Ex Parte Phillips et al

Patent Trial and Appeal Board

Nov 15, 2017

12852345 (P.T.A.B. Nov. 15, 2017)

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.
12/852,345 08/06/2010 Jeffrey Phillips PWRGP039 3667
22434 7590 11/17/2017
Weaver Austin Villeneuve & Sampson LLP
P.O. BOX 70250
OAKLAND, CA 94612-0250
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
USPTO@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY PHILLIPS, SAMARESH MOHANTA, DEEP AN
BOSE, and CECILIA MASKE
Appeal 2016-004152
Application 12/852,345
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
1 This Decision includes citations to the following documents: Specification
filed Aug. 6, 2010 (“Spec.”); Final Office Action mailed Apr. 3, 2015
(“Final”); Appeal Brief filed Sept. 4, 2015 (“Appeal Br.”); Examiner’s
Answer mailed Feb. 1, 2016 (“Ans.”); and Reply Brief filed Mar. 14, 2016
(“Reply Br.”).
Appeal 2016-004152
Application 12/852,345
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—6, 9, and 10. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The invention relates to a composition for zinc negative electrodes
used in rechargeable nickel-zinc batteries. Spec. 12. Claim 1, the sole
independent claim on appeal, is reproduced below:
1. A rechargeable nickel zinc cell comprising:
i) a zinc negative electrode comprising electrochemically
active zinc and surfactant coated carbon fiber, wherein the
surfactant is selected from the group consisting of a polyglycol
non-ionic surfactant, a poloxamer and a fluorosurfactant;
ii) a nickel positive electrode; and
iii) an aqueous alkaline electrolyte.
Appeal Br. 15 (Claims App’x).
The claims stand finally rejected under 35 U.S.C. § 103(a) as follows:
1. claims 1 and 2 over Furukawa (JP 58163172(A), pub. Sep. 27,
1983 (English Abstract)3) in view of Periard (US 4,810,600, iss. Mar. 7,
1989); and
2. claims 1—6, 9, and 10 over Furukawa in view of Periard, and
further in view of Specification paragraphs 76, 106, 109, and 125.
2 Appellants identify the real party in interest as Powergenix Systems, Inc.
Appeal Br. 3.
3 Although the rejection appears to be based on the English Abstract (see
generally Final 3—8), we also refer to the full English translation (“Furukawa
translation”), submitted by Appellants in an information disclosure statement
filed January 27, 2012.
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Appeal 2016-004152
Application 12/852,345
The Examiner finds Furukawa discloses a nickel zinc battery as
recited in claims 1 and 2, with the exception that Furukawa does not
explicitly use the term “surfactant coated” when describing the carbon fiber.
Final 3^4. Rather, the Examiner finds Furukawa describes a carbon fiber
“entwined” with “a wettable material.” Id. at 3. The Examiner finds
Periard, directed to a cathode coating dispersion for batteries, discloses the
use of surfactants to make graphite and/or carbon wettable. See id. at 4. The
Examiner finds, therefore, that one of ordinary skill in the art at the time of
the invention would have utilized a surfactant as the wettable material in
Furukawa’s nickel zinc battery. Id. Based on these findings, the Examiner
concludes the invention, as recited in claims 1 and 2, would have been
obvious over Furukawa and Periard. Id.
In addition to rejecting claims 1 and 2 as obvious over the
combination of Furukawa and Periard, the Examiner determines these
claims, as well as claims 3—6, 9, and 10 would have been obvious over
Furukawa, Periard, and disclosure in the Specification (id. at 4—6) which the
Examiner finds is a description of the known prior art (Ans. 8 (explaining
that although the relied-upon disclosure in the Specification is not identified
as prior art, “use of the phrases ‘generally includes’ and ‘commercially
available’ are equivalent to the phrase ‘prior art’”)). With respect to claim 1,
for example, the Examiner finds Specification paragraph 125 discloses that it
was known in the art at the time of the invention that “surfactant coated
carbon fibers, when added to the negative electrode, serve the purpose of
irrigating or wetting the electrode.” Final 5.
Appellants argue the evidence of record does not support the
Examiner’s finding that one of ordinary skill in the art would have used one
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Appeal 2016-004152
Application 12/852,345
of Periard’s surfactants as the wettable material in Furukawa’s battery. See
Appeal Br. 7—8. Appellants further contend the Examiner’s reliance on
Specification paragraph 125 in rejecting claim 1 is improper because this
paragraph is a description of Appellants’ invention, not the prior art. Id. at
9.
Appellants’ arguments are persuasive of error in the Examiner’s
rejection of claim 1 for the reasons explained in further detail below.
The Specification discloses that “[a] surfactant is a wetting agent[]
that lowers the surface tension of a liquid.” Spec. 1132. The Specification
discloses that, in the inventive zinc negative electrode, coating carbon fiber
with surfactant “enhances the hydrophilicity of the fibers to help maintain
conductivity via enhanced electrolyte movement and inhibiting dissolution
and deposition of active zinc onto the carbon fibers.” Id. 1134. The
Specification discloses that a method of manufacturing surfactant-coated
carbon fibers in accordance with the invention includes “i) heat treating
carbon fibers to between about 2000°C and about 3000°C; and, ii) exposing
the heat treated carbon fibers to a surfactant.” Id. The Specification
discloses that, in addition to surfactant coated carbon fibers, there are other
materials that can be used in the inventive zinc negative electrode to
facilitate wetting, such as titanium oxides. Id. 1125.
Furukawa describes entwining titanium oxide, a wettable material,
with carbon fiber. Furukawa, Abstract; see also Furukawa translation, p. 3,
11. 2—3, 9-10. Furukawa discloses that “the carbon fibers serve to enhance
the electric conductivity of the zinc electrode.” Furukawa translation, p. 3,
11. 5—6. Furukawa discloses that “the addition of titanium oxide ... as
wettable material serves to enhance the ability of the zinc electrode to hold
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Appeal 2016-004152
Application 12/852,345
the electrolytic solution.” Id. at p. 3,11. 2-4. Periard discloses a cathode
coating dispersion comprising water, binder, graphite and/or carbon black as
the electrically conductive material, and one or more surfactants such as
fluorosurfactants. Periard, 1:8—9; 2:1, 6—8, 26—30. Periard discloses that the
“surfactants have the task of making the graphite and/or carbon black
wettable, of making possible the production of a homogeneous dispersion
and of avoiding inclusion of air in the dispersion. ...” Id. at 2:30—33.
Appellants argue the Examiner’s rejection is based on an erroneous
assumption that a wettable material, e.g., Furukawa’s titanium oxide, is
equivalent to a surfactant, e.g., one of Periard’s fluorosurfactants. See Reply
Br. 7. Appellants explain that “[w]ettable materials, such as . . . Furukawa’s
titanium dioxide, have the function of retaining water within the bulk of
material or on the surface. Surfactants, on the other hand, have the function
of making other surfaces more wettable by modifying the surface tension of
other surfaces.” Id. Appellants’ argument is supported by the above-cited
disclosure in the Specification and the references. See Spec. Tflf 125, 132,
134 supra', Furukawa translation, p. 3,11. 2—\ supra. The presence of a
wettable material, i.e., titanium dioxide, with carbon fibers is not manifestly
equivalent to carbon fibers treated to be wettable, including by treatment
with a surfactant. Thus, we agree with Appellants that the Examiner has not
explained sufficiently why one of ordinary skill in the art would have
replaced Furukawa’s titanium dioxide (a wettable material) with a surfactant
(a wetting agent), i.e., a material that performs a different function. Id.', see
also Appeal Br. 6.
Appellants further argue persuasively that Furukawa and Periard,
alone or in combination, fail to teach or suggest the use of surfactant-coated
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Appeal 2016-004152
Application 12/852,345
carbon fiber in a zinc electrode as required by claim 1. Appeal Br. 6. As
argued by Appellants, Periard discloses coating a cathode material with a
dispersion of carbon, surfactant, and a binder. Id. The Examiner has not
explained sufficiently how replacing Furukawa’s titanium dioxide, which is
described as “entwined” with carbon fibers, with a surfactant would result in
“surfactant-coated” carbon fiber as required by the claims. Compare Spec.
1134 supra (describing a suitable method of forming surfactant-coated
fibers for use in the inventive zinc negative electrode as including a step of
exposing carbon fibers that have been heat treated to between about 2000°C
and about 3000°C to a surfactant), with Furukawa translation p. 2,11. 5—16
(describing kneading together the titanium oxide, carbon fibers and other
materials, drying and pulverizing).
We also agree with Appellants that the Examiner has not identified
persuasive evidence to support a finding that the disclosure in Specification
paragraph 125 is admitted prior art, as applied by the Examiner.
In sum, the evidence does not support the Examiner’s conclusion of
obviousness as to claim 1. Therefore, we do not sustain the rejections of
claim 1, or the rejections of dependent claims 2—6, 9, and 10, which are
based on the same unsupported fact finding discussed above.
REVERSED
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