Elisabeth Buehler et al.

Patent Trials and Appeals Board

Sep 13, 2019

15367658 - (D) (P.T.A.B. Sep. 13, 2019)

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.
15/367,658 12/02/2016 Elisabeth Buehler 2178-1680 9978
10800 7590 09/13/2019
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
KANG, DANNY N
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
09/13/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELISABETH BUEHLER, MATHIAS WIDMAIER, PALLAVI
VERMA, SEVERIN HAHN, and THOMAS ECKL
____________

Appeal 2018-008181
Application 15/367,658
Technology Center 1700
____________

Before GRACE KARAFFA OBERMANN, LILAN REN, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–72. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant claims a hybridized electrode (independent claim 1) and a
hybrid supercapacitor (independent claim 7). Claim 1 illustrates the subject

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Robert Bosch GmbH as the real party in
interest. Appeal Brief filed January 30, 2018 (“App. Br.”), 2.
2 Final Office Action entered September 20, 2017 (“Final Act.”), 1.
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matter on appeal, and is reproduced below with contested language
italicized:
1. A hybridized electrode, comprising:
a binder that constitutes from 5% by weight to 10% by
weight of the electrode, and that has a capacitance of at least
100 F/g.

App. Br. 12 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1–7 under 35 U.S.C.
§ 103 as unpatentable over Yu et al. (US 2011/0183180 Al, published July
28, 2011) in view of Taguchi et al. (US 2010/0027195 Al, published
February 4, 2010) in the Examiner’s Answer entered June 12, 2018 (“Ans.”).

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions,3 we affirm the Examiner’s rejection
of claims 1–7 under 35 U.S.C. § 103, for the reasons set forth in the Final
Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (Explaining that even if the Examiner had

3 We do not consider any argument that Appellant presents for the first time
in the Reply Brief that Appellant could have raised in the Appeal Brief. 37
C.F.R. § 41.37(c)(1)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the
first time in the Reply Brief that could have been raised in the Appeal Brief
will not be considered by the Board unless good cause is shown).
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failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.”)).
Appellant argues claims 1–7 as a group on the basis of independent
claims 1 and 7, which Appellant argues together. App. Br. 5–10. We
accordingly select claim 1 as representative, and decide the appeal as to
claims 1–7 based on claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Yu discloses an electrode for a supercapacitor comprised of stacks of
nano-scale graphene sheets, which Yu refers to as “nanographene platelets,”
in which individual sheets are either bonded by a conductive polymer
binder, or are coated with a thin layer of the binder, to introduce functional
groups onto the surface of the graphene sheets (or to “surface functionalize”
the sheets). Yu ¶¶ 2, 10, 34, 58, 82; Figs. 6A and 6B. Yu discloses that
using an intrinsically conductive polymer, such as polyaniline, as a binder or
coating material increases the electrode’s capacitance through pseudo-
capacitance effects, such as redox reactions. Yu ¶¶ 71, 72, 85, 89, 116.
Example 1 of Yu discloses that applying a thin coating of polyaniline to the
outer surface of two nanographene platelet electrodes included in a
symmetric supercapacitor increased the supercapacitor’s specific
capacitance by 110 F/g, relative to the specific capacitance of a
supercapacitor having two electrodes formed of single-layer nanographene
sheets “with no further treatment” (referred to as the “NGP mat”). Yu
¶¶ 117, 118.
The Examiner finds that capacitance is an intrinsic physical property
of a particular polymer, and determines that the capacitance of the
polyaniline binder disclosed in Yu, therefore, would be expected to be
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within the capacitance range recited in claim 1, in view of the recitation in
claim 3, which depends from claim 1, that the binder can be polyaniline.
Ans. 7–9 (citing In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) and In re
Papesch, 315 F.2d 381, 391 (CCPA 1963) (“[A] compound and all of its
properties are inseparable”).).
The Examiner further finds that Yu does not explicitly disclose the
weight percentage of the binder material included in the nanographene
platelet electrode described in the reference, and the Examiner relies on
Taguchi’s disclosure of an amount of binder material suitable for use in the
positive and negative electrodes of a capacitor. Final Act. 5–6 (citing
Taguchi claims 1 and 5, ¶¶ 9, 10, 62); Ans. 8 (citing Taguchi ¶¶ 62, 76).
Appellant does not dispute the Examiner’s finding that Taguchi discloses a
binder amount that encompasses the range recited in claim 1 of from 5% by
weight to 10% by weight of the electrode. Compare Final Act. 5–6 (citing
Taguchi claims 1 and 5, ¶¶ 9, 10, 62) and Ans. 8 (citing Taguchi ¶¶ 62, 76),
with Reply Br.4
Appellant argues that the 110 F/g increase in capacitance exhibited by
the polyaniline-coated nanographene platelets disclosed in Yu “cannot be
attributed to a particular capacitance of the binder or NGP [nanographene
platelet] surface coating itself.” App. Br. 5. Appellant argues that Yu
attributes the capacitance increase to pseudo-capacitance via a fast redox

4 Although Appellant argues in the Appeal Brief that Taguchi does not
disclose a binder amount as recited in claim 1 (App. Br. 6–8), Appellant
concedes in the Reply Brief that, in view of the Examiner’s response to
Appellant’s arguments in the Answer (Ans. 8) “it appears that Taguchi does
contemplate a binder (powder + pyrrolidone) that can fall within the 5-10%
by weight range set forth in Applicant’s claims.” Reply Br. 4–6.
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reaction at the interface between the nanoparticles and the electrolyte, and,
Appellant argues, Yu explains that a conducting polymer and other surface
functional groups can promote the pseudo-capacitance effect. Id. Appellant
argues that Yu discloses an increase in capacitance of “the base electrode of
at least 100 F/g,” but the claims require the binder, rather than the electrode,
to have a particular capacitance, and Yu does not disclose the capacitance of
the polyaniline. Id.
As discussed above, however, Yu discloses that using an intrinsically
conductive polymer, such as polyaniline, as a binder or coating material for
nanographene platelets used to form an electrode increases the electrode’s
capacitance through pseudo-capacitance effects, such as redox reactions.
Although Yu discloses that such redox reactions occur in a capacitor at the
interface between the graphene nanoparticles and an electrolyte (¶ 71), Yu
nonetheless discloses—as Appellant acknowledges—that the conducting
polymer, or polyaniline, promotes the pseudo-capacitance effect that
increases the electrode’s capacitance. Yu ¶¶ 71, 85, 89, 116. Furthermore,
as discussed above, Example 1 of Yu discloses that applying a thin
polyaniline coating to nanographene platelet electrodes in a supercapacitor
resulted in a 110 F/g increase in the supercapacitor’s specific capacitance
relative to that of a supercapacitor having uncoated nanographene platelet
electrodes. One of ordinary skill in the art reasonably would have
understood from Yu’s disclosures as a whole that the increase in specific
capacitance was due to the polyaniline coating.
In view of the magnitude of the specific capacitance increase imparted
by a polyaniline coating disclosed in Yu, and in view of the disclosure in
Appellant’s Specification that polyaniline has a capacitance of 190 F/g, the
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Examiner has a reasonable basis for finding that the polyaniline disclosed in
Yu has a capacitance of at least 100 F/g. In re Best, 562 F.2d 1252, 1255
(CCPA 1977) (“Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”).
The burden, therefore, shifts to Appellant to show that the polyaniline
disclosed in Yu does not have a capacitance of at least 100 F/g as recited in
claim 1, and on the record before us, Appellant’s arguments do not meet this
burden. Best, 562 F.2d at 1255. Specifically, Appellant argues in the Reply
Brief that the capacitance properties of polyaniline are not the same for all
polyaniline compositions, as demonstrated by the disclosure in Appellant’s
Specification of polyaniline having a capacitance of 190 F/g, which,
Appellant argues, “is greater than the capacitance of the PANI/NGP
composite (188 F/g) and greater than the incremental increase in capacitance
due to the polyaniline coating (110 F/g).” Reply Br. 4.
Appellant, however, confuses the “PANI/NGP composite” disclosed
in Yu, which is the electrode material to which the polyaniline coating was
applied, with the “NGP mat,” or single-layer nanographene sheets “with no
further treatment,” whose capacitance was compared to the polyaniline-
coated PANI/NGP composite. Yu ¶¶ 117–18. Yu discloses that “[t]he NGP
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mat herein used is prepared from mostly single-layer graphene sheets,” and
Yu does not disclose including polyaniline, or any other conductive
polymer, in the NGP mat. Yu ¶¶ 116–117. Contrary to Appellant’s
argument, Yu discloses that the NGP mat had a specific capacitance of 188
F/g (¶ 117), and Yu does not disclose that the PANI/NGP composite had a
specific capacitance of 188 F/g.
Furthermore, the relevant inquiry is not whether the capacitance
properties of polyaniline are the same for all polyaniline compositions as
Appellant asserts. Rather, the issue is whether the polyaniline binder
disclosed in Yu has a capacitance value as recited in claim 1. Appellant’s
comparison between the 190 F/g polyaniline capacitance disclosed in
Appellant’s Specification, and the 110 F/g capacitance increase imparted by
the polyaniline coating disclosed in Yu, does not demonstrate that the
polyaniline utilized for the coating disclosed in Yu does not have a
capacitance of at least 100 F/g as recited in claim 1.
Appellant argues in the Reply Brief that the specific capacitance
increase of 110 F/g disclosed in Yu was imparted by a polyaniline coating,
rather than a binder as recited in claim 1. Reply Br. 3. Claim 1, however,
recites only that the claimed hybridized electrode comprises a binder, and
does not place any limitation on the particular location or placement of the
binder. Claim 1, accordingly, does not exclude a binder applied to an
electrode as a coating as disclosed in Yu.
Appellant argues that “[t]here is no rational basis to modify Yu with
Taguchi” so as to arrive at an amount of binder recited in claim 1. App. Br.
8–10 (emphasis omitted). Appellant argues that the portions of Taguchi
cited by the Examiner “fail[] to provide any rationale for its use in
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modifying Yu” because the cited portions “do[] not refer to the effect of the
binder.” Id.
Regardless of whether Taguchi discloses the effect of the binder
described in the reference, however, as discussed above, Yu discloses that an
intrinsically conductive polymer, such as polyaniline, used as a binder or
coating material in a nanographene platelet electrode, increases the
electrode’s capacitance. This disclosure teaches or would have suggested
that the amount of conductive polymer binder added to an electrode would
affect the extent of the capacitance increase imparted by the binder. In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”). It follows, therefore, that
one of ordinary skill in the art would have been led by Yu’s disclosures to
determine an amount of polyaniline binder to utilize in an electrode that
would impart a desired capacitance increase, such as an amount as recited in
claim 1, through nothing more than routine experimentation. In re Boesch,
617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a
result effective variable . . . is ordinarily within the skill of the art.”).
Appellant does not provide evidence demonstrating the criticality of
the binder weight percentage range recited in claim 1 (App. Br. 8–10), and
Appellant’s arguments are, therefore, unpersuasive of reversible error in the
Examiner’s rejection. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(“The law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims
. . . . These cases have consistently held that in such a situation, the applicant
must show that the particular range is critical, generally by showing that the
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claimed range achieves unexpected results relative to the prior art range.”)
(citations omitted).
We, accordingly, sustain the Examiner’s rejection of claims 1–7 under
35 U.S.C. § 103.
CONCLUSION

Claims
Rejected
Basis Affirmed Reversed
1–7 § 103 over Yu in
view of Taguchi
1–7
Overall Outcome 1–7

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