Ex Parte Zheng et al

Patent Trial and Appeal Board

Feb 29, 2016

12511193 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/511,193 0712912009
6147 7590 03/02/2016
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
ONE RESEARCH CIRCLE
BLDG. Kl-3A59
NISKAYUNA, NY 12309
FIRST NAMED INVENTOR
Liping Zheng
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.
235603-1 3307
EXAMINER
GUPTA, YOGENDRAN
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
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 LIPING ZENG, HAI YANG,
WEI CAI, JIANYUN LIU, ZHIGANG DENG, HUI LIU, LIN CHEN, and
XIANGUOYU
Appeal2014-000152
Application 12/511,193
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 22-37. We have jurisdiction pursuant
to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a method of making a
functional electrode that includes electrode sheets attached on opposite
surface of an intermediate layer, wherein the intermediate layer is electron
conductive and ion non-conductive.
Claim 22, the sole independent claim in appeal, is illustrative and
reproduced below:
Appeal2014-000152
Application 12/511,193
22. A method for manufacturing a functional electrode, the method
compnsmg:
providing and stirring a mixture comprising a solvent and at least one
of one or more carbon materials and one or more conductive polymers to
form a dispersion of the at least one of the one or more carbon materials and
the one or more conductive polymers in the solvent;
adding at least one binder into the dispersion to provide a resultant
mixture and stirring the resultant mixture;
processing the resultant mixture to form a plurality of electrode
sheets; and
attaching the electrode sheets on opposite surfaces of an intermediate
layer,
wherein the intermediate layer is electron conductive and ion non-
conductive.
The Examiner relies on the following prior art references as evidence
rejecting the appealed claims:
Kampe
Mrotek
Cavalca
Gomez
Ha
Miyake
Harvey
Jiang
Sonai
Narayanan
Fay
Rusek
Miyake
Wakahoi
us 4,602,426
us 5, 705,259
US 2001/0033960 Al
US 2004/0096719 Al
US 2004/0241520 Al
US 2005/0053822 Al
US 2005/0231893 Al
US 2006/0147780 Al
US 2007 /0190398 Al
US 7,282,291 B2
US 2008/0038612 Al
US 7 ,344, 799 B2
US 2008/0096078 Al
US 7,476,459 B2
Jul. 29, 1986
Jan. 6, 1998
Oct. 25, 2001
May 20, 2004
Dec 2, 2004
Mar. 10,2005
Oct. 20, 2005
Jul. 6, 2006
Aug. 16, 2007
Oct. 16, 2007
Feb. 14,2008
Mar. 18, 2008
Apr. 24, 2008
Jan. 13,2009
The Examiner maintains the following grounds of rejection:
Claims 22, 23, 25, 32, 34, and 36 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Sonai in view of Fay, Miyake I (Miyake
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Appeal2014-000152
Application 12/511,193
'822), and Gomez. 1 Claims 24 and 35 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Sonai in view of Fay, Miyake I, Gomez,
and Harvey. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sonai in view of Fay, Miyake I, Gomez, and
Cavalca. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sonai in view of Fay, Miyake I, Gomez, Cavalca, and
Kampe. Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sonai in view of Fay, Miyake I, Gomez, and Jiang.
Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sonai in view of Fay, Miyake I, Gomez, Narayanan,
Miyake II (Miyake '078]), and Rusek. Claim 33 stands rejected under 35
U.S.C. § 103(a) as being unpatentable over Sonai in view of Fay, Miyake I,
Gomez, and Ha. Claims 36 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sonai in view of Fay, Miyake I, Gomez, Mrotek.
Claim 37 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sonai in view of Fay, Miyake I, Gomez, Mrotek, and Wakahoi.
We reverse the stated rejections. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). Here, the Examiner has not shouldered this
burden.
Sole independent claim 22 is directed to a method of manufacturing a
functional electrode wherein the product prepared includes electrode sheets
1 Previously rejected claims 38 and 39 were cancelled in an amendment filed
January 17, 2013 (see Advisory Action of January 24, 2013).
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Appeal2014-000152
Application 12/511,193
attached on opposite surfaces of an intermediate layer and wherein the
intermediate layer is electron conductive and ion non-conductive.
Concerning the Examiner's first stated obviousness rejection, the
Examiner relies on a proposed modification of an intermediate layer
(electrolyte membrane 4) of Sonai, which layer is ionically conductive by
substituting a membrane layer 30 as taught by Fay, which layer is also ion
conductive, but has edge regions 30b of the layer that are not ion conductive
(Ans. 5, 15-17; Fay i-fi-f 14, 18-23; Figs. I, 2).
As argued by Appellants, even if it would have been obvious for one
of ordinary skill in the art to make the Examiner's proposed modification of
Sonai, the result would furnish an ion conductive layer as the intermediate
layer in Sonai, not the required ion non-conductive layer of independent
rejected independent claim 22 (Br. 8).
The other references are applied in the Examiner's first stated
rejection for another feature and do not cure the aforementioned deficiency
in the base rejection. Likewise, the additional references applied in
separately rejecting certain dependent claims are not utilized to cure the
aforementioned deficiency in the base rejection.
It follows that we shall reverse all of the stated rejections on this
record.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
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Application 12/511,193
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