Karim Zaghib et al.

Patent Trials and Appeals BoardAug 9, 2019

13724058 - (R) (P.T.A.B. Aug. 9, 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. 13/724,058 12/21/2012 KARIM ZAGHIB 1022942-000018 9520 21839 7590 08/09/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER ARCIERO, ADAM A ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 08/09/2019 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KARIM ZAGHIB, MARTIN DONTIGNY, MICHEL PETITCLERC, and MICHEL GAUTHIER ____________ Appeal 2017-009337 Application 13/724,058 Technology Center 1700 ____________ Before MARK NAGUMO, RAE LYNN P. GUEST, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In accordance with 37 C.F.R. § 41.52, Appellant timely filed a Request for Rehearing (“Req.”) of our Decision (“Dec.”), mailed April 29, 2019, affirming the Examiner’s rejection of claim 8 as unpatentable under 35 U.S.C. § 103.1 For the reasons given below, Appellant’s arguments raised in the Request do not establish that we misapprehended or overlooked 1 We affirmed the Examiner’s rejections of Appellant’s claims 1, 5, 7–9, 13– 15, 21, 23, 25–27, 31–38, 43, and 54–77. Dec. 8. Appellant’s Request for Rehearing addresses only claim 8. See generally Req. Appeal 2017-009337 Application 13/724,058 2 any point that would justify a different outcome. See 37 C.F.R. § 41.52(a)(1). The Examiner rejected claim 8 over the combined teachings of, inter alia, Visco and Laliberte. See Dec. 3. Appellant contends the Board did not appreciate the point that applying the teachings of Laliberte would have destroyed Visco’s principle of operation. Req. 4.2 Particularly, Appellant argues that the Examiner relied on Visco’s teaching of vacuum conditions to meet the recited avoidance of film surface oxidation, but relied on an omission of vacuum conditions when applying Laliberte’s teaching of using a dry air atmosphere. Id. According to Appellant, “Visco would no longer be teaching that ‘substantially no oxidation’ takes place” if the conditions recited in claim 8 are applied. Id. at 3. Appellant does not point to, and we do not find, any part of the Appeal Brief or the Reply Brief that argued Visco requires vacuum conditions to substantially avoid film oxidation. Because the point was not raised, we do not agree that it was misapprehended or overlooked. Moreover, as Appellant acknowledges, the Examiner found that Visco teaches performing lamination “at a sufficient speed” so that substantially no surface oxidation occurs. Req. 2 (quoting Final Act. ¶ 13). We do not read the Examiner’s finding as requiring vacuum conditions. Nor does Appellant present persuasive evidence or reasoning to support the contention that substantial avoidance of oxidation would not have been accomplished absent the use of vacuum conditions. Appellant points to the following statement in Visco: 2 Appellant’s Request for Rehearing is not paginated. We identify a given page by its ordered position in the Request. Appeal 2017-009337 Application 13/724,058 3 Assuming that the bonding takes place soon after the lithium sub- layers are formed and the lithium deposition and bonding takes place in a vacuum, the lithium surfaces with be clean and easy to bond. Req. 2 (quoting Visco 5:24–28). However, Appellant does not present persuasive reasoning why the above-quoted statement in Visco requires use of vacuum as prerequisite to substantially avoiding oxidation. As we stated in our Decision (Dec. 7), Visco characterizes the application of vacuum as merely preferred. Visco 6:29–35. In any event, as we explained in our Decision (Dec. 7), Appellant did not explain in the Briefs how the language of claim 8 precludes application of a vacuum. Appellant’s Request for Rehearing likewise lacks any such explanation or argument. For the foregoing reasons, Appellant’s newly submitted arguments in the Request for Rehearing neither identify nor establish any point in the appeal that we misapprehended or overlooked. Appellant’s arguments are unpersuasive of reversible error for the reasons set forth in the Decision and above. Appeal 2017-009337 Application 13/724,058 4 DECISION We deny Appellant’s request to modify our Decision affirming the Examiner’s rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED