Michael Eskra et al.

Patent Trials and Appeals Board

Dec 2, 2020

2020000016 (P.T.A.B. Dec. 2, 2020)

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.
13/617,162 09/14/2012 Michael David Eskra ETP1000.001 9414
26629 7590 12/02/2020
ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ZPS)
136 S WISCONSIN ST
PORT WASHINGTON, WI 53074
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
info@zpspatents.com
jmf@zpspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DAVID ESKRA, PAULA MARGARET RALSTON,
RODNEY MORTENSEN LAFOLLETTE, and
JAMES BERNARD NOWAKOWSKI
Appeal 2020-000016
Application 13/617,162
Technology Center 1700
BEFORE TERRY J. OWENS, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 19, 20, 23, 24, 29–31, 34–37, 39–42,
44–49, and 51–55. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Eskra
Technical Products. Appeal Br. 1.
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Application 13/617,162

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CLAIMED SUBJECT MATTER
Claim 19 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
19. A solvent-free method of manufacturing an electrode
comprising:
feeding a current collector through a feed mechanism;
applying a first layer consisting of an active material
mixture, a binder, and a conductive material to the current
collector; and
heating the first layer with a first heater during and/or
after application of the first layer to the current collector to bind
the first layer to the current collector;
wherein applying the first layer comprises applying of
the active material mixture, the binder, and the conductive
material to the current collector via a dry dispersion application;
and
wherein the binder consists of polyvinylidene fluoride
(PVDF).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zhong US 2005/0271798 A1 Dec. 8, 2005
Hirokawa US 2006/0153972 A1 July 13, 2006
Divigalpitiya US 2010/0055569 A1 Mar. 4, 2010
Mitchell US 2010/0263910 A1 Oct. 21, 2010
Matsui US 2011/0104564 A1 May 5, 2011

THE REJECTIONS
1. Claims 23 and 55 are rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
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2. Claims 19, 23, 29, 31, 34, 44–49, 51, and 52 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Divigalpitiya in
view of Matsui.
3. Claims 20, 35, 36, 39, 42, 53, 54, and 55 are rejected under pre-
AIA 35 U.S.C. §103(a) as being unpatentable Divigalpitiya in view of
Matsui, further in view of Mitchell.
4. Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Divigalpitiya in view of Matsui, further in view of Zhong.
5. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Divigalpitiya in view of Matsui, further in view of
Hirokawa.
6. Claim 37 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Divigalpitiya in view of Matsui in view of Mitchell,
further in view of Hirokawa.
7. Claims 40 and 41 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable Divigalpitiya in view of Matsui in view of Mitchell,
further in view of Zhong.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). Upon review of the
evidence and each of the respective positions set forth in the record, we find
that the preponderance of evidence supports Appellant’s position in the
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record. Accordingly, we reverse each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the record by Appellant, and add the
following for emphasis.

Rejection 1
We refer to the Examiner’s statement of the rejection as set forth on
pages 2–3 of the Non-final Office Action mailed August 9, 2018 (from
which this appeal is taken). Therein, it is the Examiner’s position that there
is no support in the original Specification for the limitation “wherein the
active material mixture and conductive material are composed of
nonfibrillatable material” as recited in claim 23 or the limitation “wherein
the active material . . . is composed of one or more nonfibrillatable
materials” as recited in claim 55.
Beginning on page 4 of the Appeal Brief, Appellant argues that
support for these limitations is found at least in paragraphs 24, 28, and 33 of
the Specification. In these cited paragraphs of the Specification, Appellant
sets forth a listing of materials which may be used as the active material and
conductive material in forming the electrode. The list of the active material
or active material mixture includes “lithium titanate oxide (LTO), cobalt
oxide, nickel oxide, manganese oxide, nickel cobalt manganese oxide,
iron phosphate, iron oxide, carbon, and silicon” and the list of the conductive
material includes “conductive carbon to include a graphite such as
TIMREX® KS6.” Spec ¶ 28; Appeal Br. 4.
Appellant submits that one skilled in the art would readily recognize
that each of the active materials and conductive materials disclosed in
paragraphs 24, 28, and 33 of the Specification are non-fibrillatable materials.
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In support of this statement, Appellant refers to Exhibit A that is a §1.132
Declaration by inventor Michael Eskra.
Appellant states that the Eskra Declaration sets forth that one skilled
in the art would readily recognize that each of the active materials and
conductive materials disclosed in paragraphs 24, 28, and 33 of the
Specification are all nonfibrillatable materials. Eskra Declaration¶ 5.
Appellant states that the Eskra Declaration establishes that the active
electrode materials of lithium titanate oxide (LTO), cobalt oxide, nickel
oxide, manganese oxide, nickel cobalt manganese oxide, iron phosphate,
iron oxide, carbon, and silicon and the conductive materials of conductive
carbon/graphite, are all nonfibrillatable materials, in that they are not
polymers, co-polymers, or other similar ultra-high molecular weight
substances capable of fibrillization when exposed to, for example, high-
shear forces. Appeal Br. 4. Appellant also argue that the case law that the
Examiner relies upon (In re Smith (Ans. 3)) is not applicable to the facts of
the present case. Appeal Br. 5–6. We agree for the reasons provided therein.
In view of the above, we reverse Rejection 1.

Rejections 2–7
We focus on the combination of Divigalpitiya in view of Matsui in
making our determinations herein.
We refer to Appellant’s arguments as set forth on pages 6–18 of the
Appeal Brief. We are persuaded by Appellant’s arguments therein.
Appellant states, inter alia, that Divigalpitiya discloses a method of making
a current collector that includes coating the substrate with a dry composition
including carbon (e.g., conductive carbons such as graphite, carbon black,
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lamp black) and a binder that functions to improve adhesion to the
composition to the substrate. Appeal Br. 11; Divigalpitiya ¶¶ 20, 21, 27.
Appellant states that in coating the substrate, the dry particles are buffed on
the substrate at a pressure normal to the surface using an applicator pad, the
applicator pad moving in a plane parallel to said surface in a plurality of
directions relative to a point on the surface such that a substantially uniform
coating of said particles is provided. Appeal Br. 11; Divigalpitiya ¶ 27.
Appellant states that Matsui discloses a method for manufacturing a
lithium secondary battery, where forming the positive electrode layer
includes mixing the positive-electrode active material, conductive material,
and binder together first, and dispersing the mixture into a solvent, to
prepare a positive electrode layer forming slurry, and then applying
the positive electrode layer forming slurry to a positive electrode current
collector, and drying the obtained product (Matsui ¶ 48), and where forming
the negative electrode layer includes mixing the negative-electrode active
material and binder together first, and dispersing the mixture into a solvent
to prepare a negative electrode layer forming slurry, and then applying the
negative electrode layer forming slurry to a negative electrode current
collector and drying thus obtained product. Matsui ¶ 53; Appeal Br. 11.
Appellant argues that the dry application method of Divigalpitiya is
not compatible with the wet application method of Matsui. Appeal Br. 11–
12. Appellant submits that one skilled in the art would realize that the
method disclosed in Divigalpitiya would/could not simply be modified to
incorporate process steps utilized in a markedly different solvent-based
fabrication technique as disclosed in Matsui. Appellant states that
the entirety of the teaching in Divigalpitiya teaches away from a solvent-
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based fabrication technique such as disclosed in Matsui and is instead
directed to a dry, solventless fabrication technique (for fabricating a current
collector) where a dry composition including carbon and a binder are buffed
onto a substrate. Divigalpitiya ¶¶ 20, 21, 27. Appellant argues that,
conversely, Matsui discloses that the disclosed methods for forming
the positive and negative electrode layers of a lithium secondary battery
require mixing active material (conductive material) and binder together first
and dispersing the mixture into a solvent to prepare a positive/negative
electrode layer forming slurry. Matsui ¶¶ 48, 53. We are persuaded by this
line of argument. We add that the combination of Divigalpitiya in view of
Matsui lacks a teaching of a solvent-free method of making an electrode.
Divigalpitiya teaches how to make a current collector using a dry application
technique and Matsui teaches how to make an electrode using a wet
technique. What is lacking is a teaching of how to make an electrode using a
dry application technique. The other applied references do not cure these
stated deficiencies.
In view of the above, we reverse Rejections 2–7.
CONCLUSION
We reverse the Examiner’s decision.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed Affirmed
23, 55 112, 1st Written
Description
23, 55
19, 23, 29,
31, 34, 44–
49, 51, 52
103 Divigalpitiya,
Matsui
19, 23, 29,
31, 34, 44–
49, 51, 52

20, 35, 36,
39, 42, 53,
54, 55
103 Divigalpitiya,
Matsui, Mitchell
20, 35, 36,
39, 42, 53,
54, 55

24 103 Divigalpitiya,
Matsui, Zhong
24
30 103 Divigalpitiya,
Matsui, Hirokawa
30
37 103 Divigalpitiya,
Matsui, Mitchell,
Hirokawa
37
40, 41 103 Divigalpitiya,
Matsui, Mitchell,
Zhong
40, 41
Overall
Outcome
19, 20, 23,
24, 29–31,
34–37, 39–
42, 44–49,
51–55

REVERSED