Ex Parte Anderson et al

Patent Trial and Appeal BoardApr 19, 2016

13149276 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/149,276 05/31/2011 89145 7590 04/21/2016 Armstrong Teasdale LLP (W ARF-28243) 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 FIRST NAMED INVENTOR Marc A. Anderson 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. Pl00192US01 1130 EXAMINER ZHANG, HAIXIA ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): uspatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARC A. ANDERSON and KEVIN C. LEONARD Appeal2014-009148 Application 13/149,276 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting claims 1 through 20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. The subject matter on appeal is directed to an electrochemical device comprising, inter alia, an anode, a cathode, and an electrically conductive material coated with a nanoporous oxide between the anode and cathode, and to an electronic card comprising the electrochemical device and a 1 Appellants identify the Real Party in Interest as Wisconsin Alumni Research Foundation (Appeal Brief filed March 11, 2014 ("App. Br.") at 1.) Appeal2014-009148 Application 13/149,276 memory storing data that at least intermittently receives power from the electrochemical device. (Spec. i-fi-1 6, 9.) Details of the appealed subject matter are recited in representative claims 1 and 15, reproduced below from the Claims Appendix to the Appeal Brief. 1. An electrochemical device comprising: an anode; a cathode; an electrolyte separating the anode from the cathode; and an electrically conductive material between the anode and the cathode, wherein the electrically conductive material is coated with a nanoporous oxide, and wherein the average pore diameter size of the nanoporous oxide coating is from about 0.01 nm to about 500 nm. 15. An electronic card comprising: an electrochemical device comprising: an anode; a cathode; an electrolyte separating the anode from the cathode; and an electrically conductive material between the anode and the cathode, wherein the electrically conductive material is coated with a nanoporous oxide, and wherein the average pore diameter size of the nanoporous oxide coating is from about 0.01 nm to about 500 nm; and a memory storing data, said memory at least intermittently receiving power from the electrochemical device. (App. Br. 13, 15 Claims Appendix.) The Examiner maintains the following grounds of rejection in the Answer entered into the record on June 12, 2014 ("Ans."): 2 Appeal2014-009148 Application 13/149,276 Claims 1-20 under 35 U.S.C. Â§ 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicants regard as the invention; Claims 1-18 under 35 U.S.C. Â§ 103(a) as unpatentable over the disclosure of U.S. Patent Application Publication 2007 /0224502 Al published in the name of Affinito et al. on September 27, 2007 (hereinafter referred to as "Affinito") in view of U.S. Patent Application Publication 2005/0079418 Al published in the name of Kelley et al. on April 14, 2005 (hereinafter referred to as "Kelley") and U.S. Patent Application Publication 2007 /0027015 Al published in the name of Zhou et al. on February 1, 2007 (hereinafter referred to as "Zhou"); and Claims 19 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over the disclosure of Affinito in view of Kelley, Zhou, and U.S. Patent Application Publication 2004/0230887 Al published in the name of Sellen et al. on November 18, 2004 (hereinafter referred to as "Sellen"). DISCUSSION Upon consideration of the evidence on this appeal record and each of Appellants' contentions, we sustain the Examiner'sÂ§Â§ 103(a) and 112 rejections of claims 1-20 for the reasons set forth in the Final Rejection and the Answer. We add the discussion below primarily for emphasis and completeness. 3 Appeal2014-009148 Application 13/149,276 Rejection of claims 1-18 under 35 U.S.C. Â§ 103(a) as unpatentable over Affinito, Kelley, and Zhou 2 Appellants do not timely dispute the Examiner's finding that Affinito discloses an electrochemical cell comprising an anode, a cathode, a solid or gel electrolyte that functions as a separator between the anode and the cathode, and a multi-layered structure positioned between the anode and the electrolyte. 3 (Compare Final Act. 4--5 with App. Br. 4--10.) The Examiner finds that Affinito discloses that the multi-layered structure comprises a polymer layer made of an electrically-conductive polymer coated with a single-ion conductive material layer (i.e., a nanoporous metal oxide), which corresponds to the electrically conductive material coated with a nanoporous oxide recited in claims 1 and 15. (Ans. 9-11; Affinito i-fi-137, 83, 94.) The Examiner acknowledges that Affinito does not specifically disclose that the average pore diameter of the nanoporous oxide coating is from about 0.01 2 Appellants argue claims 1-18 as a group on the basis of independent claims 1, 8, and 15, and present the same arguments for claims 1 and 8. (See generally App. Br. 8-11.) Therefore, for the purposes of this appeal, we select claims 1 and 15 as representative, and decide the propriety of the rejection of claims 1-18 on the basis of these claims alone. 37 C.F.R. Â§ 41.37(c)(l)(iv)(2013). 3 Appellants argue for the first time in the Reply Brief that the electrolyte disclosed in Affinito "cannot satisfy the electrolyte element of the claims of the instant application in one instance, and satisfy the separator element in another instance." (Reply Br. 4.) However, we do not consider this new argument because it was not timely presented in the Appeal Brief. See 37 C.F.R. Â§ 41.41(b)(2) (2013); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) ("the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). 4 Appeal2014-009148 Application 13/149,276 nm to about 500 nm, as recited in claims 1 and 15, and that its electrochemical device is part of an electronic card comprising a memory storing data that at least intermittently receives power from the electrochemical device, as recited in claim 15. (Final Act. 5---6.) To remedy the above differences in Affinito, the Examiner relies on Zhou's disclosure that nanopores include mesopores having an average diameter of 2 nm to 10 nm, and on Kelley's disclosure of a thin film battery connected to a variety of circuits, including a radio frequency identification (RFID) circuit, on an electronic card to provide continuous power to memory used to store data in the RFID circuit, which Appellants do not dispute. (Compare Final Act. 5-7 citing Kelley i-fi-137 and 73 with App. Br. 4--10.) Based on the above findings, the Examiner concludes that the collective teachings of Affinito, Zhou, and Kelley would have rendered the invention recited in claims 1 and 15 obvious to one of ordinary skill in the art at the time of the invention, because the electrochemical device comprising a polymer layer made of an electrically-conductive polymer coated with a single-ion conductive material layer (i.e., a nanoporous metal oxide inclusive of those having the nanopores recited in claim 1) disclosed in Affinito is a known electrical power source in the thin film battery field suitable for a memory storing data in Kelley's electronic card. (Final Act. 5.) Appellants argue that Affinito fails to disclose a nanoporous oxide layer because Affinito discloses that the nanopores of the single ion 5 Appeal2014-009148 Application 13/149,276 conducting material are filled with a polymer that protects the electrode by impeding the diffusion of damaging species, such as electrolyte, towards the electrode. (App. Br. 6, 9.) Appellants further argue that one skilled in the art would not have combined Affinito with Zhou because Zhou discloses that electrolyte can be easily placed in the nanopores of Zhou's mesoporous composite structure, contrary to Affinito' s disclosure of filling the nanopores in the single-ion conductive layer with a polymeric substance to impede diffusion of electrolyte. (App. Br. 9.) However, we find Appellants' arguments unpersuasive of reversible error because they are contrary to the disclosures of Affinito. Specifically, Affinito discloses that the nanopores of the single-ion conductive layer may be partially filled with a transport-inhibiting substance such as a polymer, and discloses that less than 10 % of the nanopores in the layer can be filled with a polymer. (Affinito i-fi-181, 88, 94.) Claims 1and15 do not require the nanoporous oxide to have a particular level of porosity, nor do they preclude the presence of some of the nanopores of the nanoporous oxide coating that are filled with a transport-inhibiting polymeric substance. In other words, Affinito' s disclosure of some unfilled nanopores of the nanoporous oxide coating meets or is suggestive of the nanopores recited in claims 1 and 15. Therefore, Appellants' argument based on Affinito' s supposed disclosure of filling the nanopores of the single-ion conductive layer are unpersuasive of reversible error. 6 Appeal2014-009148 Application 13/149,276 Appellants also argue that the Examiner appears to assert that Affinito's single-ion conductive material corresponds to both the electrically conductive material and the nanoporous oxide coating recited in claims 1 and 15, while claims 1 and 15 require these elements to be separate and distinct. (App. Br. 7.) However, contrary to Appellants' argument, as discussed above, the Examiner finds that the electrically-conductive polymer layer disclosed in Affinito corresponds to the electrically conductive material recited in claims 1 and 15 (Ans. 10-11), and the nanoporous metal oxide single-ion conductive material layer disclosed in Affinito corresponds to the nanoporous oxide coating recited in claims 1 and 15. (Ans. 9-11.) Thus, the Examiner identifies separate and distinct elements of Affinito' s electrochemical cell that correspond to the electrically conductive material and nanoporous oxide coating recited in claims 1 and 15, and Appellants' argument is therefore unpersuasive of reversible error. Appellants further argue that one skilled in the art would not have combined Affinito with Zhou because Zhou teaches a range of pore sizes specifically designed for a mesoporous material, rather than a nanoporous material. (App. Br. 8-9.) Appellants further contend that the Examiner fails to consider the teachings of Zhou as a whole, and improperly engages in picking and choosing disclosures from Zhou that support the Examiner's position, to the exclusion of the full appreciation of what Zhou would have fairly suggested to one of ordinary skill in the art. (App. Br. 9-10.) 7 Appeal2014-009148 Application 13/149,276 However, we find Appellants' arguments regarding lack of a reason to combine Affinito and Zhou unpersuasive of reversible error because Affinito' s disclosure of a nanoporous metal oxide layer is sufficient to render the nanoporous oxide coating recited in claims 1 and 15 prima facie obvious. Affinito' s use of the term "nanopores" to describe the pores in the single-ion conductive layer indicates that the size of the pores is in the nanometer range, inclusive of the very broad range of average nanopore diameter sizes recited in claims 1 and 15. ( Affinito i-fi-1 41, 81, 94.) In other words, the nanopores of Affinito's metal oxide, single-ion conductive layer would encompass, or at least overlap, nanopores having a diameter of about 0.01 nm to about 500 nm, as recited in claims 1 and 15. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003)("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap.") Nevertheless, to the extent that Affinito' s disclosure is not sufficient to render the nanoporous oxide coating recited in claims 1 and 15 prima facie obvious, Appellants do not dispute the Examiner's finding that Zhou discloses that nanopores include mesopores having an average diameter of 2 8 Appeal2014-009148 Application 13/149,276 nm to 10 nm. (App. Br. 4--10.) In essence, Zhou is used to explain that Affinito's "nanoporous" oxide single-ion conductive layer includes nano- sized pores having an average diameter of, inter alia, 2 nm to 10 nm, which is within the range of about 0.01 nm to about 500 nm recited in claims 1 and 15. Thus, Affinito, as explained by Zhou, indicates that the size of the nanopores in its metal oxide, single-ion conductive layer overlaps with the range recited in claims 1 and 15, rendering the recited range prima facie obvious. Peterson, supra. We therefore find Appellants' arguments to be lacking in persuasive merit. Appellants also argue that "the ranges recited in the instant claims and the ranges disclosed in Zhou [] impart more than a difference in degree to make the ranges recited in the instant claims separately patentable from the range specifically designed for a mesoporous material as disclosed in Zhou."4 (App. Br. 8-9.) However, Appellants do not provide any evidence establishing that the ranges recited in claims 1 and 15 "impart more than a difference in degree" relative to the nanopore range disclosed in Zhou or any nanopores disclosed in Affinito. (App. Br. 4-10.) See In re De Blauwe, 736 4 Appellants appear to be arguing that the claimed range imparts unexpected results. In re Budde, 319 F.2d 242, 246 (1963) (finding no unexpected results where ranges of reaction time and temperature constituted only a difference in degree rather than in kind); In re Aller, 220 F.2d 454, 456-57 (1955) (finding no unexpected results where improved yields over the prior art, measured by percentages, reflect a difference in degree, not in kind). Unexpected results is a factual determination. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). 9 Appeal2014-009148 Application 13/149,276 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellants' argument is therefore unpersuasive of reversible error. Appellants also argue that one skilled in the art would not have combined Affinito with Kelley and Zhou because when Kelley is considered as a whole, "it is clearly directed to a method for fabricating thin film batteries using an aperture mask deposition technique." (App. Br. 8.) Appellants contend that the Examiner improperly cites Kelley only for its disclosure of a thin film battery that can be used in an electronic card, thus picking and choosing only disclosures from Kelley that support the Examiner's position, to the exclusion of other parts of the reference necessary for the full appreciation of what the reference would have suggested to one of ordinary skill in the art. (App. Br. 8-10.) However, Kelley discloses that thin film batteries are commonly connected to radio frequency identification (RFID) integrated circuits on an electronic card, and further discloses connection of a thin film battery to an RFID circuit in order to provide continuous power to memory used to store data in the RFID. (Kelley i-fi-137, 72.) Appellants do not question that the electrochemical cell (battery) disclosed in Affinito is from the same thin film battery field discussed by Kelley and could be connected to an RFID circuit on an electronic card for the same purpose of providing at least intermittent power to the memory used to store data in the RFID as suggested by Kelley. 10 Appeal2014-009148 Application 13/149,276 (App. Br. 4--10.) Accordingly, we agree with the Examiner that Affinito and Kelley, as a whole, reasonably would have led one of ordinary skill in the art, through no more than ordinary skill and creativity, to use the electrochemical cell disclosed in Affinito as the thin film battery on Kelley's electronic card to connect to an RFID circuit in order to provide power to memory used to store data in the RFID, as recited in claim 15. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). We therefore find Appellants' arguments to be lacking in persuasive merit. It follows that on this record, we are unpersuaded of reversible error in the Examiner's determination that one of ordinary skill in the art, armed with the knowledge provided by the combined disclosures of the applied prior art, would have been led to form the electrochemical device of claim 1, and the electronic card of claim 15. Accordingly, we sustain the Examiner's rejection of claims 1-18 under 35 U.S.C. Â§ 103(a) as unpatentable over the disclosures of Affinito in view of Zhou and Kelley. Rejection of claims 19 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Affinito, Kelley, Zhou, and Sellen Appellants rely on the same arguments advanced in connection with the Examiner's rejection of claims 1 and 15 based on Affinito in view of Zhou and Kelley, and further assert that Sellen fails to remedy the 11 Appeal2014-009148 Application 13/149,276 .. r- â€¢ â€¢ ro ,.,. ro i:;; / â€¢ T"""lti. -1 A -1 -1 >. T"""lti. aenc1enc1es or mese rererences.J ~App. tir. lU-11.J tiecause we are unpersuaded of reversible error in the Examiner's rejection based on Affinito, Zhou, and Kelley as discussed supra, we sustain the rejection of claims 19 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Affinito, Zhou, Kelley, and Sellen. Rejection of Claims 1-20 under 35 U.S.C. Â§ 112, Second Paragraph for Indefiniteness Appellants do not timely contest the Examiner's rejection of claims 1- 20 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicants regard as the invention. 6 (App. Br. 4--10.) Accordingly, we summarily sustain this rejection. 37 C.F.R. Â§ 41.37(c)(l)(iv). CONCLUSION In view of the reasons set forth in the Final Action, Answer, and above, we affirm the Examiner's rejections of claims 1-20 under 35 U.S.C. 5 We do not consider Appellants' arguments regarding Sellen presented for the first time in the Reply Brief (Reply Br. 4) because they were not timely presented in the Appeal Brief. See 37 C.F.R. Â§ 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d at 1474. 6 Appellants argue for the first time in the Reply Brief that the term "about" recited in claims 1, 8, and 15 is definite, and the rejection under 35 U.S.C. Â§ 112, second paragraph, should therefore be reversed. (Reply Br. 1-2.) However, we do not consider this new argument because it was not timely presented in the Appeal Brief. See 37 C.F.R. Â§ 41.41(b)(2). 12 Appeal2014-009148 Application 13/149,276 Â§ 103(a) and the Examiner's rejection of claims 1-20 under 35 U.S.C. Â§ 112, second paragraph. 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)(l)(iv). AFFIRMED 13