VlZn Energy Systems, Inc.

Patent Trials and Appeals Board

Mar 16, 2020

14866103 - (D) (P.T.A.B. Mar. 16, 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.
14/866,103 09/25/2015 Derek C. Tarrant ZAI 0158 PUS 3234
22045 7590 03/16/2020
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
JELSMA, JONATHAN G
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
03/16/2020 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEREK C. TARRANT
____________

Appeal 2019-004251
Application 14/866,103
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–13 under 35 U.S.C. § 103 as
unpatentable over at least the combined prior art of Banerjee
(US 2013/0113431 A1; published May 9, 2013) with either one of

1 We use the word “Appellant” to refer to the “[A]pplicant” as defined in
37 C.F.R. § 1.42(a). Appellant is ViZn Energy Systems, Inc., which is also
identified as the real party in interest (Appeal Br. 2).

Appeal 2019-004251
Application 14/866,103

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Richardson (US 2006/0040126 A1; published Feb. 23, 2006) or Wakizaka
(US 2011/0311867 A1; published Dec. 22, 2011).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):
1. A secondary battery comprising:
an alkaline electrolyte; and
a negative electrode including a conductive metal
substrate having thereon an amorphous metal alloy coating of
nickel and phosphorous configured to be exposed to the
alkaline electrolyte to accept zinc deposits in presence of
charge current and retain the zinc deposits in absence of charge
current.

Independent claims 6 and 8 are also to a secondary battery similar to
that of claim 1 but with a cobalt coating (Claims Appendix). Appellant relies
upon the same arguments for claims 6 and 8 as for claim 1 (Appeal Br. 3–6).

OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (see, e.g., generally Ans.). In re Jung, 637 F.3d 1356,

2 An additional reference, Sinha (US 2004/0033687 A1; published Feb. 19,
2004) was applied to dependent claims 3, 4, 10, and 11 and is listed in the
Summary Table at the end of this decision. A discussion of this reference is
not needed for disposition of this appeal.
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1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s arguments focus solely on Banerjee, contending that
Banerjee only teaches a nickel-plated copper sheet as an electrode substrate
that would have been “covered in some fashion” (Appeal Br. 3). Appellant
further argues that Banerjee’s teaching of a catalytic plate 42 supports their
position that one of ordinary skill in the art would have realized that a nickel
plated electrode would not function satisfactorily because nickel “exhibits
intrinsically low hydrogen overvoltage” (id.; see also Reply Br. 1–4).
Appellant also contends that it was unexpected that the amorphous metal
alloy coating of nickel and phosphorus recited in claim 1 would work
differently than bare nickel in terms of the lack of suitability as a negative
electrode (Appeal Br. 5). We do not find these arguments persuasive of
reversible error for the reasons set forth by the Examiner (Ans. 12–15).
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First, even assuming that Appellant is correct that the Examiner has
misunderstood what the catalytic plate 42 is made of (Reply Br. 2, 3), this
does not show error in the Examiner’s rejection. The claims are open ended
and recite comprising and permit use of such a plate as desired, and
furthermore permit the use of nickel in combination with other materials
plating the copper sheet cathode electrode of Banerjee. Notably, Appellant
does not dispute the Examiner’s findings and conclusions with respect to the
combination of Banerjee with either of Richardson or Wakizaka, which both
teach electroless plating of nickel cobalt phosphorus alloy, noting that
Wakizaka specifically teaches its metal coating for a negative electrode
active material for a secondary battery (e.g., Wakizaka ¶¶ 1, 50). Thus,
Appellant’s arguments do not fully address the Examiner’s rejections on
appeal.
Furthermore, as pointed out by the Examiner, Banerjee never
discusses any coating over its nickel plated cathode metal sheets 16 and
indeed teaches that it is a “clean” substrate (Ans. 13; Banerjee ¶ 61).
Banerjee also discusses that the substrate is completely stripped of zinc
(Banerjee ¶ 67). In light of these circumstances, a preponderance of the
evidence supports the Examiner’s position that one of ordinary skill in the
art would have read Banerjee as not including any further materials over its
nickel-plated copper cathode metal sheets.
To the extent Appellant’s arguments may be viewed as an argument
that Banerjee has a non-enabling disclosure, it is well established that the
burden of rebutting the presumption of enablement of the cited prior art by a
preponderance of the evidence falls on the applicant. In re Sasse, 629 F.2d
675, 681 (CCPA 1980); discussed further in In re Antor Media Corp., 689
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F.3d 1282, 1288 (Fed. Cir. 2012) (“[W]e now hold that a prior art printed
publication cited by an examiner is presumptively enabling”). Appellant has
not met this burden, noting that attorney’s arguments in a brief cannot take
the place of evidence. Cf. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA
1977), cert. denied, 434 U.S. 854 (1977) (attorney argument does not take
the place of evidence lacking in the record); In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
Thus, Appellant has not shown error in the Examiner’s § 103
rejections on appeal.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–9, 12,
13
103 Banerjee,
Richardson
1, 2, 5–9,
12, 13

1, 2, 5–9, 12,
13
103 Banerjee,
Wakizaka
1, 2, 5–9,
12, 13

3, 4, 10, 11 103 Banerjee,
Richardson, Sinha
3, 4, 10,
11

3, 4, 10, 11 103 Banerjee,
Wakizaka, Sinha
3, 4, 10,
11

Overall
Outcome

1–13

TIME PERIOD FOR RESPONSE
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)(iv).
AFFIRMED