Ex Parte Zhamu et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201712001981 (P.T.A.B. Feb. 27, 2017) Copy Citation 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. 12/001,981 12/14/2007 Aruna Zhamu 4644 138432 7590 03/01/2017 Nanntek Instruments; EXAMINER attn: IP Department 1240 McCook Ave LI, JUN Dayton, OH 45404 ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): IP @ nanotekinstruments. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARUNA ZHAMU and BORZ. JANG1 Appeal 2015-007741 Application 12/001,981 Technology Center 1700 Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and BRIAN D. RANGE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—5, 9—14, 16—20, 23, and 24. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 Aruna Zhamu and Bor Jang are identified as the real parties in interest. Br. 3. Appeal 2015-007741 Application 12/001,981 Appellants claim a battery cell comprising an anode, a cathode, and an ionically conductive protective layer on a surface of the anode between the anode and cathode comprising a porous membrane having interconnected pores with a soggy-sand soft matter phase disposed in the pores, wherein the soft matter phase consists of 5 to 40% (based on the total volume of oxide particles and salt solution) oxide particles dispersed in a non-aqueous salt solution, and wherein the cell is “essentially free of dendrite formation” (independent claims 1 and 16). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A battery cell, comprising: (a) an anode comprising an active metal or a metal ion storage material; (b) a cathode structure; (c) an ionically conductive protective layer on a surface of the anode and interposed between the anode and the cathode structure, wherein said protective layer is a porous membrane having interconnected pores with a pore volume fraction between 20% and 95% therein and a soggy-sand soft matter phase disposed in said interconnected pores, wherein said soft matter phase consists of 5 to 40% (based on the total volume of the oxide particles and the salt solution) oxide particles dispersed in a non-aqueous alkali, alkaline, or transition metal salt solution; and (d) a separator or electrolyte layer disposed between said conductive protective layer and said cathode structure; said cell being essentially free of dendrite formation. 2 Appeal 2015-007741 Application 12/001,981 The Examiner rejects all appealed claims under the 2nd paragraph of 35U.S.C. § 112 as being indefinite on the grounds that the independent claim phrase “essentially free of dendrite formation” is a relative phrase with no Specification disclosure of a standard for ascertaining the phrase scope (Final Action 2). Appellants argue “the person skilled in the art knows that the claim reads on battery cells that are free of dendrite formation or that contain small but insignificant amounts of dendrite” (Br. 7). In support of this argument, Appellants cite Glaxo Group Ltd. v. Ranbaxy Pharms., Inc., 262 F.3d 1333, 1334 (Fed. Cir. 2001) and In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (id.). Appellants’ argument is not persuasive. As correctly indicated by the Examiner, Appellants fail to show that their cited legal authorities are applicable to the circumstances of this appeal wherein no Specification disclosure has been identified as describing what degrees of dendrite formation are considered to satisfy the “essentially free” limitation recited by the independent claims (Ans. 7—8). We emphasize that Appellants do not dispute the Examiner’s response to their argument in this record (i.e., no Reply Brief has been filed). We sustain, therefore, the § 112, 2nd paragraph, rejection of the appealed claims. In addition, the Examiner rejects claims 1—5, 9-13, 16—20, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over Zhang ‘586 (US 6,432,586 B1 issued Aug. 13, 2002; hereinafter “Zhang ‘586”); in view of Zhang ‘941 3 Appeal 2015-007741 Application 12/001,981 et al. (US 2005/0031941 Al, published Feb. 10, 2005; hereinafter “Zhang ‘941”); and Aninda J. Bhattacharyya et al. (New Class of Soft Matter Electrolytes Obtained via Heterogeneous Doping Percolation Effects in “Soggy Sand” Electrolytes, Science Direct, 177 Solid State Ionics 2565— 2568 (2006); hereinafter “Bhattacharyya”) (Final Action 3—6) and correspondingly rejects remaining claim 14 over these references in combination with Gosho et al. (JP 2002-305026, published Oct. 18, 2002; hereinafter “Gosho”) (id. at 6). In rejecting the independent claims, the Examiner finds that Zhang ‘586 discloses a battery cell having an anode, a cathode, and a separator there between comprising a ceramic layer and a microporous layer (Final Action 3—4).2 Additionally, the Examiner finds that “Zhang [‘586] fails to specifically teach [] a soft matter phase disposed in at least one of the pores of the porous membrane, or the soft mat[t]er consisting of 5-40% of oxide particles [as required by the independent claims]” (Final Action 4). Concerning these deficiencies, the Examiner finds that Zhang ‘941 teaches a lithium battery separator having a porous membrane coated with inorganic metal oxides and determines that “inorganic metal will be disposed into the pores of the porous membrane when such inorganic metal oxide particles coat[] a porous membrane” (id. ). Further, the Examiner finds that 2 The Examiner also finds that the ceramic layer of Zhang ‘586 prevents dendrite formation thereby satisfying the independent claim requirement that the battery cell be essentially free of dendrite formation (id.), and Appellants do not argue otherwise (see generally Br.). As a consequence, the indefinite scope of this claim requirement does not forestall a merit assessment of the § 103 rejections. 4 Appeal 2015-007741 Application 12/001,981 Bhattacharyya discloses using corresponding inorganic metal oxides disbursed in lithium salts as soft matter electrolytes {id. at 4—5). Based on the foregoing, the Examiner concludes that it would have been obvious “to adopt the soft matter as shown by Bhattacharyya to improve the porous membrane separator layer of Zhang [‘586]” {id. at 5) and that it would have been obvious “to optimize the[]. . . volume fraction [of oxide particles in this soft matter] as recited in the instant claims to obtain . . . oxide particles with desired conductivity for usage in lithium secondary battery separator” (id. ). We agree with Appellants that the Examiner’s proposed combination of the Zhang and Bhattacharyya references is based on conjecture (Br. 10). More specifically, we agree with Appellants that the Examiner implicitly proposes this combination inherently would result in Bhattacharyya’s soft matter phase disposed in the interconnected pores of Zhang ‘586 as claimed, but there is no evidence such a result would be inevitable {id. at 12—13). We emphasize Appellants’ point that soft matter disposed in interconnected pores as required by the independent claim prevents dendrite formation and that the applied references contain no teaching or suggestion of preventing the formation of dendrite via soft matter disposed in interconnected pores {id. at 8—10, 14; see also Spec. 9, 23). As indicated above, the Examiner concludes that it would have been obvious to optimize the volume fraction of Bhattacharyya’s soft matter phase oxide particles disposed in the interconnected pores of Zhang ‘586 so as to be within the claimed range of 5 to 40% “to obtain . . . oxide particles with desired conductivity for usage in 5 Appeal 2015-007741 Application 12/001,981 lithium secondary battery separator” (Final Action 5). However, this claimed range is for preventing dendrite formation. The record before us contains no evidence that the claimed range for preventing dendrite formation would result from optimization for achieving a desired conductivity as proposed by the Examiner. For these reasons, we will not sustain the § 103(a) rejections of the appealed claims. ORDER In summary, we have sustained the § 112, 2nd paragraph, rejection of the appealed claims but have not sustained the § 103(a) rejections. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 6 Copy with citationCopy as parenthetical citation