Ex Parte Wegner et al

Patent Trial and Appeal Board

Jul 11, 2018

13883658 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/883,658 07/19/2013
24972 7590 07/13/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Marcus Wegner
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.P8116US/l 1603376 3700
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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 MARCUS WEGNER, MAR TIN TENZER,
and JEAN FANOUS
Appeal2017-009286
Application 13/883,658
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 16-31 and 34--482. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Robert Bosch GmbH as the real party in interest.
Appeal Brief filed January 5, 2017 ("App. Br."), 2.
2 Claims 32 and 33 stand withdrawn from consideration. Final Office
Action entered May 25, 2016 ("Final Act."), 1.
Appeal2017-009286
Application 13/883,658
STATEMENT OF THE CASE
Appellants claim a method for producing a cathode material for a
cathode of an alkali-sulfur cell. Independent claim 16 illustrates the subject
matter on appeal and is reproduced below with contested language italicized:
16. A method for producing a cathode material for a cathode
of an alkali-sulfur cell, comprising:
a) mixing elemental sulfur, at least one electrically
conducting component, and one of a solvent or solvent mixture,
the elemental sulfur being completely dissolved in the solvent
or solvent mixture; and
b) removing the solvent or solvent mixture;
wherein the cathode material has capacities of more than
about 550 mAh/g and an average voltage of at least about 2.1
V, so as to provide an energy density of at least approximately
500 Wh/kg, and
wherein the solvent or the solvent mixture and the at least
one electrically conducting component do not enter into a
chemical reaction or do not bind to the elemental sulfur in
method step a), in particular a reaction in which the elemental
sulfur leaves oxidation stage 0, at a large proportion and/or
irreversibly, which provides for maintaining an average voltage
by avoiding drops of the average voltage of about 0.1 v to 0.3 v.
App. Br. Claims Appendix 1 ( emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Examiner's Answer entered April
20, 2017 ("Ans."):
I. Claims 16-31 and 34--48 under 35 U.S.C. § 103(a) as
unpatentable over Campbell et al. (US 2011/0256450 Al, published October
20, 2011); and
II. Claim 48 under 35 U.S.C. § 103(a) as unpatentable over
Perichaud et al. (US 4,664,991, issued May 12, 1987).
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Application 13/883,658
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we affirm the Examiner's rejections of
claims 16-31 and 34--48 under 35 U.S.C. § 103(a) for the reasons set forth in
the Final Action, the Answer, and below.
We note initially that Appellants do not separately address Rejections
I and II, and do not present arguments specifically directed to any particular
applied prior art reference. App. Br. 10-15. Instead, Appellants argue both
rejections together and refer generally to the applied prior art "reference"
and "references". Id.
Rejection I
Appellants argue claims 16, 18, 21, 34, 47, and 48 separately. App.
Br. 10-15. Consistent with 37 C.F.R. § 4I.37(c)(l)(iv), we address the
argued claims, and the remaining claims stand or fall with the argued claims.
Claims 16 and 3 4
Independent claims 16 and 34 both recite that the solvent or the
solvent mixture and the at least one electrically conducting component do
not enter into a chemical reaction or do not bind to the elemental sulfur in
method step a), in particular a reaction in which the elemental sulfur leaves
oxidation stage 0, at a large proportion and/or irreversibly, which provides
for maintaining an average voltage by avoiding drops of the average voltage
of about 0.1 v to 0.3 v.
Appellants do not dispute the Examiner's finding that Campbell
discloses a process for producing a cathode material that comprises
dissolving elemental sulfur in toluene (solvent), adding a conductive
polymer and/or a conductive porous carbon, heating the mixture to 103°C,
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Application 13/883,658
and removing the toluene. Compare Final Act. 3 ( citing Campbell ,r,r 27, 4 7,
148), with App. Br. 10-15. 3 The Examiner finds that Campbell discloses
that polyaniline and polythiophenes are suitable conductive polymers, and
graphite is a suitable conductive porous carbon. Final Act. 3 ( citing
Campbell ,r,r 81, 36).
The Examiner finds that Campbell does not disclose or suggest that
the toluene solvent and the conductive polymer or porous carbon enter into a
chemical reaction or bind the elemental sulfur. Final Act. 3 ( citing
Campbell ,r 4 7); Ans. 6. The Examiner further finds that because Campbell
discloses the same elemental sulfur as recited in claims 16 and 34, the same
toluene solvent (as described in Appellants' Specification), the same
graphite or polythiophene conductive component ( as described in
Appellants' Specification), and the same process steps as recited in claims
16 and 34, the toluene solvent and graphite or polythiophene conductive
component disclosed in Campbell inherently would not react or bind the
elemental sulfur when mixed during Campbell's process for producing a
cathode. Final Act. 3--4; Ans. 6.
The Examiner determines that the recitation in claims 16 and 34 of
"which provides for maintaining an average voltage by avoiding drops of the
average voltage of about 0.1 v to 0.3 v" is explanatory language that
describes a result or benefit that naturally flows from performing the claimed
method in which the solvent and the electrically conducting component do
not react or bind to the elemental sulfur during the mixing step. Final Act. 5;
3 We note that the arguments Appellants present in the Reply Brief appear to
be identical to those presented in the Appeal Brief, and we therefore cite
only to the Appeal Brief.
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Application 13/883,658
Ans. 6-7.
Appellants assert that the Examiner does not provide the required
factual findings to establish that the feature of "provides for maintaining an
average voltage by avoiding drops of the average voltage of about O .1 v to
0.3 v" is met by the "reference relied upon." App. Br. 14. Appellants
contend that any review of the reference "makes plain that it simply does not
describe" or suggest this feature. App. Br. 10-11, 14. Appellants further
assert that the "Office Actions to date reflect a subjective 'obvious to try'
standard" that is not based on evidence supporting a proper obviousness
determination, and Appellants contend that the Office Actions provide "only
conclusory hindsight, reconstruction and speculation." App. Br. 12-14.
However, Appellants' assertions do not constitute cogent arguments
that address the Examiner's factual findings and reasoning. Cf In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 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. Because Lovin
did not provide such arguments, the Board did not err in refusing to
separately address claims 2-15, 17-24, and 31-34.").
Like Campbell, Appellants' Specification indicates that suitable
solvents for use in the method for producing a cathode material of claims 16
and 34 include toluene. Spec. 6, 11. 14--16. Also like Campbell, Appellants'
Specification further indicates that suitable electrically conducting
components for use in the claimed method include graphite, polythiophene,
and polyaniline. Spec. 4, 11. 21-26; 5, 11. 12-16. In addition, it is undisputed
that Campbell's method involves the same process steps as recited in claims
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Application 13/883,658
16 and 34-----dissolving elemental sulfur in toluene, adding a conductive
polymer and/or a conductive porous carbon, and removing the toluene from
the mixture. Compare Final Act. 3 (citing Campbell ,r,r 27, 47, 146), with
App. Br. 10-15. Therefore, as the Examiner correctly finds, the method for
producing a cathode material disclosed in Campbell appears to be the same
or substantially the same as the method of claims 16 and 34. Consequently,
the Examiner has a reasonable basis for finding that the toluene solvent and
graphite or polythiophene conductive component disclosed in Campbell
would not react or bind to the elemental sulfur when mixed during the first
step of Campbell's process. It follows that the Examiner therefore has a
reasonable basis for finding that a cathode material produced using
Campbell's process would inherently maintain an average voltage by
avoiding drops of the average voltage of about 0.1 v to 0.3 v, as recited in
claims 16 and 34.
Accordingly, the burden shifts to Appellants to show that the method
for producing a cathode material disclosed in Campbell is materially
different from the method for producing a cathode material recited in claims
16 and 34, and produces a cathode that does not necessarily or inherently
possess the characteristics of a cathode produced by the claimed method,
including providing for maintaining an average voltage by avoiding drops of
the average voltage of about 0.1 v to 0.3 v. In re Best, 562 F.2d 1252, 1255
(CCPA 1977) ("Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product."); In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
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("[W]hen the prior art evidence reasonably allows the PTO to conclude that
a claimed feature is present in the prior art, the evidence 'compels such a
conclusion if the applicant produces no evidence or argument to rebut it."'
(quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)). We note that
it is ofno moment whether the Examiner's rejection is based on§ 102 or§
103 because the burden on Appellants is the same in either case. Spada, 911
F.2d at 708; Best, 562 F.2d at 1255.
On this record, Appellants do not meet their burden because they do
not identify any unobvious difference between the method disclosed in
Campbell and the method recited in claims 16 and 34, and do not identify
any structural distinction, or unobvious difference, between a cathode
produced by the method disclosed in Campbell and a cathode produced by
the method recited in claims 16 and 34. App. Br. 10-15. Therefore,
Appellants do not demonstrate that a cathode produced by Campbell's
method would not provide for maintaining an average voltage by avoiding
drops of the average voltage of about 0.1 v to 0.3 v. Id.
We accordingly sustain the Examiner's rejection of claims 16 and 34
under 35 U.S.C. § 103(a).
Claim 18
Claim 18 depends from claim 16 and recites that in step a), the at least
one electrically conducting component is selected from at least one of
graphite, soot, and carbon nanotubes. Appellants assert that such an
electrically conducting component is not disclosed in "the applied
references," and contend that nothing in the Final Action refutes or even
addresses this fact. App. Br. 11. However, as discussed above, the
Examiner correctly finds that Campbell explicitly discloses that suitable
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electrically conductive materials for use in the method of producing a
cathode material described in the reference include graphite. We
accordingly sustain the Examiner's rejection of claim 18 under 35 U.S.C. §
103(a).
Claim 21
Claim 21 depends from claim 16 and recites that in step a), the at least
one electrically conducting component is selected from the group made up
of polythiopene and polythiophene derivatives, polypyrrole and polypyrrole
derivatives, polyparaphenylene and polyparaphenylene derivatives,
polythiophene and polythiophene derivatives and combinations thereof.
Appellants assert that such an electrically conducting component is not
disclosed in "the applied references," and contend that nothing in the Final
Action refutes or even addresses this fact. App. Br. 12. However, as
discussed above, the Examiner correctly finds that Campbell explicitly
discloses that suitable electrically conductive materials for use in the method
of producing a cathode material described in the reference include
polyaniline and polythiophenes. We accordingly sustain the Examiner's
rejection of claim 21 under 35 U.S.C. § 103(a).
Claim 47
Appellants argue that independent claim 4 7 is allowable because it
recites the features of claims 16 and 18 discussed above that Appellants
assert are not disclosed in the applied prior art. App. Br. 11-12. Because
we are unpersuaded of reversible error in the Examiner's rejection of claims
16 and 18 for the reasons discussed above, Appellants' position as to claim
4 7 is also without merit.
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Application 13/883,658
Claim 48
Appellants argue that independent claim 48 is allowable because it
recites the features of claims 16 and 21 discussed above that Appellants
assert are not disclosed in the applied prior art. App. Br. 12. Because we
are unpersuaded of reversible error in the Examiner's rejection of claims 16
and 21 for the reasons discussed above, Appellants' position as to claim 48
is also without merit.
We accordingly sustain the Examiner's rejection of claims 16-31 and
34--48 under 35 U.S.C. § 103(a).
Rejection II
Having affirmed Rejection I directed to all of the claims on appeal, it
is unnecessary for us to reach the merits of this additional rejection of claim
48 under§ 103(a) because it is, at most, cumulative to Rejection I. Cf In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (holding that obviousness
rejections need not be reached upon affirming a rejection of all claims as
anticipated); In re Basel! Poliolefine, 547 F.3d 1371, 1379 (Fed. Cir. 2008)
("Having concluded that the Board properly affirmed the rejection of claims
1-52 of the '687 patent based on obviousness-type double patenting in view
of the '987 patent, we need not address the remaining issues raised by Basell
regarding the §§102(b) and 103(a) rejections, as well as the additional
double patenting rejections. Accordingly, the Board's decision is
affirmed."); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (having decided a single dispositive issue, the ITC was not required to
review other matters decided by the presiding officer).
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DECISION
We affirm the Examiner's rejections of claims 16-31 and 34--48 under
35 U.S.C. § 103(a).
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
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