Ex Parte Zhang et al

Patent Trial and Appeal Board

Feb 27, 2017

13527089 (P.T.A.B. Feb. 27, 2017)

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.
13/527,089 06/19/2012 Hongbo Zhang EXD0014US2 8682
23413 7590 03/01/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street VO, JIMMY
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1723
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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONGBO ZHANG,
DAVID ROBERT MIHARA, and XIANGJUN WANG1
Appeal 2016-003264
Application 13/527,089
Technology Center 1700
Before GEORGE C. BEST, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’
rejections of claims 1—19.
We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
1 Exide Technologies is identified as the real party in interest. App. Br. 2.
Appeal 2016-003264
Application 13/527,089
REJECTIONS
The following rejections are before us on appeal:
1. Claims 1—19 under 35 U.S.C. § 112,11 as failing to comply with
the written description requirement (Final Act. 3^4; Ans. 2—3);
2. Claims 1, 6-8, 10, 11, 13, 14, and 19 under 35 U.S.C. § 102(b) as
anticipated by Hooke (US 6,534,212 Bl, issued Mar. 18, 2003), or
alternatively under 35 U.S.C. § 103(a) as unpatentable over Hooke
in view of Tamezane et al. (US 6,187,473 Bl, issued Feb. 13,
2001, hereinafter “Tamezane”) (Final Act. 4—10; Ans. 3—9);
3. Claims 2-4, and 15—17 under 35 U.S.C. § 103(a) as unpatentable
over Hooke in view of Tamezane, and further in view of Kozuki
(US 2009/0280406 Al, published Nov. 12, 2009) (Final Act. 10-
11; Ans. 9-10);
4. Claims 5, 12, and 18 under 35 U.S.C. § 103(a) as unpatentable
over Hooke in view of Tamezane, and further in view of Tsuji et
al. (US 2003/0203283 Al, published Oct. 30, 2003, hereinafter
“Tsuji”) (Final Act. 11—12; Ans. 10-11); and
5. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Hooke in
view of Tamezane, and further in view of Linden (Handbook of
Batteries 54—55, 781 (McGraw-Hill, 3rd ed. 2002), hereinafter
“Linden”) (Final Act. 12-13; Ans. 11-12).
Rejection 1
In rejecting claims 1—19 under 35 U.S.C. § 112,11 as failing to
comply with the written description requirement, the Examiner finds that the
limitation recited in independent claims 1 and 7, regarding “apertures ‘for
receiving electrolyte [therethrough] such that the same quality of electrolyte
2
Appeal 2016-003264
Application 13/527,089
is distributed uniformly throughout the cell’ ... is not supported by the
original disclosure and is considered new matter.” Final Act. 3. The
Examiner finds that “[t]he specification at most supports [a] plurality of
apertures ‘for receiving electrolyte’.” Id. at 3^4. The Examiner finds further
that the limitation contained in independent claim 14 reciting “when filling
the cell, uniformly distributing the same quality of electrolyte throughout the
winding assembly” is likewise “considered to be new matter” because “the
manner [in which] the electrolyte is filled” is not supported in the original
disclosure. Id. at 4.
Appellants have argued rejected claims 1—19 as a group. App. Br. 9—
12; Reply Br. 2. We therefore select and decide the appeal as to this ground
of rejection on the basis of claim 1 alone. 37 C.F.R. §41.37(c)(l)(iv).
Appellants contend that support for the disputed limitations may be
found in Figures 2-4 as well as in 123 of the ’089 Application’s
Specification. App. Br. 9—12; Reply Br. 2. We disagree.
The purpose of the written description requirement in
35 U.S.C. § 112,11 is to “‘clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.’” AriadPharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id.
In this case, the Examiner correctly points out that 123 “does not
[disclose] the quality of the electrolyte or how the electrolyte is distributed
uniformly throughout the cell.” Ans. 12. Appellants point us to no
disclosure regarding the quality of the electrolyte, or how such electrolyte is
uniformly distributed throughout the cell. Rather, Appellants provide
3
Appeal 2016-003264
Application 13/527,089
unembellished arguments devoid of evidence that a uniform distribution of
the same quality of electrolyte would somehow occur as a result of the
claimed configuration. App. Br. 9—12; Reply Br. 2.
Thus, on this record, we determine that the Specification does not
“reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date” as required by
Ariad, 598 F.3d at 1351. Rather, we agree with the Examiner that “[a]
person skilled in the art would not find the specification to inherently
disclose or suggest” the limitation that requires “the same quality of
electrolyte is distributed uniformly throughout the cell.” Ans. 12.
We therefore sustain the Examiner’s rejection of claims 1—19 under
35 U.S.C. §112,11.
Rejections 2 through 5
We do not believe it is necessary to address the novelty or
obviousness of claims which contain a limitation not described by the
Specification as filed, because an affirmance of the lack of written
description rejection disposes of all claims on appeal. Thus, we decline to
reach the anticipation and obviousness rejections and express no opinion
thereon.
DECISION
We affirm the Examiner’s rejection of claims 1—19 under 35 U.S.C.
§ 112,11 as lacking written description.
We decline to reach the Examiner’s rejections of claims 1—19 under
35 U.S.C. § 102(b) and/or § 103(a).
4
Appeal 2016-003264
Application 13/527,089
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
5