with our determination
that the recited matrix material encompasses elemental sulfur, we are not
persuaded of error in the Examiner's ultimate determination that the claimed
process is not patentable over He's and Yu's respective processes in which
polyacrylonitrile is added to elemental sulfur and the resulting mixture is
heated to react those materials.
CONCLUSION
Each of the Examiner's rejections is sustained.
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Application 14/406,290
DECISION
The Examiner's decision rejecting of claims 16-39 is affirmed. We
have designated our affirmance as a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b).
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejection(s), 37 C.F.R. § 4I.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.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 grounds 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 ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED; 37 C.F.R. § 4I.50(b)
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