Ex Parte Albertus et al

Patent Trial and Appeal BoardMar 17, 2016

12907205 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/907,205 10/19/2010 28078 7590 03/17/2016 MAGINOT, MOORE & BECK, LLP One Indiana Square, Suite 2200 INDIANAPOLIS, IN 46204 FIRST NAMED INVENTOR Paul Albertus 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1576-0754 1592 EXAMINER VO, JIMMY ART UNIT PAPER NUMBER 1723 MAILDATE DELIVERY MODE 03/17/2016 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 PAUL ALBER TUS, VENKA T ASUBRAMANIAN VISWANATHAN, JOHN F. CHRISTENSEN, BORIS KOZINSKY, ROEL SANCHEZ-CARRERA, and TIMM LOHMANN Appeal2014-004728 Application 12/907,205 Technology Center 1700 Before GEORGE C. BEST, MICHELLE N. ANKENBRAND, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Because our rationale for affirming claim 7 differs from that of the Examiner, we designate the affirmance as a new ground of rejection under 37 C.F.R. Â§ 41.50(b). 1 Appellants identify Robert Bosch GmbH as the real party in interest. App. Br. 1. Appeal2014-004728 Application 12/907,205 The Invention Appellants' invention relates to lithium-based batteries. Spec. i-f 1. Claim 1 is representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 1. An electrochemical cell5 cmnprising: a negative electrode including a fonn of lithium: ~ ~ ; a positive electrode spaced apart from the negative electrode and configured to use 02 and C02 as reagents in a reversible electrochemical reaction wherein LhC03 is fonned during discharge and consumed during charge at the positive electrode; a separator positioned between the negative electrode and the positive electrode; and an electrolyte including a salt, wherein the ratio of C02 to 02 fonned in the cell during full discharge frmn a fully charged state is about 2: l . App. Br. 46 (Claims App'x). Oltman Visco The References us 5,567,538 US 2007 /0051620 Al Oct. 22, 1996 Mar. 8, 2007 HANDBOOK OF BATTERIES 319-320 (David Linden & Thomas B. Reddy eds., 3d ed. 2002) ("Linden"). The Rejections 1. Claims 1-13 and 15-20 are rejected under 35 U.S.C. Â§ 112, first paragraph as failing to comply with the written description requirement; 2 2. Claims 1, 10, 12-15, and 20 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Visco; 2 The Examiner withdraws the rejection of claim 14 under 35 U.S.C. Â§ 112, first paragraph. Ans. 11-12. 2 Appeal2014-004728 Application 12/907,205 3. Claims 1, 10, 12-15, and 20 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Applicant Admitted Prior Art ("AAP A"); and 4. Claims 2-9, 11, and 16-19 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Visco, Oltman, and Linden. OPINION After having considered each of Appellants' contentions and the evidence presented in this Appeal, we determine that Appellants have not identified reversible error in the Examiner's rejections of claims 1-13 and 15-20 under 35 U.S.C. Â§ 112, first paragraph, claims 1, 10, 12-15, and 20 under 35 U.S.C. Â§ 102(b), and claims 2---6, 8, 9, 11, and 16-19 under 35 U.S.C. Â§ 103. Thus, we affirm these rejections for the reasons expressed in the Final Action, Answer, and below. We are persuaded, however, that Appellants identify reversible error in Examiner's rejection of claim 7 under 35 U.S.C. Â§ 103. We do not reverse the rejection of claim 7, but rather, affirm the rejection based on a rationale that differs from that of the Examiner. Thus, we designate our affirmance as a new ground of rejection under 37 C.F.R. Â§ 41.50(b). Written Description Claim 1. Claim 1 recites an electrochemical cell, wherein "the ratio of C02 to 02 formed in the cell during full discharge from a fully charged state is about 2: 1." App. Br. 46 (Claims App'x). The Examiner finds that Appellants' original disclosure does not support the recited limitation "and is considered new matter." Final Act. 3. In particular, the Examiner finds that the portions of the Specification on which Appellants rely disclose a reaction that forms a 2:1 ratio ofC02 to 02 "only during charging of the 3 Appeal2014-004728 Application 12/907,205 electrochemical cell, instead of discharging of the cell" as recited in claim 1. Id. Appellants do not dispute the Examiner's findings in this regard or provide any substantive arguments with respect to claim 1 as drafted. See App. Br. 4--7. Rather, Appellants argue that claim 1 includes "an obvious [drafting] error in that during discharge C02 and 02 are consumed, not formed." Id. at 46 n.2. Appellants explain that they attempted correction in an Amendment after Final Action, but the Examiner refused to enter the amendment. See id. at 4--5; Advisory Act. (July 24, 2013) 2 ("[T]he newly proposed amendment changes the scope of the previously rejected claim . . . . Thus, the proposed amendment raises new issues, requiring further search [and] further consideration."). Appellants request reversal of the "Examiner's objection" and entry of the amendment. 3 The Examiner's refusal to enter the amendment is a petitionable matter under 3 7 C.F .R. Â§ 1.181, and not within the jurisdiction of the Board. 37 C.F.R. Â§ 1.127; In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403-1404 (CCPA 1971). Moreover, as our reviewing court has recognized, "courts may not redraft claims[;]" even "a nonsensical result does not require the court to redraft the claims." Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004). 3 Appellants characterize the Examiner's denial of the amendment as an "objection" and contend that it appealable under Manual of Patent Examining Procedure ("MPEP") Â§ 2163.06. App. Br. 5. The Examiner's discretionary denial of an amendment filed after a Final Action is not an objection-an objection is made when "the form of the claim (as distinguished from its substance) is improper." MPEP Â§ 706.01. 4 Appeal2014-004728 Application 12/907,205 Accordingly, we affirm the rejection of claim 1 under 35 U.S.C. Â§ 112, first paragraph. Claim 20. In rejecting claim 20, the Examiner finds that the limitation "the process of forming LbCQ3 consumes the majority of electrons consumed at the positive electrode during discharge of the cell" is new matter and, therefore, the claim fails to comply with the written description requirement. Final Act. 3--4. Appellants argue that the Specification discloses the predominant reaction during discharge results in the formation of LbC03, which consumes two electrons at the positive electrode. App. Br. 10. Thus, Appellants argue, it follows that the majority of electrons consumed during discharged are consumed in that reaction. Id.; see Reply Br. 2--4. To comply with the written description requirement, an applicant's specification must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." Carnegie Mellon Univ. v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991)). The inquiry into whether the written description requirement is met is a question of fact. In re Alonso, 545 F .3d 1015, 1018 (Fed. Cir. 2008). Although we agree with Appellants that the Specification discloses that formation of LbCQ3 consumes two electrons, we find this evidence insufficient to support a determination that one of ordinary skill in the art would find that Appellants had possession of an invention where a majority of electrons are consumed at the positive electrode during discharge of the cell. In other words, we concur with the Examiner's finding that the 5 Appeal2014-004728 Application 12/907,205 Specification fails to indicate that consuming two electrons is equivalent to consuming a majority of the electrons consumed at the positive electrode. See Ans. 12-13. Accordingly, we affirm the rejection of claim 20 under 35 U.S.C. Â§ 112, first paragraph. Anticipation Rejections The Examiner rejects claims 1, 10, 12-15, and 20 as anticipated by Visco and by AAP A. Final Act. 4--9. The Examiner finds that Visco discloses an electrochemical cell comprising the structural components recited in Appellants' independent claims 1, 14, and 20, i.e., a negative electrode composed of lithium metal, a positive electrode, a separator placed between the negative and positive electrode, and an electrolyte containing a salt. Final Act. 4--5 (citing Visco i-fi-127, 32, 33, 40, 93, Fig. 3). The Examiner further finds that Visco discloses the electrochemical cell can use air, which comprises oxygen and carbon dioxide, as an electrochemically active cathode material. Id. at 5 (citing Visco i1 85). Likewise, the Examiner finds that AAP A discloses an electrochemical cell comprising the structural components recited in Appellants' independent claims, and that AAP A discloses that the cell can use air as the cathode material. Id. at 7-8 (citing Spec. i-fi-f 10---11, 13, Fig. 1). The Examiner maintains that although Visco and AAP A do not explicitly disclose certain features of claims 1, 10, 12-15, and 20, those features are claimed functionally, and the electrochemical cells of both Visco and AAPA are capable of performing the recited functions. Id. at 5-9; Ans. 13-20. For each of the rejections, Appellants present separate arguments as to independent claims 1, 14, and 20, as well as dependent claims 12 and 15. Appellants present no substantive arguments for dependent claims 10 and 6 Appeal2014-004728 Application 12/907,205 13, which will stand or fall with their parent independent claim. See App. Br. 15, 27. Appellants' arguments as to both rejections are substantively similar. Compare id. at 11-23, with id. at 24--34. Accordingly, we address both rejections together. For claims 1, 15, and 20, Appellants argue that the recited 02 and C02 formation and consumption ratios, "require[] a specific structure with specific active ingredients" and reagents in specific amounts. Reply Br. 4; see, e.g., App. Br. 12-13. Appellants also argue that the Examiner fails to establish that: ( 1) Visco' s reagents result in the formation or consumption of LhC03 and AAP A's reagents result in the consumption of LhC03, (2) Visco's described air electrode includes C02, (3) Visco and AAPA disclose the recited C02 to 02 generation/ consumption ratios, and ( 4) Visco and AAPA disclose primarily consuming electrons by forming LhC03. App. Br. 11-14, 20-26, 31-34. Appellants advance the same arguments regarding claim 14, and argue further that the Examiner fails to establish Visco and AAP A disclose cells having an equilibrium voltage of about 3.86V. Id. at 17-19, 30. For claim 12, Appellants argue that all air is not necessarily 20Â°C and that the Examiner, therefore, does not establish that the Visco or AAPA air electrode "has air at 20Â°C." App. Br. 16, 28. We are not persuaded by Appellants' arguments. It is well-settled that "apparatus claims cover what a device is, not what a device does." Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). Thus, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); In re Gardiner, 171F.2d313, 315-16 7 Appeal2014-004728 Application 12/907,205 (CCP A 1948) ("It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof."). We agree with the Examiner that the language of claims 1, 12, 14, 15, and 20 reciting LhC03 formation, 02 and C02 formation/consumption ratios, equilibrium voltage, and reaction temperature defines the function, not the structure, of the electrochemical cell. The question, therefore, is whether the electrochemical cells disclosed in Visco and AAP A are capable of performing the recited functions. Here, the Examiner has a reasonable basis for finding that they are. As the Examiner finds, both Visco and AAP A describe the cathode systems of their electrochemical cells as using ambient air, which is composed of, inter alia, 02 and C02, and is about 20Â°C.4 Final Act. 5---6, 8; Ans. 14--15, 18; Visco i-fi-185-86; Spec. i-f 10-11, 13, Fig. 1. In addition, Appellants' Specification explains that LhC03 is the "thermodynamically favored discharge product" when "a source of carbon dioxide is available in the system" and that "[ o ]nee carbon dioxide is present ... there is a 4 Appellants challenge the Examiner's finding that Visco discloses ambient air, arguing instead that Visco's air electrode includes only oxygen. App. Br. 13. Further, although Appellants do not dispute the Examiner's finding that ambient air temperature is about 20Â°C, Appellants argue that air temperature can be more than 20Â°C. Id. at 16. Appellants' arguments are not supported by the evidence of record. Rather, Appellants support their arguments with evidence presented in the Appeal Brief for the first time. Pursuant to 37 C.F.R. Â§ 41.37(c)(2), an appeal brief may not include any new or non-admitted evidence. Thus, Appellants' new evidence is untimely, and Appellants fail to show sufficiently why the evidence is necessary and was not earlier presented. See 3 7 C.F .R. Â§ 1.116( e ). We decline to consider the new evidence for the first time on appeal. 8 Appeal2014-004728 Application 12/907,205 thermodynamic driving force ... to form LhCQ3." Spec. i1i125-26. Thus, we concur with the Examiner that Visco and AAP A disclose electrochemical cells that are capable of ( 1) forming/ consuming LhCQ3, (2) forming/consuming 02 and C02 in the recited ratios, (3) carrying out the reversible electrochemical reaction at a temperature of less than about 50Â°C, (4) operating at an equilibrium voltage of 3.86V, and (5) consuming a majority of electrons at the positive electrode by forming LhCQ3 as recited in claims 1, 12, 14, 15, and 20. The burden, therefore, shifts to Appellants to show that the recited electrochemical cell is structurally distinct from Visco's and AAP A's electrochemical cells. Appellants point to no such structural distinction and fail to carry their burden. Accordingly, we affirm the rejections of claims 1, 10, 12-15, and 20 under 35 U.S.C. Â§ 102(b). Obviousness Rejection The Examiner rejects claims 2-9, 11, and 16-19 as obvious over the combination of Visco, Oltman, and Linden. Final Act. 9-12. Appellants provide substantive arguments for claims 2, 5, and 7 only, see App. Br. 35- 41, and we decide the appeal of the Examiner's rejection based on those arguments. Claim 2. Claim 2 recites "a reservoir fluidly coupled with the positive electrode, the reservoir configured to capture C02 emitted from the positive electrode" and "a reservoir filter positioned between the reservoir and the positive electrode, the reservoir filter configured to hold the electrolyte in the positive electrode." Id. at 46. Appellants argue that "[ e ]ven if Visco is modified in the manner proposed by the Examiner, such modification fails to correct the deficiencies 9 Appeal2014-004728 Application 12/907,205 of Visco with respect to the limitations of claim 1." Id. at 35. Similarly, Appellants argue that Visco's electrochemical cell "does not generate C02" and, therefore, the Examiner fails to explain adequately why a skilled artisan would have been led to modify Visco' s electrochemical cell to include a reservoir configured to collect C02. Id. at 37. Appellants' arguments are not persuasive because, as explained supra, Visco discloses all of the limitations of claim 1, including that the electrochemical cell is capable of generating C02. Appellants argue that Visco' s electrochemical cell, as modified by Oltman to include a reservoir and reservoir filter, does not disclose all of the limitations of claim 2. App. Br. 36. In particular, Appellants argue that the "air" that passes through Oltman's diffusion layer (i.e., reservoir filter) "appears to be 02," "[t]here is no indication ... that the device of Oltman contemplates the formation of C02," and, therefore, "it is unclear whether or not the diffusion layer 57 would permit C02 to pass from the cathode to the reservoir." Id. Appellants' arguments lack convincing merit. "[T]he test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). That is, one cannot show nonobviousness by attacking the references individually where a rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). Thus, it does not matter whether Oltman discloses or suggests the formation 10 Appeal2014-004728 Application 12/907,205 of C02 because, as previously explained, the Examiner relies on Visco as disclosing that limitation and Visco teaches an air electrode electrochemical cell, which can produce C02. Visco i-fi-185-86. Accordingly, we affirm the rejection of claim 2 under 35 U.S.C. Â§ 103. Claim 5. Claim 5 depends from claim 2 and recites the electrochemical cell comprising "a barrier configured to permit an exchange of 02 between the positive electrode and an external 02 source, and to impede an emission of C02 from the positive electrode to the external oxygen source." App. Br. 47. Appellants argue that the Examiner errs in interpreting the air diffusion layer and air reservoir as a barrier. Id. at 39. Appellants' argument is not persuasive, as we agree with the Examiner that the broadest reasonable interpretation of the term "barrier" consistent with Appellants' Specification is an object that obstructs the path of a flow. See Ans. 21. As the Examiner finds, the diffusion layer is positioned in the path of air and, therefore, obstructs the path of air flowing into the cell. Id. (citing Oltman 1:52-58, 12: 13-25, Fig. 2); compare Oltman 14:30-34 (describing a polymeric membrane diffusion layer), with Spec. i-f 31 (describing a polymeric gas membrane barrier). Accordingly, we affirm the rejection of claim 5 under 35 U.S.C. Â§ 103. Claim 7. Claim 7 depends from claim 2 and requires that "the electrolyte comprises an aqueous solvent" and "the negative electrode includes a protective layer on a lithium metal." App. Br. 47. The Examiner finds that Visco, as modified, discloses that the protective membrane architecture is an electrolyte that can be used in an aqueous solution. Final Act. 11 (citing Visco i-fi-f l 0, 40). The Examiner 11 Appeal2014-004728 Application 12/907,205 further finds that it is reasonable to interpret Visco's electrolyte as both the electrolyte and protective layer required by claim 7, because there is no structural or spatial distinction between the recited electrolyte and protective layer. Ans. 22. We do not agree for the reasons set forth at pages 40 and 41 of the Appeal Brief. We do not reverse the rejection of claim 7 as unpatentable over the combination of Visco, Oltman, and Linden, however, because Visco discloses another embodiment of the protective membrane that includes a protective layer on a lithium metal in the negative electrode that is separate from the electrolyte. Specifically, Visco discloses a protective membrane architecture composed of an interlayer between the solid electrolyte and the active metal anode. Visco i-fi-144, 46-47, Fig. 2D. The architecture includes an "active metal ion conducting separator layer chemically compatible with the active metal of the anode and in contact with the anode, ... and a substantially impervious, ionically conductive layer ... in contact with the separator layer, and chemically compatible with the separator layer and with the exterior of the anode compartment." Id. at 46. Accordingly, we affirm the Examiner's rejection of claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Visco, Oltman, and Linden. Because our rationale differs from that provided by the Examiner, we designate our affirmance as a new ground of rejection under 37 C.F.R. Â§ 41.50(b). DECISION/ORDER The Examiner's rejection of claims 1-13 and 15-20 under 35 U.S.C. Â§ 112, first paragraph is affirmed. 12 Appeal2014-004728 Application 12/907,205 The Examiner's rejections of claims 1, 10, 12-15, and 20 under 35 U.S.C. Â§ 102(b) are affirmed. The Examiner's rejection of claims 2-9, 11, and 16-19 under 35 U.S.C. Â§ 103(a) is affirmed. We designate our affirmance of claim 7 as a new ground of rejection. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b), which provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 13