Ex Parte McKenzie et al

Patent Trial and Appeal Board

Nov 21, 2018

13629084 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/629,084 09/27/2012 Rodney Stuart McKenzie
127052 7590 11/26/2018
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
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.
069826-0272 7698
EXAMINER
KOROVINA, ANNA
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODNEY STUART McKENZIE and
JEFFREY A. POIRIER
Appeal2018-000811
Application 13/629,084
Technology Center 1700
Before LINDA M. GAUDETTE, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-8, 10-18, and 20-22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Opinion, we refer to the Specification filed September 27, 2012
("Spec."); the Final Office Action dated April 7, 2017 ("Final Act."); the
Appeal Brief filed June 7, 2017 ("App. Br."); the Examiner's Answer dated
August 30, 2017 ("Ans."); and the Reply Brief filed October 30, 2017
("Reply Br.").
2 Appellant is the applicant, Spectrum Brands, Inc., identified in the Appeal
Brief as the real party in interest. App. Br. 3.
Appeal 2018-000811
Application 13/629,084
The claims are directed to electrochemical cells and zinc anodes
comprising an anode can, wherein the entire anode can consists of an alloy
comprising copper. App. Br. 22 (Claims App'x). Claim 1, reproduced
below from the Claims Appendix, is illustrative of the claimed subject
matter:
1. An electrochemical cell comprising:
a zinc anode comprising an anode can, wherein the entire
anode can consists of an alloy comprising copper, wherein the
alloy is selected from the group consisting of an alloy of
copper, aluminum, silicon and cobalt; an alloy of copper, zinc,
aluminum and cobalt; and, an alloy of copper, silicon, tin and
chromium;
a cathode;
a gasket disposed between the anode and the cathode;
and,
an electrolyte comprising a solute and an aqueous
solvent.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Friedman us 2,495,247 Jan.24, 1950
Ruben us 2,620,368 Dec. 2, 1952
Shapiro et al. us 3,923,555 Dec. 2, 1975
("Shapiro")
Hutchison us 3,984,166 Oct. 5, 1976
Cheskis et al. us 4,071,359 Jan. 31, 1978
("Cheskis")
Shapiro et al. us 4,242,360 Dec. 30, 1980
("Shapiro II")
Parikh et al. us 4,264,360 Apr. 28, 1981
("Parikh")
2
Appeal 2018-000811
Application 13/629,084
Smith, III et al.
("Smith III")
Drosdick
Breedis et al.
("Breedis")
Buckle et al.
("Buckle")
us 4,409,295
us 4,589,938
US 6,471,792 Bl
US 2002/0187391 Al
REJECTIONS
Oct. 11, 1983
May 20, 1986
Oct. 29, 2002
Dec. 12, 2002
The Examiner maintains and Appellant seeks review of the following
rejections under 35 U.S.C. § I03(a): (1) claims 1-8, 11-18, and 21 over
Ruben, Friedman, Cheskis, Smith III, Hutchison, Drosdick, Parikh, and
Shapiro; (2) claims 1-3, 5, 8, 11-13, 15, 18, and 22 over Ruben, Friedman,
Smith III, Breedis, and Shapiro II; and (3) claims 10 and 20 over Ruben,
Friedman, Cheskis, Smith III, Hutchison, Drosdick, Parikh, and Shapiro in
view of Buckle, or over Ruben, Friedman, Smith III, Breedis, and Shapiro II
in view of Buckle. Final Act. 10-16; App. Br. 8-21.
OPINION
The claims require an "entire anode can" consisting of one of three
alloys: an alloy of (a) copper, aluminum, silicon and cobalt; (b) copper,
zinc, aluminum and cobalt; or ( c) copper, silicon, tin and chromium. App.
Br. 22-24 (Claims App'x). The Examiner relies on Ruben as the primary
reference in each of the rejections. Final Act. 10-16. The Examiner finds
that Ruben teaches all elements of the claims except the alloys. See id. at
10-13; Ans. 9. The Examiner relies on three sets of references (Cheskis,
Smith III, Hutchison, and Drosdick; or Parikh and Shapiro; or Smith III,
Breedis, and Shapiro II) as each teaching one of the three claimed alloys.
Final Act. 11-13.
3
Appeal 2018-000811
Application 13/629,084
Appellant argues that the Examiner fails to establish the requisite
reasoning to combine Ruben with any of the secondary references, and
instead, relies on hindsight. App. Br. 10-13, 16, 20. Appellant's argument
is persuasive for the reasons discussed below.
Common to each rejection, the Examiner states that Ruben seeks the
advantageous properties of conductivity, strength, low resistance, and
corrosion resistance in an electrical contact material of the anode cup. Final
Act. 12, 14, 15; Ans. 13-15. The Examiner finds that each of the secondary
references teaches one or more of these advantageous properties, therefore
concluding that it would have been obvious to one of skill in the art at the
time of the invention to have combined Ruben with the secondary references
to reach the claimed invention. See Final Act. 12-15.
Ruben, however, merely teaches that its cathode is conductive and its
electrolyte may have low internal resistance. Ruben col. 1, 11. 7-8; col. 5, 11.
12-19. Ruben does not teach a desire for any allegedly advantageous
properties identified by the Examiner. See Ruben, generally. The
Examiner's rationale for combining secondary references with Ruben is based
on purported advantages in Ruben that are not disclosed in the reference.
Instead, these desirable properties appear to be drawn from Appellant's
Specification:
The selection of an appropriate alloy of copper combined with
other metals for the anode can is essential to the present
disclosure. In particular, an appropriate alloy of copper will
impart strength and corrosion resistance, as well as maintain
low contact resistance and a quiescent surface relative to the
wetted contact with the anode metal.
4
Appeal 2018-000811
Application 13/629,084
Appropriate metals will impart improved strength, prevent
surface oxidation where low contact resistance is maintained,
and enhance visual appearance.
Specification ,r,r 23, 24. The Examiner appears to have used the
Specification as a roadmap to locate secondary prior art references that teach
certain advantageous properties, and hindsight to combine those secondary
references with Ruben. "To imbue one of ordinary skill in the art with
knowledge of the invention ... , when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553 (Fed. Cir. 1983).
It is improper to base a conclusion of obviousness upon facts, such as
the advantages of using certain alloys, gleaned only through hindsight. "The
invention must be viewed not after the blueprint has been drawn by the
inventor, but as it would have been perceived in the state of the art that
existed at the time the invention was made." Sensonics Inc. v. Aerosonic
Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Using the claimed
invention as a template for its own reconstruction is "an illogical and
inappropriate process by which to determine patentability." W.L. Gore &
Assocs., Inc., 721 F.2d at 1553.
It is not enough for the Examiner to merely demonstrate that elements
of the clairned invention were independently known in the prior art, as every
element of a claimed invention often can be found in the prior art.
A1etalCrqjt oflvfayville, inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir.
2017) (citing In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000)).
5
Appeal 2018-000811
Application 13/629,084
"Knowledge of a problem and motivation to solve it are entirely different
from motivation to combine paiiicular references." Id. (citing lnnogenetics,
N. V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008)). Finding the
Examiner's explanation for concluding that the skilled artisan would have
combined Ruben with the secondary references seriously flawed, we are left
with only hindsight bias of which KSR warns us. See KSR Int 'l Co. v.
Teleflex inc., 550 U.S. 398, 401 (2007).
That one of ordinary skill at the time of the invention, presented with
Ruben and the secondary references, could have combined them is not
enough; it does not imply motivation to select those references and combine
them to arrive at the claimed invention. See Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.") (citinginTouch Techs., Inc. v. VGO Communications, Inc., 751
F.3d 1327, 1352 (Fed. Cir. 2014)).
We do not sustain the Examiner's rejections of claims 1-8, 10-18, and
20-22.
DECISION
The rejections of claims 1-8, 10-18, and 20-22 are reversed.
REVERSED
6