Guenther Hambitzer et al.

Patent Trials and Appeals Board

Jan 8, 2020

14056556 - (D) (P.T.A.B. Jan. 8, 2020)

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.
14/056,556 10/17/2013 Guenther Hambitzer 25594-0002 5864
121342 7590 01/08/2020
Bose McKinney & Evans LLP
111 Monument Circle
Suite 2700
Indianapolis, IN 46204
EXAMINER
LYLES-IRVING, CARMEN V
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
01/08/2020 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):
patent@boselaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUENTHER HAMBITZER,
JOACHIM HEITBAUM, CLAUS DAMBACH, MARTIN KAMPA,
CHRISTIAN PSZOLLA, and CHRISTIANE RIPP
Appeal 2019-002544
Application 14/056,556
Technology Center 1700
BEFORE KAREN M. HASTINGS, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 20, 21, 39–41, and 49–60. Final Act. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as “Alevo
International S.A.” Appeal Br. 1.
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Application 14/056,556

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CLAIMED SUBJECT MATTER
The claims are directed to a rechargeable electrochemical battery.
Independent claims 20 and 49, reproduced below, are illustrative of the
claimed subject matter:
20. Rechargeable electrochemical battery cell, comprising:
a housing,
a positive electrode,
a negative electrode,
an active metal,
an electrolyte which contains sulfur dioxide and a
conductive salt of the active metal, and
a total quantity of oxygen contained in compounds which
are able to react with sulfur dioxide in a reaction by which the
sulfur dioxide is reduced of not more than 10 mMol per Ah
theoretical charge capacitance of the rechargeable
electrochemical battery cell, wherein the compounds which are
able to react with sulfur dioxide are on or in the positive
electrode, the negative electrode, and/or the electrolyte.
49. A rechargeable electrochemical battery cell, comprising a
positive electrode, a negative electrode, an electrolyte which
contains sulfur dioxide, and a total quantity of oxygen
contained in compounds which are able to react during
charging, recharging or overcharging of the cell with sulfur
dioxide in a reaction by which the sulfur dioxide is reduced, of
not more than 10 mMol per Ah theoretical charge capacitance
of the cell.
Claims Appendix (Appeal Br. 19, 20) (emphases added).
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REFERENCES
The prior art references relied upon by the Examiner are:
Hambitzer
Masataka
US 2007/0065714 A1
JP 2002-352801
Mar. 22, 2007
Dec. 6, 2002

REJECTION
The Examiner rejects claims 20, 21, 39–41, and 49–60 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Hambitzer in view of
Masataka. Final Act. 4.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s § 103 rejection for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
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Claim 20
In rejecting claim 202, the Examiner finds Hambitzer teaches a
rechargeable battery having the recited structural components including a
housing, positive and negative electrodes, an active metal and a conductive
salt thereof, and a sulfur dioxide electrolyte. Final Act. 4 (citing various
portions of Hambitzer). Appellant does not dispute these findings. Compare
id., with Appeal Br. 6–18.
With regard to the remaining limitation, namely “a total quantity of
oxygen contained in compounds which are able to react with sulfur dioxide
in a reaction by which the sulfur dioxide is reduced of not more than 10
mMol per Ah theoretical charge capacitance of the rechargeable
electrochemical battery cell,” the Examiner finds that the Specification
describes a battery with the inclusion of an aluminum oxide barrier to
achieve this recited function. Final Act. 5–6 (citing Specification pp. 18–19).
Appellant does not dispute this finding. Compare id., with Appeal Br. 15–
16. The Examiner then finds Masataka describes a prior art battery having an
aluminum oxide barrier which is undisputed. Compare Final Act. 6, with
Appeal Br. 6–18. Based on the undisputed structural identity between the
recited apparatus and the combined prior art teaching, the Examiner finds
that a skilled artisan would combine the prior art teachings to arrive at the
recited battery having the recited function. Final Act. 5 (citing Masataka ¶ 4

2 Appellant does not present separate arguments for the obviousness
rejections of claims 21, 39–41, 50, 51, and 53–60. See, e.g., Appeal Br. 18.
The obviousness rejections of claims 21, 39–41, 50, 51, and 53–60 therefore
stands or falls with that of claim 20. See id.; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
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stating the goal to “improve[] output characteristics of a charge-discharge
cycle characteristic” as the reason to combine).
Appellant raises multiple arguments that the Examiner reversibly
erred in rejecting claim 20. From the outset, we emphasize that “apparatus
claims cover what a device is, not what a device does.” Hewlett-Packard Co.
v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Appellant’s
arguments do not structurally distinguish the prior art and are therefore
unpersuasive. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974)
(“[T]erms [that] merely set forth the intended use for, or a property inherent
in, an otherwise old composition . . . do not differentiate the claimed
composition from those known in the prior art.”). “Where . . . the claimed
and prior art products are identical or substantially identical . . . the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. . . . [The]
fairness [of the burden-shifting] is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art products.” In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellant has not presented such
rebuttal evidence. We analyze each argument in detail below.
Appellant first argues that the Examiner reversibly erred because “the
Examiner does not address disturbing oxides present on or in Hambitzer’s
positive electrode” and “does not address any disturbing oxides that may be
present in the Hambitzer electrolyte.” Appeal Br. 11. Appellant argues that
the Examiner’s “modification does not address the positive electrode or the
electrolyte, which are also significant sources of disturbing oxides.” Id. As
the Examiner points out and Appellant acknowledges, claim 20 is an
open-ended claim reciting that the “compounds . . . are on or in the positive
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electrode, the negative electrode, and/or the electrolyte” without restricting
the compounds to be located on the positive electrode, negative electrode, or
the electrolyte. Final Act. 9; Appeal Br. 12.
Appellant’s argument is therefore unpersuasive because it is not
commensurate in scope with the apparatus claim limitation whose functional
limitation does not require a particular source of disturbing oxide.
Appellant’s speculative statement that “other sources of disturbing oxides,
which may, individually or in combination, exceed 10 mMol per Ah
theoretical charge capacitance of the cell” (Appeal Br. 11) is unsupported
by evidence and unpersuasive. See Johnston v. IVAC Corp., 885 F.2d 1574,
1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”).
Appellant’s argument is also unpersuasive as it does not structurally
distinguish the prior art. “[W]hen[, as here,] the prior art evidence
reasonably allows the PTO to conclude that a claimed feature is present in
the prior art, the evidence ‘compels such a conclusion if the applicant
produces no evidence or argument to rebut it.’” In re Crish, 393 F.3d 1253,
1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir.
1990)).
Appellant contrasts the prior art teaching by arguing that Appellant
“discloses a method of heat-treating a graphite negative electrode to reduce
the quantity of disturbing oxide.” Appeal Br. 13. Claim 20, however, is an
apparatus claim and this argument is therefore unpersuasive because it is not
based on the claim language.
Appellant then argues that the aluminum oxide coating in Masataka
does not completely cover the electrode. Appeal Br. 14. This argument is not
persuasive because it is not commensurate in scope with claim 20 which
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does not require the electrode to be completely covered by a barrier layer.
Appellant then speculates that the Masataka electrode “is likely comprised
of a substrate that has a high concentration of disturbing oxides with a partial
coating of metal film” and that “[i]t is doubtful that an incomplete metal
oxide coating, like the one taught by Masataka, would prevent the reaction.”
Id. Such “[a]ttorneys’ argument is no substitute for evidence.” Johnston,
885 F.2d at 1581. Moreover, because of “the PTO’s inability to manufacture
products or to obtain and compare prior art products,” Best, 562 F.2d at
1255, Appellant must provide evidence to show the purported difference in
functionality between the prior art and the recited apparatus — which
Appellant fails to do here.
Appellant next argues that a skilled artisan would not have combined
Hambitzer and Masataka because the electrolyte in Hambitzer is SO2 based
whereas the electrolyte in Masataka is organic based. Appeal Br. 14. As the
Examiner points out, however, “Masataka’s teachings are not confined to
specific electrolyte system they are taught as generally improving capacity
of the negative electrode of lithium batteries.” Ans. 16 (citing Masataka
¶ 32). Moreover, all of the features of the secondary reference need not be
bodily incorporated into the primary reference and the skilled artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Appellant’s argument
is unsupported by evidence (e.g., data, scientific reasoning, etc.) to show that
it is beyond a skilled artisan’s skill to apply the combined teachings of the
references to arrive at the apparatus recited in claim 20. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
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improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Appellant, in fact, acknowledges that “Hambitzer and Masataka agree
that a passivation layer forms on the negative electrode during the first
charging and they agree that the formation of the passivation layer is the
cause of initial capacity degradation.” Appeal Br. 15. Appellant’s argument
that a skilled artisan would not combine the references because the
references “disagree about how to resolve the problem on a fundamental
level” is not persuasive. Id. Obviousness does not require prior art references
to recognize or even suggest the problem that applicant attempted to solve.
Prior art does not have to teach combining references for the reason that
Applicant combined them. In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir.
1990). Appellant’s argument is unpersuasive as it does not identify
reversible error in the Examiner’s reasoning that all the recited structures are
known and a skilled artisan would have combined the known structures
“according to their established functions.” KSR, 550 U.S. at 417; Final Act.
4–5.
Moreover, Appellant argues that Hambitzer “teaches to purposefully
form the passivation layer” whereas Masataka teaches to eliminate the
passivation layer. Appeal Br. 15. As Appellant recognizes, however, both
references “agree that the formation of the passivation layer is the cause of
initial capacity degradation.” Id. at 15; Hambitzer ¶ 70 (noting “a problem
which results from the formation of a cover layer on the negative
electrode”). Hambitzer provides that the problem may be solved by
“transferring the active metal required for forming the cover layer from a
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reserve supply to one of the electrodes.” Id. Appellant further acknowledges
that Hambitzer uses “an auxiliary electrode” in addition to an electrode
between which “active metal is to be transferred.” Appeal Br. 15; Hambitzer
¶ 73. Appellant’s argument does not sufficiently explain why a skilled
artisan would not have combined the prior art structures based on the known
functions of these structures.
Appellant next argues that the Examiner engaged in impermissible
hindsight in rejecting the claim. More specifically, Appellant argues that the
Examiner’s reference to the Specification for the aluminum oxide barrier is
such an impermissible hindsight reconstruction. Appeal Br. 16. Appellant
argues that “[w]ithout the benefit of Applicant’s teachings, the phenomenon
of disturbing oxides’ reduction of SO2 is totally hidden.” Id. We again
emphasize that claim 20 recites an apparatus and the Examiner’s finding that
all the recited structural components are known is undisputed. Appellant’s
argument that the recited function is only explicitly explained in the
Specification does not patentably distinguish the prior art structure for “the
patentability of apparatus or composition claims depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
Appellant lastly argues that “the inherency theory is in the context of
obviousness and the threshold burden for applying inherency to establish
obviousness is high.” Appeal Br. 17. We again emphasize that where, as
here, “the claimed and prior art products are identical or substantially
identical . . . the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. Whether the rejection is based on ‘inherency’ under 35
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U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.” Best, 562 F.2d at 1255. Appellant’s argument here
repeats the arguments previously addressed and is unpersuasive for the
reasons provided supra. Appeal Br. 18 (arguing that “the Examiner fails to
consider all sources of disturbing oxides in the Hambitzer” and that
“Masataka does not teach complete coverage of the anode with the
aluminum oxide layer”).
Claims 49 & 52
Appellant acknowledges that independent claims 49 and 52 do not
recite the limitation in claim 20 “wherein the compounds which are able to
react with sulfur dioxide are on or in the positive electrode, the negative
electrode, and/or the electrolyte.” Appeal Br. 12. Unlike claim 20, which
requires the compounds to be present in any of the positive electrode, the
negative electrode, the electrolyte, or a combination thereof, claims 49 and
52 do not limit the compounds to be present in any particular part of the
apparatus. Appellant’s argument with regard to disturbing oxygen on the
positive electrode in Hambitzer (id. at 11) is therefore not commensurate in
scope with the claims 49 and 52. The Examiner finds that the structural
components recited in apparatus claims 49 and 52 are known in the art and
Appellant does not dispute this finding. Compare id., with Final Act. 4–5.
Appellant does not present evidence to rebut the structural identity and to
show that the functions recited in claims 49 and 52 are not present in the
prior art structure. Appeal Br. 6–18; see In re Crish, 393 F.3d at 1259
(“[W]hen[, as here,] the prior art evidence reasonably allows the PTO to
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conclude that a claimed feature is present in the prior art, the evidence
‘compels such a conclusion if the applicant produces no evidence or
argument to rebut it.’”). We therefore sustain the rejection.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
20, 21, 39–
41, 49–60
103(a) Hambitzer,
Masataka
20, 21, 39–
41, 49–60

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED