Guo, Zhihua et al.Download PDFPatent Trials and Appeals BoardDec 6, 201914037755 - (D) (P.T.A.B. Dec. 6, 2019) Copy Citation 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. Appeal 2018-009187 Application 14/037,755 2 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 Appeal 2018-009187 Application 14/037,755 3 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). Appeal 2018-009187 Application 14/037,755 4 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 Appeal 2018-009187 Application 14/037,755 5 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 Appeal 2018-009187 Application 14/037,755 6 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 Appeal 2018-009187 Application 14/037,755 7 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 Appeal 2018-009187 Application 14/037,755 8 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 Appeal 2018-009187 Application 14/037,755 9 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 Appeal 2018-009187 Application 14/037,755 10 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 Appeal 2018-009187 Application 14/037,755 11 (“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.” Appeal 2018-009187 Application 14/037,755 12 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 Appeal 2018-009187 Application 14/037,755 13 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 Appeal 2018-009187 Application 14/037,755 14 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. Appeal 2018-009187 Application 14/037,755 15 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 Copy with citationCopy as parenthetical citation