Ex Parte Yaegashi et al

Patent Trial and Appeal BoardAug 24, 2017

13664726 (P.T.A.B. Aug. 24, 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. 13/664,726 10/31/2012 Satoru Yaegashi EXD0021US 4521 23413 7590 08/28/2017 TANTOR TOT RTTRN T T P EXAMINER 20 Church Street CULLEN, SEAN P 22nd Floor Hartford, CT 06103 ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 08/28/2017 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SATORU YAEGASHI, HARALD NIEPRASCHK, and OLAF SIELEMANN Appeal 2017-001739 Application 13/664,726 Technology Center 1700 Before GEORGE C. BEST, N. WHITNEY WILSON, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1-20 of Application 13/664,726 under 35 U.S.C. § 102(b) as anticipated and under 35 U.S.C. § 103(a) as obvious. Final Act. (June 24, 2015). Pursuant to 35 U.S.C. § 134(a), Appellants1 seek reversal of these rejections. We have jurisdiction. 35 U.S.C. § 6(b). For the reasons set forth below, we reverse. 1 Exide Technologies GmbH is identified as the applicant and real party in interest. Appeal Br. 2. Appeal 2017-001739 Application 13/664,726 BACKGROUND The ’726 Application describes a composition for use in valve- regulated lead-acid (“VRLA”) batteries. Spec. 1:6-7. The composition is said to improve deep cycling performance while maintaining discharge performance when used in gel electrolyte filled VRLA batteries. Spec. 2:29-3:1. Claim 1 is representative of the ’726 Application’s claims and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A composition for use in a negative active material in a valve regulated lead-acid battery, comprising: a carbon material having a BET surface area from 150 m2/g to 2000 m2/g and having a D90-value greater than 5 pm; wherein the amount of carbon material ranges from 0.1 wt% to 1.5 wt% based on the total weight of the composition. Appeal Br. 10. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1-3, 9-13, 19, and 20 are rejected under 35 U.S.C. § 102(b) as anticipated by Ho.2 Final Act. 2. 2. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Atanassova.3 Final Act. 5. 2 US 2011/0250500 Al, published Oct. 13, 2011. 3 WO 2011/053670 Al, published May 5, 2011. 2 Appeal 2017-001739 Application 13/664,726 DISCUSSION Appellants argue for the reversal of these rejections on the basis of limitations present in independent claim 1. See Appeal Br. 5-9; Reply Br. 2-6. We, therefore, limit our analysis to claim 1. Dependent claims 2-20 will stand or fall with their respective parent independent claims. 37 C.F.R. § 41.37(c)(l)(iv). Rejection 1. The Examiner rejected claims 1-3, 9-13, 19, and 20 as anticipated by Ho. Final Act. 2. The Examiner must establish a prima facie case of anticipation under 35 U.S.C. § 102 by showing, as a matter of fact, that all elements arranged as specified in a claim are disclosed within the four comers of a reference, either expressly or inherently, in a manner enabling one skilled in the art to practice an embodiment of the claimed invention without undue experimentation. Clear Value, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. ApotexInc., 550 F.3d 1075, 1083 (Fed. Cir. 2008). Claim 1 is directed to a composition “wherein the amount of carbon material ranges from 0.1 wt% to 1.5 wt% based on the total weight of the composition.” The Examiner found that Ho explicitly discloses the claimed composition because Ho’s paste composition contains 10 lbs (i.e., 4535.92 g) of lead oxide powder, 3.78 g of polyester fiber, 9.08 g of fumed silica, 9.08 g of graphite for Example 1 or 9.08 g of activated carbon for Example 6, and 9.08 g of tin sulfate. The composition has a total weight of 4566.94 g. The amount of the carbon material based on the total weight of the composition of Ho is 0.2 wt% (i.e., 9.08/4566.94). Therefore, ... Ho indicates the claimed 3 Appeal 2017-001739 Application 13/664,726 percentage for the claimed composition relative to the total weight of the composition. Answer 6-7 (citing Ho ^ 31, 37). Appellants argue, inter alia, that this rejection should be reversed because Ho fails to disclose the weight percentage for the amount of carbon material “relative to the total weight of the composition” as claimed. Appeal Br. 6. We begin by interpreting the language of claim 1. In particular, we construe the term “based on the total weight of the composition” in relation to the phrase “from 0.1 wt% to 1.5 wt%.” During prosecution, the PTO gives the language of the proposed claims “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Appellants direct our attention to the Specification for exemplifying compositions in which “water comprises between 12.48% and 15.91% of the total weight.” Reply Br. 3 (citing Spec. Table 21:6-8); see also Spec. 21:13-16 (showing that compositions A, B, and C comprise a carbon material, wherein the weight percentage of the carbon material was calculated “based on the total weight of the composition,” which included the weights of additional components). We, therefore, interpret the claimed weight percentage range as requiring an accounting of the weights of additional components, including aqueous components, to derive “the total weight of the composition” recited in claim 1. 4 Appeal 2017-001739 Application 13/664,726 Appellants argue that Ho is silent with regard to the weights of other components, such as water and aqueous sulfuric acid, which are included in Ho’s paste. Reply Br. 3 (citing Ho ^ 31). Thus, Appellants contend that the Examiner reversibly erred in relying solely on Ho’s teaching of dry weight percentage. Reply Br. 3. We agree that the Examiner has so erred. The Examiner’s rejection is based upon an erroneous construction. The Examiner construes the claim as not requiring the consideration of aqueous component weights in calculating the total weight of the composition. Without a proper construction, the Examiner has not provided sufficient factual findings that Ho’s paste composition inherently has the requisite carbon material range from 0.1 wt% to 1.5 wt%. The Examiner has not made any findings with respect to the amounts of additional components included in Ho’s paste, nor the contribution of these amounts to the total weight of Ho’s composition. Thus, the Examiner’s finding, that Ho’s paste composition possesses 0.2 wt% of the carbon material based on the total weight of the composition of Ho, is erroneous. We, therefore, reverse Rejection 1. Rejection 2. The Examiner rejected claims 1-20 as unpatentable over Atanassova. Final Act. 5. The patent examiner bears the initial burden of establishing a prima facie case that an application’s claims are obvious based upon what was known in the prior art. See In re Dillon, 919 F.2d 688, 701 (Fed. Cir. 1990). Here, the Examiner found that Atanassova teaches or suggests the claimed composition for use in a negative active material in a VRLA battery. Id. at 5. The Examiner determined that it would have been obvious to the ordinary skilled artisan to have selected the claimed range because 5 Appeal 2017-001739 Application 13/664,726 Atanassova discloses an overlapping range of carbon material from 0.2 wt% to 10 wt% based on the total weight of the composition. Id. (citing Atanassova ]} 20). According to the Examiner, because “lead oxide and carbon black are the only essential and non-optional components of the paste, a disclosure of the loading of carbon black relative to the lead oxide is also a disclosure of the loading based on the total weight of the composition.” Answer 10. Appellants argue that Atanassova does not teach or suggest the claimed range of carbon material “loading based on the total weight of the composition” because it “only teaches loading of carbon black relative to an amount of lead oxide.” Appeal Br. 8. Appellants further argue that Atanassova discloses other components, but “[n]one of these elements (including at least sulfuric acid, which would be required in order to form a paste having the desired consistency) are accounted for by the Examiner in the wt% calculation.” Reply Br. 5 (citing Atanassova]} 52). Appellants’ arguments are persuasive. For the reasons set forth above, the Examiner’s rejection is based upon an erroneous construction.4 The Examiner has failed to establish a prima facie case of obviousness because there is no accounting for the weights of the additional components needed to form Atanassova’s paste. Absent such information, the Examiner’s findings are not based on the total weight of the composition within the meaning of the claim. Therefore, the Examiner’s finding that Atanassova discloses an overlapping range of 4 We express no opinion regarding Appellants’ other arguments for reversal of Rejection 1 and Rejection 2. 6 Appeal 2017-001739 Application 13/664,726 carbon material from 0.2 wt% to 10 wt% based on the total weight of the composition is incorrect. Accordingly, we reverse Rejection 2. CONCLUSION For the reasons set forth above, we reverse the rejections of claims 1- 20 of the ’726 Application. REVERSED 7