Schott AG

Patent Trials and Appeals Board

Nov 24, 2021

2020005508 (P.T.A.B. Nov. 24, 2021)

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.
15/899,137 02/19/2018 Dieter Goedeke AKL0045.CON 1532
41863 7590 11/24/2021
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
WEI, ZHONGQING
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
11/24/2021 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):
mbrady@taylorip.com
patent@taylorip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIETER GOEDEKE and LINDA JOHANNA BACKNAES
____________

Appeal 2020-005508
Application 15/899,137
Technology Center 1700
____________

Before JENNIFER R. GUPTA, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, 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 finally reject claims 1–26. We have jurisdiction
under 35 U.S.C. § 6(a).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Schott AG as the real party in
interest. Appeal Br. 3.
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The invention relates generally to “a glass and by association to a
glass composition, in particular a solder glass as well as to a feed-through
for a storage device, such as a lithium-ion battery, for example a lithium-ion
accumulator.” Spec. ¶ 2. Claim 1, reproduced from the Claims Appendix to
the Appeal Brief, illustrates the invention (formatting added):
1. A feed-through, comprising:

a glass having a composition including in mole percent
(mol-%):

P2O5 35–50 mol-%;

Al2O3 4.2–14 mol-%;

B2O3 2–10 mol-%;

Na2O 15–30 mol-%;

M2O 12–20 mol-%, wherein M is one of
potassium, cesium and rubidium;

Li2O 0–42 mol-%;

BaO 0–20 mol-%; and

Bi2O3 1–10 mol-%.

Appeal Br. 27 (Claims App.).
Independent claim 22 recites a device comprising the feed-through
claim 1 recites.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated August 6, 2019:

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I. claims 1, 2, 4, 5, and 7–26 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Lasater (US 2003/0134194 A1, published July
17, 2003) and Li (CN 101597136 A, published December 9, 2009, and
relying on an English Machine translation dated September 14, 2018); and

II. claims 3 and 6 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Lasater, Li, and Kasuga (US 7,157,391 B2, issued January
2, 2007).
In addition, the Examiner maintains the following rejections from the
Examiner’s Final Office Action:2
III. claim 17 rejected on the basis that it contains an improper
Markush grouping of alternatives;

IV. claims 1–4 and 6–26 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1–10, 12–19, and
24–33 of copending Application No. 13/968,044;

V. claims 1–4 and 6–26 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1, 18–23, and 32–
37 of copending Application No. 13/968,541;

VI. claims 1–26 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1–6, 12, 13, 16,
17, 22–34, and 41–50 of Kroll (US 9,799,860 B2, issued October 24, 2017);

VII. claims 1–4 and 6–26 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1–6, 12, 13, 16,
17, 22–34, and 41–50 of Kroll (US 9,539,665 B2, issued January 10, 2017);

VIII. claims 1–4 and 6–26 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1, 28–32, and 60
of Kroll (US 9,527,157 B2, issued December 27, 2016);

2 The provisional rejections on the ground of nonstatutory double patenting
over copending Application No. 15/903,442 and copending Application No.
13/966, 959 are moot because the noted copending Applications are now
abandoned according to USPTO records.
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IX. claims 1–26 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1, 15–19, 28, and
35–37 of Kroll (US 9,616,518 B2, issued April 11, 2017); and

X. claims 1–4 and 6–26 provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1 and 6 of Kroll
(US 10,224,521 B2, issued March 5, 2019).

OPINION
Rejections I and II
For Rejection I, Appellant presents arguments only for claim 1 and
relies on these arguments to address the rejection of the remaining claims.
See generally Appeal Br. While Appellant presents arguments for Rejection
II (claims 3 and 6) under a separate header, this line of arguments is
substantially the same as the arguments presented for claim 1. Accordingly,
we select claim 1 as representative of the subject matter claimed and decide
the appeal as to all grounds of rejections based on the arguments presented
for claim 1.
After review of the respective positions of Appellant and the
Examiner, we affirm the Examiner’s rejections of claims 1–26 under 35
U.S.C. § 103(a) for essentially the reasons the Examiner presents. We add
the following for emphasis.
Claim 1
Claim 1 recites a feed-through comprising a lead-free glass
composition.
The Examiner finds Lasater teaches a feed-through that differs from
the claimed invention in that Lasater does not teach the use of a lead free
glass material. Final Act. 5; Lasater Abstr., Figure 1, ¶¶ 15, 17. Appellant
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does not dispute the Examiner’s specific findings with respect to Lasater.
Appeal Br. 11; Final Act. 5. Instead, in addressing this reference, Appellant
asserts that Lasater only teaches modifying the disclosed glass material by
providing up to 50 mol percent MgO, as disclosed by U.S. Pat Nos.
5,965,469 and 6,037,539. Appeal Br. 11; Lasater ¶ 26.
The Examiner turns to Li for the missing feature. The Examiner finds
Li teaches a lead free glass material comprising the claimed components in
amounts that overlap or lie inside the claimed ranges of amounts for the
respective components. Final Act. 5–6; Li 4, 5, 10, 11, claims 1 and 2. The
Examiner further finds Li teaches using the disclosed glass material as a
sealing glass for a glass-to-metal seal. Final Act. 5; Li 2–3. With respect to
the claimed glass material, the Examiner determines that a prima facie case
of obviousness exists for the composition in view Li’s disclosed material.
Final Act. 6. The Examiner further determines that it would have been
obvious to one of ordinary skill in the art to substitute Lasater’s glass sealing
material with Li’s glass material for the benefit of achieving a lead-free
glass-to-metal seal, as taught by Li. Final Act. 5; Li 3.
Appellant argues Li describes a glass for use in low-temperature
packaging among different electronic components and does not teach the
disclosed glass is chemically stable against lithium-ion battery chemistry.
Appeal Br. 12. Appellant further argues the Examiner has not shown that
one skilled in the art would have reasonably believed the glass taught by Li
to be suitable for use in the feed-through of Lasater. Appeal Br. 19–21.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents. Ans. 6.
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Moreover, both Appellant and Lasater are concerned with using a
sealing material that seals at a temperature below the melting point of feed-
throughs made from high thermal expansion materials such as aluminum
(melting temperature of more than 550 oC). Spec. ¶¶ 7, 21; Lasater Abstr.,
¶ 8. As Appellant recognizes, Li teaches a glass seal that seals at 420–
470 oC. Appeal Br. 17; Li 4. In addition, as the Examiner finds, Li discloses
using the glass sealing material “to seal the connection between the glass
components and the metal. . .” Ans. 6; Li 2–3. Further, Li expects the
temperature of this sealing material to be as low as possible to avoid
damaging the electrical components or electronics (utensils). Li 3.
In view of the above disclosures, there is a reasonable basis for one
skilled in the art to have modified Lasater’s feed-through by replacing
Lasater’s glass sealing material with Li’s sealing material and reasonably
expect that Li’s material would be suitable for Lasater’s purposes. In re
O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.”); see also
KSR, 550 U.S. at 417 (explaining that patentable subject matter must
“involve more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for
the improvement”). Thus, Appellant fails to explain why one skilled in the
art, using no more than ordinary creativity, would not have been capable of
arriving at the claimed invention from the teachings of the cited art. See
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in
the art).
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Appellant argues Li, when read as a whole, teaches that the content of
the additives in the glass composition does not exceed 30 mol-% of the total
component content of this composition. Appeal Br. 12; Li 4. According to
Appellant, there is nothing in Li that suggests the 30 mol-% limit on
additives is optional or preferred when additives are included. Appeal Br.
12. Appellant further argues Li’s Tables 1 and 2 (appended to the Appeal
Brief as Appendices A and B, respectively) show Li teaches non-additive
components to be at least 70 % and, thus, the sum of all additive components
30% or less. Appeal Br. 13.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents. Ans. 7.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
See also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that
a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom).
Appellant misapprehends Li’s disclosure regarding the 30 mol-% limit
on additives in asserting that this limit is not optional or preferred. By virtue
of using the word “preferably” to open the paragraph, one skilled in the art
would have reasonably inferred that Li is discussing some preferred
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embodiments. Given the statement disclosing the total content of the
additive components does not exceed 30 mol-% of the total glass component
content is associated with the discussion of these preferred embodiments,
one skilled in the art would have also reasonably inferred that this feature is
directed to those preferred embodiments. While Appellant directs our
attention to Li’s Tables 1 and 2 to assert that the reference teaches additive
components in exemplary glass compositions to be 30 mol-% or less of the
total glass composition, it is well settled that a reference may be relied upon
for all that it discloses and not merely the preferred embodiments. See
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“[A]ll disclosures of the prior art, including unpreferred embodiments, must
be considered.”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976));
see also In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining
that a prior art reference’s disclosure is not limited to its examples). The
disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure or non-preferred embodiments. In re Susi,
440 F.2d 442, 446 n.3 (CCPA 1971). Appellant fails to explain adequately
why Li’s noted disclosure and exemplary embodiments limit the broader
disclosure of the reference. Therefore, we decline to limit Li’s teachings and
suggestions to Li’s exemplary embodiments.
We have considered Appellant’s arguments with respect Li as only
teaching a subgenus that incorporates no more than 30 mol-% of “additive
components” and that Li teaches away from the claimed invention. Appeal
Br. 13–14, 16. However, the underlining basis for these arguments is
Appellant contention that Li requires the total additives amount to be no
more than 30 mol-% of the total glass composition. Id. As we discuss
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above, Appellant’s contention is unsupported by the record. Therefore,
these arguments fail to identify error in the Examiner’s determination of
obviousness for the reason the Examiner presents (Ans. 7, 12) and we give
above.
Appellant argues that the Specification points to evidence of
unexpected results as follows:
“[t]he inventive glass compositions surprisingly show a high
chemical stability relative to the non-aqueous electrolyte and at
the same time a high thermal coefficient of expansion.”
(emphasis added). As further described, “[t]his is surprising
especially because it is assumed that the glass becomes
increasingly unstable the higher the thermal coefficient.” The
paragraph concludes, “[i]t is therefore surprising that in spite of
the high coefficient of expansion and the low sealing
temperature the inventive glass compositions offer a sufficient
stability.”

Appeal Br. 23 (citing to ¶ 69 of Appellant’s published application, which
corresponds to ¶ 51 of the instant Application). According to Appellant, the
cited references do not counter these surprising results. Appeal Br. 23.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art is an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant must establish the unexpected results with factual
evidence; attorney statements are insufficient to establish unexpected results.
See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a
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showing of unexpected results with evidentiary support must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); see also In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
After consideration of Appellant’s evidence, we agree with the
Examiner’s analysis that the evidence is insufficient to show
nonobviousness. Ans. 16.
As the Examiner explains, Appellant does not point to objective
evidence in the Specification that supports the contention of unexpected
results. Ans. 16. Appellant’s attorney arguments cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979).
However, even if we consider the evidence provided in Tables 1 and 2
of the Specification (Spec. ¶¶ 63, 75), Appellant has not established that this
evidence compares the inventive glass sealing composition to the closest
prior art. Therefore, Appellant has not established sufficiently that evidence
in the Specification is sufficient evidence of nonobviousness.
Thus, on this record, Appellant has not explained adequately why one
of ordinary skill in the art would have found the evidence relied upon
unexpected or why that evidence is reasonably commensurate in scope with
the claims.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–26 under 35 U.S.C. § 103(a) for the reasons the Examiner presents and we
give above.
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Rejections III–X
Appellant does not present arguments for Rejections III–X in the
Appeal or Reply Briefs.
Accordingly, we summarily sustain each of the Examiner’s Rejections
III–X. See Manual of Patent Examining Procedure (MPEP) § 1205.02
(2017) (“If a ground of rejection stated by the examiner is not addressed in
the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.”); see also Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to
present arguments on a particular issue—or more broadly, on a particular
rejection—the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.”).

CONCLUSION
The Examiner’s prior art Rejections I and II are affirmed.
The Examiner’s uncontested Rejections III–X are summarily
affirmed.

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DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7–
26
103 Lasater, Li 1, 2, 4, 5, 7–
26

3, 6 103 Lasater, Li, Kasuga 3, 6
17 Improper Markush
Group
17
1–4, 6–26 Provisional
Obviousness-type
Double Patenting
1–4, 6–26
1–4, 6–26 Provisional
Obviousness-type
Double Patenting
1–4, 6–26
1–26 Provisional
Obviousness-type
Double Patenting
1–26
1–4, 6–26 Provisional
Obviousness-type
Double Patenting
1–4, 6–26
1–4, 6–26 Provisional
Obviousness-type
Double Patenting
1–4, 6–26
1–26 Provisional
Obviousness-type
Double Patenting
1–26
1–4, 6–26 Provisional
Obviousness-type
Double Patenting
1–4, 6–26
Overall
Outcome
1–26

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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)(1)(iv).

AFFIRMED