Ex Parte Zucker

Board of Patent Appeals and Interferences

Mar 30, 2006

10155253 (B.P.A.I. Mar. 30, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY ZUCKER
____________

Appeal No. 2006-0832
Application No. 10/155,253
____________

ON BRIEF
____________

Before GARRIS, PAK, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-9 and 16-26.
BACKGROUND
Appellant's invention relates to a printed battery including
a flexible backing sheet and printed conductive and electrode
layers. An understanding of the invention can be derived from a
reading of exemplary claim 1, which is reproduced below.
A printed battery comprising
a flexible backing sheet;
a first conductive layer printed on said sheet;
a first electrode layer printed on said first
conductive layer, the first electrode layer comprising an
active material having a particle size less than or equal to 0.5
microns;
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a second electrode layer printed on said first
electrode layer, the second electrode layer comprising an
active material having a particle size less than or equal to 0.5
micron; and
a second conductive layer printed on said second
electrode layer.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Parker 6,369,793 Apr. 09, 20021
Schubert et al. (Schubert) US 2003/0165744 Sep. 04, 20032

Claims 1-9 and 16-26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Parker in view of Schubert.
OPINION
Having carefully considered each of appellant’s arguments
set forth in the brief and reply brief and the evidence of
record, appellant has not persuaded us of reversible error on the

1 Application filed on March 30, 1999.
2 The Schubert published application was filed on Dec. 17, 2002 (a date
subsequent to the filing date of the subject application). However, the Schubert
publication claims priority under § 119(e) to several provisional applications filed on Feb.
12, 2002. Appellants have not disputed the availability of the subject matter contained
in Schubert as prior art to the presently claimed invention, on the record before us.
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part of the examiner in concluding that the appealed claimed
subject matter would have been obvious to one of ordinary skill
in the art at the time of the invention within the meaning of
§ 103(a). Accordingly, we will affirm the examiner’s obviousness
rejection for substantially the reasons set forth in the answer
and as further emphasized below.
Appellant argues the rejected claims as a group. Thus, we
select claim 1 as the representative claim on which we shall
decide this appeal.
Appellant does not quibble with the examiner’s well-founded
determination that Parker discloses a printed battery, including
inter alia, a flexible substrate or backing sheet, a first
contact (conductive) layer (24), an anode (electrode) layer (26),
a cathode (electrode) layer (30), and a contact (conductive)
layer 32. See column 4, lines 23-57 and drawing figure 2 of
Parker.
That disclosure of Parker corresponds with the battery
called for in representative appealed claim 1 but for explicitly
describing particle sizes for the active material of first and
second electrode layers thereof, as recited in representative
claim 1. However, the examiner correctly notes that Parker
(column 5, lines 4-7) teaches that each of those layers of the
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disclosed battery are formed to be about .0002 inch to about
.0008 inch (about 5-20 microns) thick in dry form so as to arrive
at a desired thin battery. See page 4 of the answer.
As further intimated by the examiner (answer, page 7),
Parker clearly suggests that the active material particles used
in forming the battery layers, including the electrode layers,
must be sized at least small enough to permit the formation of
the thin layers containing those particles. In other words, it
is the examiner’s view that Parker certainly suggests employing
particles of the active materials of dimensions much smaller than
the thickness dimensions (5-20 microns) of the layers desired to
be formed by Parker. We agree with that determination of the
examiner.
As for the specific 0.5 micron or less particle sizes of
each of the electrode layers recited in appealed claim 1, we
agree with the examiner that Parker would have reasonably led one
of ordinary skill in the art to choose active material particle
sizes much less than the 5 micron (.0002 inch) minimum thickness
of the electrode layers formed using those particles. See
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
1955)(“[W]here the general conditions of a claim are disclosed in
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the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
Not withstanding that the teachings of Parker alone make
manifest the prima facie obviousness of the claimed battery, the
examiner further buttresses that obviousness evidence by further
referring to the teachings of Schubert concerning the formation
of flexible thin batteries formed with printed layers. In this
regard, the examiner correctly points out that Schubert teaches
that the particle sizes of active material in the separate layers
of such a battery is a result effective variable and should be
at least twice as small in dimensions as the thickness of the
layer to be formed therewith. See page 4 of the answer and
paragraph 0042 of Schubert. Moreover, the examiner notes that
Schubert exemplifies using an average of 0.3 to 1.0 micron size
jet-milled electrode (cathode) particles in forming a printed
electrode in Example 5. In this regard, we also note that
Schubert shows the use of around 1 micron sized particles for the
cathode and anode electrode layers even when those layers are
formed up to as much as 190 microns thick in Example 8.
Given the combined disclosures of Parker and Schubert, the
examiner has reasonably determined that one of ordinary skill in
the art would have been led to employ small particles for the
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very thin electrode layers desired by Parker; that is, particles
of size range, such as less than the here claimed 0.5 micron with
a reasonable expectation of achieving a useful flexible battery
having the desired slim profile and appropriate electrical
properties.
Given the above and for the reasons well-stated by the
examiner in the answer, appellant’s arguments suggesting a lack
of motivation and improper use of hindsight by the examiner are
without persuasive effect. Parker clearly is not limited to the
maximum layer thicknesses and associated maximum sized particles
of active materials that can possibly be used in forming the
electrode layers of the battery, as appellant’s arguments (brief,
pages 9-18) would have us accept.
In addition, appellant’s arguments in the brief and reply
brief suggesting that Schubert teaches away from the examiner’s
proposed combination with Parker are clearly without merit in
terms of showing reversible error in the examiner’s rejection.
As to the specific question of "teaching away," our
reviewing court in In re Gurley, 27 F.3d 551, 553, 31 USPQ2d
1130, 1131 (Fed. Cir. 1994) stated:
[a] reference may be said to teach away when a person
of ordinary skill, upon [examining] the reference,
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would be discouraged from following the path set out in
the reference, or would be led in a direction divergent
from the path that was taken by the applicant.
Here, we agree with the examiner that Schubert provides
facts which support the examiner’s obviousness contention
regarding the proposed modification of Parker as outlined in the
answer and above. Certainly, Schubert does not serve as a
teaching away from the claimed subject matter as appellant
maintains. In this regard, we find no discouragement with
respect to using particle sizes for the electrode active
materials in the size range claimed for forming the electrode
layers of Parker based on the teachings of Schubert with respect
to the marginal or poor rate capabilities of jet-milled
electrolytic magnesium dioxide (EMD), as discussed in paragraph
0062 of Schubert. That potential disadvantage of using
jet-milled EMD cathode material discussed in Schubert is limited
to certain battery applications using EMD cathode material and
can be offset by employing a larger area electrode and/or using
different graphite contents as further discussed in paragraph
0062 of Schubert. Of more significance, we note that the
representative appealed claim 1 does not require the use of
jet-milled EMD and neither does Parker require such an active
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material for the cathode. As such, appellant’s teaching away
contention is lacking in merit.
We disagree with appellant’s speculation that the proposed
modification of Parker would destroy the intended function of
Schubert by preventing the formation of thin battery electrode
layers. The paragraph 0062 passage of Schubert referred to by
appellant indicates that thicker electrodes may be required for
some battery applications using jet-milled EMD as cathode
material. Such a disclosure is hardly proof that the non-EMD
cathode materials of Parker could not be made thin if small
particles of cathode material, such as the zinc disclosed by
Parker, were employed in making the cathode.
Consequently, on this record, appellants have not persuaded
us of any error in the strong prima facie case of obviousness
presented by the examiner based on the arguments furnished in the
briefs. It follows that we shall sustain the examiner’s
obviousness rejection of the appealed claims before us.
CONCLUSION
The decision of the examiner to reject claims 1-9 and 16-26
under 35 U.S.C. § 103(a) as being unpatentable over Parker in
view of Schubert is affirmed.

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )

PFK/TF
Comment [jvn1]: Type address
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Application No. 10/155,253

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HAMMER & HANF, PC
3125 SPRINGBANK LANE
SUITE G
CHARLOTTE, NC 28226