Ex Parte Faust

Patent Trial and Appeal Board

Nov 15, 2016

13229310 (P.T.A.B. Nov. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/229,310 09/09/2011
29450 7590
BARLEY SNYDER
101 Lindenwood Drive
Suite 100
Malvern, PA 19355
11/17/2016
FIRST NAMED INVENTOR
Thomas Faust
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.
29427-1097 9330
EXAMINER
GILLIAM, BARBARA LEE
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
11/17/2016 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):
berwynipdocket@barley.com
hsalamone@barley.com
sanastasi@barley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS FAUST
Appeal2015-005234
Application 13/229,310
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005234
Application 13/229,310
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-18 and 20-50. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 1 is representative of the claimed invention, and is reproduced
below:
1. A bipolar battery plate for a bipolar battery, comprising:
a frame;
a substrate positioned within the frame and having
insulative plastic with conductive particles homogeneously
dispersed throughout the insulative plastic and exposed along a
surface of the substrate;
a first lead layer positioned on one side of the substrate;
a second lead layer positioned on another side of the
substrate, the first and second lead layer electrically connected
to each other through the conductive particles;
a positive active material positioned on a surface of the
first lead layer; and
a negative active material positioned on a surface of the
second lead layer.
Br. 22 (Claims App'x). Claim 25, the only other independent claim on
appeal, recites a "bipolar battery" comprising a plurality of plates, each plate
having the features recited in claim 1. Id. at 25 (Claims App'x). Claim 25
further requires "a pair of terminal sections" and "an electrolyte." Id.
1 Appellant identifies the real party in interest as East Penn Manufacturing
Co., Inc. Appeal Brief filed Nov. 25, 2014 ("Br."), 3.
2 Final Office Action mailed June 30, 2014 ("Final Act.").
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Appeal2015-005234
Application 13/229,310
The claims stand rejected as follows (see Final Act. 3-9; Examiner's
Answer mailed February 10, 2015 ("Ans."), 2-9):
1. Claims 1-16, 20, and 23-25 are rejected under pre-AIA
35 U.S.C. § 102(b) as anticipated by Rippel et al. (US 4,275,130; June 23,
1981 ("Rippel")).
2. Claims 17, 18, 21, and 22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Rippel in view of Shaffer, II et al. (US
2010/0183920 Al; July 22, 2010 ("Shaffer")).
3. Claims 26-36, 39, and 40 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Rippel in view of Meadows et al. (US
5,562,741 Al; Oct. 8, 1996 ("Meadows")).
4. Claims 37 and 38 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Rippel and Meadows, further in view of
Martin (US 6,569,560 Bl; May 27, 2003).
5. Claims 41-50 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Rippel in view of Cai et al. (US 2005/0181260 Al; Aug.
18, 2005 ("Cai")) and Jang (US 2007/0128464 Al; June 7, 2007). 3
3 This ground of rejection, as stated in the Final Office Action and the
Answer, does not include claims 45 and 50. See Final Act. 9; Ans. 8-9.
Claims 45 and 50 depend, respectively, from claims 43 and 49. Claim 19
was cancelled and claims 41-50 were added by an amendment filed March
4, 2014. The Final Office Action, mailed in response to this amendment,
identifies claims 1-18 and 20-50 as rejected. Final Act. 1. Although claims
45 and 50 are not included explicitly in the statement of the ground of
rejection, claims 41--49 are mentioned in the discussion of the rejection, and
the Examiner cites paragraph 35 of Cai as teaching "metal-coated fillers"
(see Final Act. 9; Ans. 8-9), i.e., "metal plated fibers" as recited in claims 45
and 50. Appellant has not raised any objections to the Examiner's failure to
include claims 45 and 50 in the statement of this ground of rejection (see
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Application 13/229,310
The Examiner finds Rippel discloses a bipolar battery plate
comprising frame 22, and substrates 21 positioned within the frame. Final
Act. 3. The Examiner finds Rippel describes each substrate 21 as
comprising conductive particles homogeneously dispersed throughout
insulative plastic and exposed along a surface of the substrate. See id.
(citing Rippel 3:67--4:24). The Examiner finds Rippel discloses first and
second lead layers (lead strips 37, 38) positioned on opposite sides of each
substrate 21. See id. Rippel discloses separator plates 23 interleaved
between substrates 21. Rippel 3 :49-51; Fig. 2, cited in Final Act 3. Rippel
discloses each separator plate 23 comprises positive active material 24 on
one side thereof and negative active material 25 on the opposite side thereof.
Id. at 3:51-53; Fig. 2. The Examiner finds the positioning of positive active
material 24 and negative active material 25 on separator plates 23 adjacent
lead strips 3 7, 3 8 on substrates 21 meets the limitation of "a positive active
material positioned on a surface of the first lead layer; and a negative active
material positioned on a surface of the second lead layer" as recited in
appealed claims 1 and 25. See Final Act. 3.
The sole argument advanced by Appellant in support of patentability
as to all appealed claims is that Rippel does not describe a bipolar battery
plate having the features recited in claims 1 and 25. See, e.g., Br. 11, 14; see
also id. at 17-20 (arguing the secondary references cited in the rejections
under 35 U.S.C. § 103(a) do not supply the limitations in claims 1 and 25
generally, Br. 10-21), and Appellant identifies claims 1-18 and 20-50 as
rejected and on appeal (see id. at 5, 20). Accordingly, we view the
Examiner's omission of claims 45 and 50 from the statement of this, or any
other specific ground of rejection, as harmless error.
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Appeal2015-005234
Application 13/229,310
that are not described in Rippel). The only specific distinction between the
claimed invention and Rippel argued by Appellant is the following:
Rippel does not teach or suggest a substrate having insulative
plastic with conductive filler and separate lead layers being
applied to opposite sides of the substrate, and having a PAM
[(positive active material)] and NAM [(negative active
material)] being pasted to the lead layers. Rather, Rippel
teaches a different structure that includes a supporting non-
conducting frame 11 (an elastic non-conducting material) with a
perforated web and filled with the active materials A, which
may be any suitable character, such as oxide of lead or finely-
divided lead compressed to the desired density.
Br. 12; see also id. at 15-16.
Appellant's argument, in essence, is that the broadest reasonable
interpretation of the phrases "a positive active material positioned on a
surface of the first lead layer; and a negative active material positioned on a
surface of the second lead layer" (claims 1and25 (emphasis added)),
requires that the active materials are "pasted" to the lead layers. Looking
first to the language of the claims, we do not find any language explictly
requiring that the active materials are "pasted" to the lead layers (see
generally Br. 22-28 (Claims App'x)), although we note claim 24, which
depends indirectly from claim 1, recites that the active materials are in the
form of a paste (see id. at 25 (Claim 24: "wherein [the] first active material
is a paste applied over the first lead layer and the second active material is a
paste spread over the second lead layer.")). Turning next to the
Specification, we find a description of the active materials as "positioned
over" the lead layers (see, e.g., Spec. i-f 24) and also a description of a
specific embodiment in which the active materials are "paste[ s] of lead or
lead oxide mixed with sulfuric acid, water, fiber, and carbon" (id. i-f 41 ). We
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Appeal2015-005234
Application 13/229,310
discern no basis in the claims or Specification, however, for limiting claim 1
or claim 25 to a structure in which the active layers are "pasted" to the lead
layers. See In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2011) (stating that
the PTO should only limit a claim term based on an express disclaimer of a
broader definition); cf Howmedica Osteonics Corp. v. Wright Medical
Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) ("[T]he fact that the
specification describes only a single embodiment, standing alone, is
insufficient to limit otherwise broad claim language.").
Based on our interpretation of the argued claim limitations,
Appellant's argument fails to persuade us of error in the Examiner's finding
that Rippel describes a bipolar battery plate comprising a substrate having
first and second lead layers positioned thereon and "a positive active
material positioned on a surface of the first lead layer; and a negative active
material positioned on a surface of the second lead layer," as recited in
claims 1 and 25 (see Final Act. 3).
Appellant's assertion that "Rippel does not teach or suggest a
substrate having insulative plastic with conductive filler" (Br. 12) is refuted
by the Examiner's citation to Rippel, column 3, line 67---column 4, lines 5
and 15-17, on page 11 of the Answer. See also Final Act. 3, 5 (wherein the
Examiner relies on this disclosure in rejecting claims 1 and 25).
Appellant asserts that
[i]f the Applicant has argued that the reference does not teach
each and every element of the claim, as asserted in the § 102
rejection, then it is the Examiner's duty, under MPEP § 2131, to
prove that each and every element of the claim as set forth in
the claim is found, either expressly or inherently described, in a
single prior art reference.
Br. 16.
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Application 13/229,310
We have reviewed the grounds of rejection as set forth in the
Examiner's Final Office Action, and are satisfied that the Examiner properly
identified in Rippel a teaching of each and every limitation recited in claims
1-16, 20, and 23-25, and identified in the various combinations of
references relied on in rejecting claims 17, 18, 21, 22, and 26-50, a
disclosure or suggestion of the invention as claimed. We agree with the
Examiner (see Ans. 10) that Appellant's general assertion that Rippel fails to
describe each of the limitations recited in claims 1 and 25, fails to satisfy the
Board's requirement that Appellant presents substantive arguments in
support of patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art."); In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("Jung argues that the Board gave improper deference to the
examiner's rejection by requiring Jung to 'identif[y] a reversible error' by
the examiner, which improperly shifted the burden of proving patentability
onto Jung. . . . This is a hollow argument, because, as discussed above, the
examiner established a prima facie case of anticipation and the burden was
properly shifted to Jung to rebut it. Moreover, even assuming that the
examiner had failed to make a prima facie case, the Board would not have
erred in framing the issue as one of 'reversible error.' As recently
acknowledged by the Board, it has long been the Board's practice to require
an applicant to identify the alleged error in the examiner's rejections.").
In sum, for the reasons stated above, and based on the Examiner's fact
finding and reasoning in the Final Office Action and Answer, we determine
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Application 13/229,310
a preponderance of the evidence on this appeal record favors the Examiner's
finding of anticipation as to claims 1-16, 20, and 23-25, and conclusion of
obviousness as to claims 17, 18, 21, 22, and 26-50. We affirm the
Examiner's decision to reject claims 1-18 and 20-50.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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