Guo, Zhihua et al.

Patent Trials and Appeals Board

Dec 6, 2019

14037755 - (D) (P.T.A.B. Dec. 6, 2019)

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.
14/037,755 09/26/2013 Zhihua Guo 8096 3504
29602 7590 12/06/2019
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
MCCONNELL, WYATT P
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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):
lavoie@jm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIHUA GUO, SOUVIK NANDI, JAWED ASRAR, and
ALBERT G. DIETZ III
Appeal 2018-009187
Application 14/037,755
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
LILAN REN, Administrative Patent Judges.
TIMM, 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 1, 2, 7–10, 12, 15–18, and 20–29,
which constitute all the claims pending in this application. See Final Act. 1.
Claims 3–6, 11, 13, 14, and 19 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Johns Manville.
Appeal Br. 3.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a lead-acid battery (see, e.g., claim 1), a
separator for a lead-acid battery (see, e.g., claim 10), and a method of
making a separator for a lead-acid battery (see, e.g., claim 20).
According to the Specification, the separator includes a nonwoven
fiber mat including glass fibers coated with an acrylic based binder. Spec.
¶¶ 2, 20, 30. The acrylic based binder includes a polymer component
comprising a functional group that increases the wettability of the nonwoven
fiber mat. Spec. ¶ 2. Thus, Appellant’s separator exhibits increased
acidophilicity, increased hydrophilicity, or both. Spec. ¶ 2. The wettability is
quantified using a contact angle measurement, specifically, the measurement
of the contact angle of a 33 wt.% sulfuric acid solution on the mat. Spec. ¶ 2.
The wettability must be such that the contact angle is 70° or less. Claims 1,
10, 20.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A lead-acid battery comprising:
a positive plate or electrode;
a negative plate or electrode; and
a separator disposed between the positive plate and the
negative plate to electrically insulate the positive and negative
plates, the separator comprising:
a microporous polymer membrane; and
at least one nonwoven fiber mat that is positioned
adjacent the microporous polymer membrane so as to reinforce
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the microporous polymer membrane, the nonwoven fiber mat
including:
a plurality of glass fibers;
an acrylic based binder that couples the plurality of glass
fibers together to form the nonwoven fiber mat, the acrylic
based binder including consisting of:
a polymer component comprising a functional group
selected from the group a carboxyl group (COOH);
a carbonyl group (=O, aldehydes and ketones);
an amino group (NH2);
a sulfhydryl group (-SH); and
a phosphate group (-PO4);
wherein the functional group is coupled with a polymer
backbone of the acrylic based binder, and
wherein the acrylic based binder is applied to the
plurality of glass fibers and cured so as to form a
polymer/binder coating atop the plurality of glass fibers such
that the polymer component interacts with water or an
electrolyte of the lead-acid battery to increase a wettability of
the nonwoven fiber mat by the polymer/binder coating forming
a contact angle with a 33 wt.% sulfuric acid solution of 70° or
less,
the acrylic based binder comprises 0.01 % to 10% by
weight of the functional group.
Appeal Br. 14 (Claims Appendix) (formatting added).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Choi
Zucker
Clement
US 2002/0165291 A1
US 2003/0054236 A1
US 2011/0318643 A1
Nov. 7, 2002
Mar. 20, 2003
Dec. 29, 2011

REJECTIONS
The Examiner maintains the following rejections.
A. Claims 1, 2, 7–10, 12, 15–18, and 20–29 are rejected under 35
U.S.C. § 112(a) as lacking enablement.
B. Claims 1, 2, 7–10, 12, 15–18, and 20–29 are further rejected under
35 U.S.C. § 112(a), as failing to comply with the written
description requirement.
C. Claims 1, 2, 7, 8, 10, 12, 15, 16, 18, and 20–29 are rejected under
35 U.S.C. § 103 as being unpatentable over Clement in view of
Zucker and Choi.
OPINION
Enablement
“Although not explicitly stated in section 112, to be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without undue experimentation.”
In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). Whether undue
experimentation is required is a conclusion reached by weighing many
factual considerations. In re Wands, 858 F.2d 731, 736–37 (Fed.Cir.1988).
Factors to be considered include: (1) the quantity of experimentation
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necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Id. These factors are illustrative, not mandatory. Streck, Inc. v. Research &
Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012).
The burden on the Examiner in the first instance is to “advance
acceptable reasoning inconsistent with enablement.” In re Strahilevitz, 668
F.2d 1229, 1232 (CCPA 1982). “Thereupon, the burden would shift to
appellant to show that one of ordinary skill in the art could have practiced
the claimed invention without undue experimentation.” Id.
In rejecting claims 1, 2, 7–10, 12, 15–18, and 20–29 under 35 U.S.C.
§ 112(a) as lacking enablement, the Examiner determines that undue
experimentation would have been required based on an analysis of the
Wands factors. Final Act. 3–9.
Appellant contends that undue experimentation would not have been
required and relies on a declaration by Karash Alavi, Senior Research
Manager at Johns Mansville (Alavi Decl.) to support the contention. Appeal
Br. 5–18; Reply Br. 2–5.
After weighing the evidence relied on by the Examiner and Appellant,
we determine that a preponderance of the evidence supports Appellant’s
contention that undue experimentation would not be necessary to formulate
polymer/binder coatings having the contact angle of the claims.
Claim Breadth
The Examiner begins with an analysis of the claim breadth. Final Act.
3–4. According to the Examiner, the claims provide little guidance regarding
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what is needed to achieve the contact angle property for a 33 wt.% sulfuric
acid solution on the polymer/binder coating of the mat. Id. The Examiner
appears particularly concerned with the breadth of the terms “polymer
component” and “comprising,” which the claims use in limiting the acrylic
based binder that is cured to form the polymer/binder coating. Ans. 13. It is
the coating that must interact with the 33 wt.% sulfuric acid solution to
achieve the 70° or less contact angle. Thus, we begin by considering the
scope of polymer/binder coating encompassed by the broadest claims, i.e.,
claims 1, 10, and 20.
The claims limit the polymer/binder coating to coatings formed from
an acrylic based binder including a polymer component comprising a
functional group selected from a group of five moieties: (1) a carboxy group,
(2) a carbonyl group, (3) an amino group, (4) a sulfhydryl group, and (5) a
phosphate group. The functional group must be coupled with a polymer
backbone of an acrylic based binder. The acrylic based binder must
comprise 0.01% to 10% by weight of the functional group. And the resulting
polymer/binder coating must have the contact angle property of 70° or less
recited in claim 1.
Although the term “polymer component” allows for chemical moieties
other than the functional group, the resulting acrylic based binder must still
have both the functional group and the contact angle property of 70° or less.
Thus, the polymer component moieties that are in addition to the functional
group are limited by the contact angle property.
The claims further require the functional group be “coupled with a
polymer backbone of the acrylic based binder.” We read this limitation in a
manner consistent with the Specification, which describes chemical coupling
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in which the functional groups are added by copolymerizing the functional
group containing monomer with another monomer, and describes an
alternative process of grafting the functional groups onto a previously
formed polymer. Spec. ¶ 20 (describing (1) copolymerizing acrylic acid or
maleic anhydride monomer (functional group containing polymer
component) with methyl methacrylate, (2) describing an alternative
embodiment of copolymerizing acrylic acid (functional group containing
polymer component) and ethylene to form ethylene-acrylic acid, and (3)
disclosing grafting the functional groups onto an already formed polymer
such that the functional groups are “not a part” of “the polymer backbone”
of the acrylic-based binder, which we interpret as meaning the functional
groups are present in side chains on the polymer backbone).
Although an acrylic polymer made from only acrylic monomers (e.g.,
Spec. ¶ 20) would necessarily have an ethylenic backbone (i.e., a chain
having —C—C— backbone), the terminology “acrylic based binder” is
broader in scope than an acrylic polymer made from only acrylic monomers.
That being said, the resulting binder polymer must be an acrylic based
binder, i.e., it must have an acrylic-based chemistry. Moreover, the claim
requires the polymer/binder coating result in the required contact angle.
Guidance and Working Examples in the Specification
We find no general guidance on how to select the polymer component
so the polymer/binder coating has a contact angle within the range of 70° or
less. However, the examples discussed above provide some guidance to the
ordinary artisan on how to make acrylic based binders. Specifically, in the
first example, the Specification describes incorporating carboxyl functional
groups into a polymer backbone by copolymerizing acrylic acid or maleic
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anhydride monomer with methyl methacrylate monomer. Spec. ¶ 20. In the
second example, the functional groups are incorporated into a polymer
backbone by copolymerizing acrylic acid with ethylene to form ethylene-
acrylic acid. Id. The Specification states that “different techniques are
available to graft desirable functional groups to a polymer and a grafted co-
polymer is obtained.” Id. The Specification thus implies that grafting
techniques were known in the art.
The Specification also describes an embodiment using “an acrylic
copolymer with some self-crosslinking components” to which hydrophilic
functional groups can be added or grafted to form polyacrylic acid based
binders that “typically have much lower contact angles in both water and
sulfuric acid than conventional binders.” Spec. ¶ 30.
Nature of the Invention, State of the Prior Art, and Predictability of
the Art, and Relative Skill in the Art
Appellant need not include in the written description that which is
already known and available to one of ordinary skill in the art. In re
Howarth, 654 F.2d 103, 105 (CCPA 1981). Thus, we consider the factors
relating to the knowledge in the art and what that knowledge would have
suggested to the ordinary artisan.
There is no dispute about the nature of the invention. The invention
relates to composite battery separators for use in lead-acid batteries.
Compare Final Act. 4, with Appeal Br. 5–18, and Reply Br. 2–5.
Nor is there any dispute about the state of the prior art, which teaches
various ways of ensuring separator mats are sufficiently hydrophilic such as
by including hydrophilic binders and graft polymerizing acrylic acid or the
like onto surfaces of hydrophobic polyolefin fibers to make their surfaces
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hydrophilic. Compare Final Act 4–5, with Appeal Br. 5–18, and Reply Br.
2–5; see also Clement ¶¶ 17, 41 (describing a mat of coated fiber sheet
containing glass fibers coated with an acrylic polymer binder) and ¶ 23
(describing the mat as “‘hydrophilic’ in that it has a good capacity for
absorbing the liquid electrolyte, i.e., for filling all its pores”); Zucker ¶¶ 6–7
(discussing absorptive glassmat (AGM) batteries with high porosity and
good wettability that results in the electrolyte being completely absorbed in
the glass mat) and ¶¶ 28–32 (describing a mat containing a mixture of glass
fibers and polymeric fibers where polymeric fibers have hydrophilic groups
covalently bonded to the polymeric fiber surfaces to render the fibrous layer
wettable); Choi ¶ 3 (describing grafting hydrophobic polyolefin sheets with
acrylic acid or the like to make the surface hydrophilic and thus suitable as
battery separators).
Appellant and the Examiner dispute the level of ordinary skill in the
art. Compare Final Act. 5, with Appeal Br. 7. The Examiner determines the
ordinary artisan “has at least an undergraduate degree in materials science,
chemistry, chemical engineering or a related field, and is familiar with
methods of manufacturing composite materials for use in lead-acid
batteries.” Final Act. 5. Appellant points to the Alavi Declaration as
evidence that the ordinary artisan would have had a Ph.D in chemistry.
Appeal Br. 7. Neither the Examiner nor Alavi cite to evidence to support
their positions.
Under the circumstances, we look to the prior art references to help
evince the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995) (holding the Board did not err in determining
the level of skill in the art was best determined by appeal to the references of
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record); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004) (“[T]he Board is entitled to weigh the declarations and conclude that
the lack of factual corroboration warrants discounting the opinions expressed
in the declarations.”); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir.
2003) (“In giving more weight to prior publications than to subsequent
conclusory statements by experts, the Board acted well within [its]
discretion.”).
The prior art evinces a level of skill in the art such that the ordinary
artisan understood how to render binder coatings hydrophilic using
hydrophilic groups such as carboxyl groups. Alavi declares that the ordinary
artisan would have been able to produce an acrylic based acid resistant
binder that forms a 70° or less contact angle. Decl. ¶ 8.
There is no dispute that the prior art does not discuss the contact angle
property of the mat. Compare Final Act. 5, with Appeal Br. 5–18, and Reply
Br. 2–5. However, the evidence indicates it was known in the art how
hydrophilic functional groups affect the hydrophilic properties and, thus the
contact angle, of the resulting coating.
Based on the above, we determine that a preponderance of the
evidence supports Appellant’s contention that undue experimentation would
not have been required. Given the knowledge within the prior art regarding
the effect of hydrophilic functional groups on hydrophilicity, wetting, and
the associated property of contact angle, the preponderance of the evidence
indicates that only routine experimentation would have been necessary to
arrive at the acrylic based binders that would result in coatings having the
necessary contact property of 70° or less. Wands, 858 F.2d at 736–37
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(“Enablement is not precluded by the necessity for some experimentation
such as routine screening.”).
Thus, we do not sustain the Examiner’s rejection of claims 1, 2, 7–10,
12, 15–18, and 20–29 under 35 U.S.C. § 112(a) as lacking enablement.

Written Descriptive Support
Claims 1, 2, 7–10, 12, 15–18, and 20–29 are further rejected under 35
U.S.C. § 112(a), as failing to comply with the written description
requirement. Final Act. 9. As pointed out by the Examiner, “the written
description requirement is separate and distinct from the enablement
requirement, and examination of claims with respect to each of these
requirements involves a separate and distinct analysis.” Final Act. 9–10; see
also Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1341 (Fed. Cir.
2010) (en banc) (“this court has consistently held that § 112, first paragraph,
contains a written description requirement separate from enablement, and we
have articulated a fairly uniform standard, which we now affirm.”). As
further stated in Ariad, “the description must clearly allow persons of
ordinary skill in the art to recognize that the inventor invented what is
claimed.” Id. “In other words, the test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Id.
Appellant contends that the Specification satisfies the written
description requirement because the Specification “enables one [of] ordinary
skill in the art to practice the invention without undue experimentation.”
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Appeal Br. 10. However, that is the standard for enablement, not written
descriptive support.
Thus, Appellant has not identified a reversible error in the Examiner’s
finding of lack of support, which is based on a finding that the written
description fails to reasonably convey that Appellant had possession of the
claimed genus of polymer/binder coatings having the required contact angle
property. Final Act. 9–11; Ans. 15.
A preponderance of the evidence supports the Examiner’s finding of
lack of written descriptive support. Thus, we sustain the Examiner’s
rejection of claims 1, 2, 7–10, 12, 15–18, and 20–29 under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.

Obviousness
The Examiner also rejects claims 1, 2, 7, 8, 10, 12, 15, 16, 18, and 20–
29 under 35 U.S.C. § 103 as being unpatentable over Clement in view of
Zucker and Choi. Final Act. 11–12.
There is no dispute that Clement teaches a separator made by applying
an acid resistant acrylic polymer binder emulsion to a nonwoven mat and
curing to create a binder polymer layer on top of the fibers. Compare Final
Act. 12, with Appeal Br. 10–12. Nor is there any dispute that the prior art
references are silent with respect to the contact angle that will result when a
33 wt.% solution of sulfuric acid is placed on the acrylic binder coating of
the references. Compare Final Act. 12–13, with Appeal Br. 10–12, and
Reply Br. 6–7. The rejection is based on the Examiner’s finding that
Clement teaches a desire for the binder to be hydrophilic in order to limit
stratification of the electrolyte and Choi’s teaching that it was known in the
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art to improve hydrophilicity of polymer binders by grafting a carboxyl
group-containing polymer onto the polymer backbone through formation of
polyacrylic acid. Final Act. 12–13 (citing Clement ¶ 15 and Choi ¶ 3).
Clement teaches using a mat of glass microfibers and a hydrophilic
binder. Clement ¶ 17. The hydrophilic binder is preferably an acrylic based
polymer binder. Clement ¶ 23. The hydrophilic nature of the binder helps to
limit stratification of the acid within the mat. Clement ¶ 15.
Choi shows it was known in the art to render hydrophobic materials
more hydrophilic by graft polymerizing acrylic acid or the like to their
surfaces. Choi ¶ 3.
From the prior art, it is evident that those of ordinary skill in the art
understood that adding the carboxyl groups of acrylic acid to a coating to
make it more hydrophilic was known in the art. Given the similarity in
chemistry between the teachings of Clement and Choi to that of Appellant,
i.e., the use of acrylic acid to form a hydrophilic binder, and the prior art’s
desire to ensure hydrophilicity and limit stratification of the acid, i.e., to
allow acid to wet the mat uniformly, a preponderance of the evidence
supports the Examiner’s finding that following the teachings of the prior art
would have resulted in polymer/binder coatings having the contact angle
required by claim 1.
Appellant points out that “none of the references teaches or suggests
selecting a polymer/binder coating based on its contact angle to enhance the
wettability of a mat.” Appeal Br. 12. Although true, this fact does not
persuade us of reversible error in the Examiner’s conclusion of obviousness.
This is because the measurement of the contact angle is essentially a
measure of wettability with the acid and relates to the hydrophilicity of the
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binder. See Spec. ¶ 2. Given the similarity of chemistry to that of
Appellant’s binder, it is reasonable to conclude that following the teachings
of Clement or Clement in view of Choi to optimize the wettability and
hydrophilicity of the binder would result in a binder with the contact angle
property recited in claim 1. Under the circumstances, the burden shifts to
Appellant to prove otherwise. Appellant has not met that burden.
A preponderance of the evidence supports the Examiner’s conclusion
of obviousness. Thus, we sustain the Examiner’s rejection of claims 1, 2, 7,
8, 10, 12, 15, 16, 18, and 20–29 under 35 U.S.C. § 103 as being unpatentable
over Clement in view of Zucker and Choi.
CONCLUSION
The Examiner’s rejection is affirmed.
More specifically,
A. we reverse the rejection of claims 1, 2, 7–10, 12, 15–18, and 20–29
under 35 U.S.C. § 112(a) as lacking enablement;
B. we affirm the rejection of claims 1, 2, 7–10, 12, 15–18, and 20–29
under 35 U.S.C. § 112(a), as failing to comply with the written description
requirement;
C. we affirm the rejection of claims 1, 2, 7, 8, 10, 12, 15, 16, 18, and
20–29, under 35 U.S.C.§ 103 as being unpatentable over Clement in view of
Zucker and Choi.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 7–10,
12, 15–18,
20–29
112(a) Enablement 1, 2, 7–10,
12, 15–18,
20–29
1, 2, 7–10,
12, 15–18,
20–29
112(a) Written
Description
1, 2, 7–10,
12, 15–18,
20–29

1, 2, 7, 8,
10, 12, 15,
16, 18, 20–
29
103 Clement, Zucker,
Choi
1, 2, 7, 8,
10, 12, 15,
16, 18, 20–
29

Overall
Outcome
1, 2, 7–10,
12, 15–18,
20–29

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