Ex Parte Porob et al

Patent Trial and Appeal Board

Aug 30, 2017

12720874 (P.T.A.B. Aug. 30, 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.
12/720,874 03/10/2010 Digamber Gurudas Porob 235927-1 9987
94288 7590 09/01/2017
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
MELLON, DAVID C
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney @ ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIGAMBER GURUDAS POROB, DONG-SIL PARK,
SUNDEEP KUMAR, and ATANU SAHA
Appeal 2016-007648
Application 12/720,8741
Technology Center 1700
Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1—7, 14—18, and 23—25.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants identify the real party in interest as General Electric Company.
App. Br. 2.
Appeal 2016-007648
Application 12/720,874
BACKGROUND
The subject matter on appeal is directed to a seal structure to be used
in energy storage devices such as electrochemical cells. Spec. Tflf 1,2, 13.
Claim 1 is illustrative, is taken from the Claims Appendix of the
Appeal Brief, and appears below.
1. A seal structure, comprising:
a sealing glass joining an ion-conducting first ceramic to
an electrically insulating second ceramic;
wherein the ion-conducting first ceramic has an anode
surface defining an anode compartment and a cathode surface
defining a cathode compartment;
wherein the sealing glass has an exposed portion, wherein
the exposed portion is open to at least one of: the anode
compartment and the cathode compartment;
wherein the exposed portion of the sealing glass is coated
with a coating composition configured to resist corrosion by
contact with sodium or a metal halide at a working temperature,
said coating composition comprising at least one or more of
boria, alumina, titania, zirconia, yttria, and ceria; and wherein the
coating composition has a thermal expansion coefficient in a
range of from about 3 parts per million per degrees Centigrade to
about 15 parts per million per degrees Centigrade.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
US 4,048,391
US 5,171,649
US 5,194,337
US 2002/0172871 A1
US 2008/0145755 A1
Tilley
Vaughn
Yoshida
Schucker
Iacovangelo
Sept. 13, 1977
Dec. 15, 1992
Mar. 16, 1993
Nov. 21,2002
June 19, 2008
C. Barry Carter, Ceramic Materials Science and Engineering 628—631
(2nd ed. Springer 2013).
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Appeal 2016-007648
Application 12/720,874
REJECTIONS ON APPEAL
I. Claims 1—7, 14—18, 23, and 25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yoshida in view of Tilley, and
as evidenced by Carter and Schucker (Final Act. 4—7); and
II. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoshida in view of Tilley, and as evidenced by
Carter and Schucker, and further in view of either Iacovangelo or
Vaughn (Final Act. 7—8).
STATEMENT OF THE CASE
The Examiner finds that Yoshida teaches all of the recited elements of
claim 1, except for the limitation requiring the sealing glass to have a
coating of “at least one or more of boria, alumina, titania, zirconia, yttria,
and ceria.” Final Act. 4. The Examiner finds that Tilley discloses alumina-
coated glass seals in an electrochemical cell to prevent sodium penetration,
and concludes that it would have been obvious to the skilled artisan to
modify the sealing glass of Yoshida for the same purpose. Id. at 5. The
Examiner finds further that the recited thermal expansion coefficient would
be inherent in Tilley’s alpha alumina coating as evidenced by both Carter
and Schucker, and that the claimed corrosion resistance would likewise be
an inherent property of the coating. Id.
OPINION
Rejection I
Appellants present specific arguments against aspects of Rejection I
pertaining to all the claims as a group. App. Br. 4—7; Reply Br. 2—5.
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Application 12/720,874
Therefore, we select claim 1 as representative and decide the propriety of
this rejection based on this claim. 37 C.F.R. § 41.37(c)(l)(iv)(2013).
We are not persuaded that Appellants have identified reversible error.
In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining the Board’s
long-held practice of requiring Appellants to identify the alleged error in the
Examiner’s rejection). Therefore, we sustain the § 103 rejections advanced
in this appeal based on the findings of fact, conclusions of law, and rebuttals
to arguments well-expressed by the Examiner in the Final Action and in the
Answer. We add the following comments for emphasis.
Appellants’ arguments fail for several key reasons. First, we observe
that Appellants make contradictory statements regarding Tilley’s disclosure.
Namely, Appellants state that “Tilley also describes that such glass seals are
susceptible to sodium penetration and such glass seals may be provided with
an alpha alumina coating to prevent sodium penetration’'’ (App. Br. 6; Reply
Br. 4, emphasis added), and then contend that Tilley’s coating is applied to
the electrolyte and not the glass seal. Id. Such contradictory statements
regarding the reference teachings do not identify reversible error.
We furthermore disagree with Appellants’ argument that Tilley’s
alumina coating is not on the glass seal. Id. Rather, as correctly found by
the Examiner (Final Act. 5; Ans. 6), Tilley expressly teaches that the “glass
seals [are] provided with an alpha alumina coating to prevent sodium
penetration.” Tilley 2:55—57. Moreover, Appellants’ statements regarding
the avoidance of violent or unsafe reactions (App. Br. 6) and the chemistry
of sodium penetration (Reply Br. 4) are both unsupported by objective
evidence, and fail to negate Tilley’s express teaching that the glass seals
themselves have an alpha alumina coating in order to prevent sodium
penetration. Tilley 2:5 5—57.
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Application 12/720,874
Appellants’ arguments regarding the Examiner’s improper reliance on
the doctrine of inherency are also not well-taken. App. Br. 6—7. “[I]n order
to rely on inherency to establish the existence of a claim limitation in the
prior art in an obviousness analysis[,] the limitation at issue necessarily must
be present, or the natural result of the combi nation of elements explicitly
disclosed by the prior art.” PAR Pharm., Inc. v. TWI Pharms, Inc., 773 F.3d
1186, 1195 96 (Fed. Cir, 2014). As correctly noted by Appellants (App. Br.
7), to properly rely on the doctrine of inherency in a rejection, “the Examiner
must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex Parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). Once the Examiner so provides, however, the
burden shifts to the patent applicant to demonstrate otherwise. See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
Applying these concepts to the instant case, the Examiner indeed
provides a sufficient basis in fact and technical reasoning to support the
findings that the recited thermal expansion coefficient and corrosion
resistance would be inherent properties of Tilley’s alumina coating. Final
Act. 5—6; Ans. 6—7. Thus, the burden of demonstrating that the claimed
properties would not be inherent shifted to Appellants, and Appellants have
not argued, much less demonstrated with objective evidence, otherwise.
Thus, Appellants’ inherency arguments fail to persuade us of reversible
error.
It follows that we sustain Rejection I.
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Application 12/720,874
Rejection II
For each rejection of claim 24, Appellants rely on substantially the
same arguments as those presented for Rejection I. App. Br. 8. Therefore,
for the same reasons expressed with respect to Rejection I, we sustain the
rejections of claim 24.
SUMMARY
The Examiner’s final decision to reject claims 1—7, 14—18, and 23—25
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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