Ex Parte Anastas et al

Patent Trial and Appeal Board

Jul 19, 2018

14041921 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/041,921 09/30/2013
62579 7590 07/23/2018
APPLE INC./BROWNSTEIN
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
FIRST NAMED INVENTOR
George V. Anastas
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl7933US1 2312
EXAMINER
SHEIKH, HAROON S
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
patentdocket@bhfs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GEORGE V. ANASTAS, GREGORY A. SPRINGER,
JACK B. RECTOR III, JOSHUA R. FUNAMURA, and
KENNETH M. SILZ
Appeal2017-008768
Application 14/041,921 1
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 11, 15-20, 23, and 24. We have jurisdiction. 35
U.S.C. § 6(b ).
We REVERSE.
1 Appellant is the Applicant, Apple Inc., which according to the Appeal
Brief, is also the real party in interest. Appeal Br. 3.
Appeal2017-008768
Application 14/041,921
STATEMENT OF THE CASE2
Appellant describes the invention as relating to packaging batteries to
reduce space required for the packaging. Spec. ,r 2. Claim 11, reproduced
below, is illustrative of the claimed subject matter:
11. A method for assembling a battery, the method
compnsmg:
coating a battery cell, including at least an anode and a
cathode, in at least one first layer of plastic such that the at least
one first layer of plastic directly contacts the anode and the
cathode;
molding at least one layer of metal around the at least one
first layer of plastic, the at least one layer of metal being liquid
or semi-liquid during the molding; and
covering the at least one layer of metal in at least one
second layer of plastic.
Appeal Br. i (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Jones us 3,655,455 Apr. 11, 1972
Manabe et al. us 4,369,225 Jan. 18, 1983
("Manabe")
Chow et al. us 5,134,046 July 28, 1992
("Chow")
Brandl et al. US 2009/0317708 Al Dec. 24, 2009
("Brandl")
Zadesky et al. US 2011/0195271 Al Aug. 11, 2011
("Zade sky")
2 In this Decision, we refer to the Final Office Action dated August 25, 2016
("Final Act."), the Appeal Brief filed January 12, 2017 ("Appeal Br."), the
Examiner's Answer dated April 3, 2017 ("Ans."), and the Reply Brief filed
May 31, 2017 ("Reply Br.").
2
Appeal2017-008768
Application 14/041,921
Liu et al.
("Liu")
EP 2 481 499 Al Oct. 20, 2011
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 11, 15, 18, 23, and 24 under 35 U.S.C. § 103 as
unpatentable over Jones in view of Chow and Zadesky. Ans. 2.
Rejection 2. Claim 16 under 35 U.S.C. § 103 as unpatentable over
Jones in view of Chow and Zadesky and further in view of Brandl. Id. at 4.
Rejection 3. Claim 17 under 35 U.S.C. § 103 as unpatentable over
Jones in view of Chow and Zadesky and further in view of Brandl and Liu.
Id. at 5.
Rejection 4. Claims 19 and 20 under 35 U.S.C. § 103 as unpatentable
over Jones in view of Chow and Zadesky and further in view ofManabe. Id.
at 6.
ANALYSIS
The Examiner rejects the sole independent claim on appeal, claim 11,
under 35 U.S.C. § 103 as unpatentable over Jones in view of Chow and
Zadesky. Ans. 2. The Examiner finds that Jones teaches a battery cell with
an anode and cathode where the cell is dipped in a first layer of plastic "such
that the at least one first layer of plastic directly contacts the anode and the
cathode." Id. (citing Jones). The Examiner finds that Jones does not teach a
layer of metal around the first layer of plastic and does not teach the metal
being liquid or semi-liquid during the molding. Id.
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Appeal2017-008768
Application 14/041,921
The Examiner finds Chow teaches covering a plastic battery casing
with a foil laminate in order to prevent migration of water vapor into the
battery. Ans. 3 (citing Chow). The Examiner determines that it would have
been obvious to employ Chow's teaching regarding a metal covering to
modify Jones "in order to make the battery cell impermeable to water and
organic solvent vapors." Id.
The Examiner also finds that Zadesky teaches die cast molding using
molten metal in order to "produce parts with thinner walls, more uniform
parts with closer dimensional accuracy and smoother surfaces" and that die
casting "can offer low cost, rapid manufacture of near net shape parts,
reducing finishing and post-machining costs to bring dimensions to size."
Id. (citing Zadesky).
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). 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. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Appellant argues that the Jones battery uses sea water as its
electrolyte. Appeal Br. 2-3. The Examiner finds that Jones generally
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Appeal2017-008768
Application 14/041,921
pertains to an improved battery construction rather than only a battery that
makes use of sea water electrolyte. Ans. 10-11. We find that the relevant
passages of Jones refer to deferred action batteries. Although portions of
Jones are written in terms of general battery structure (see, e.g., Jones
Abstract), Jones refers more particularly to deferred action batteries that use,
for example, sea water as its electrolyte. Jones 1: 12--45, 2: 19--24. Jones's
dipping of its assembly into plastic casing material applies to the context of
"cells of the type described above" (i.e., deferred action batteries). Id. at
1 :30-34; see also, e.g., id. at 2:48-55 (referring to conduits allowing ingress
and egress of electrolyte). Although Jones refers to sea water as being an
exemplary electrolyte (id. at 1: 14--16 ("the electrolyte is, for example, sea
water")), the Examiner does not identify where Jones teaches or suggests
any specific electrolyte other than sea water.
Appellant further argues that a person having skill in the art would not
have reason to combine the teachings of Jones with the teachings of Chow
and Zadesky with a reasonable expectation of success because die casting of
metal (die casting taught by Zadesky) on the cell of Jones would destroy the
battery because the melting point of metals such as aluminum and zinc is far
higher than the boiling point of sea water. Appeal Br. 5. We agree with
Appellant that the Examiner has not adequately explained why a person of
skill in the art would have had a reasonable expectation of success in
applying die cast molten metal to the cell of Jones if the cell included the sea
water electrolyte (and the Examiner does not take the position that Jones
suggests other electrolytes with higher boiling points that would be more
feasible).
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Appeal2017-008768
Application 14/041,921
Rather than disputing Appellant's position regarding the poor
interaction of molten metal with a sea water electrolyte-based cell, the
Examiner finds that Jones teaches that electrolyte could be added to the
Jones battery after the casing is finished. Ans. 7-8. Appellant, however,
argues that in such a circumstance, the recitations of claim 11 would not be
met. Reply Br. 2-3.
In particular, claim 11 requires that "a battery cell" be coated with the
"at least one first layer of plastic" and that the liquid or semi-liquid metal be
molded around the one first layer of plastic. A battery cell requires, at least,
an anode, a cathode, and a means for connecting the cells (in the context of
Jones, the electrolyte). See, e.g., Spec. ,r 3; Merriam-Webster's Collegiate
Dictionary 199 (Merriam-Webster, Inc., 11th ed. 2007) ( defining cell in this
context as "a receptacle containing electrodes and an electrolyte either for
generating electricity by chemical action or for use in electrolysis"). If
electrolyte were not added until after the Jones structure is formed, the one
first layer of plastic would not be coating a battery cell because the structure
being coated would lack the electrolyte. Accordingly, we agree with
Appellant's that the recitations of claim 11 would not be met under the
Examiner's theory that the electrolyte of Jones could be added after structure
is formed.
Because the Examiner has not established reasonable expectation of
success in combining the cited references teachings' if electrolyte is present
prior to coating the Jones cell and has not established that all recitations of
claim 11 are met if electrolyte is not added until later, we do not sustain the
Examiner's rejection of claim 11.
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Appeal2017-008768
Application 14/041,921
The Examiner's explanation of the Brandl, Liu, and Manabe
references does not cure the error addressed above. Ans. 4--7. Accordingly,
we do not sustain the rejections of claims 15-20, 23, and 24 because each of
those claims depend from claim 11.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 11, 15-20, 23, and 24.
REVERSED
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