Ex Parte Gibbons et alDownload PDFPatent Trial and Appeal BoardDec 9, 201311387010 (P.T.A.B. Dec. 9, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/387,010 03/22/2006 Daniel W. Gibbons DCL2050/M5173 4759 40536 7590 12/09/2013 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER HAN, KWANG S ART UNIT PAPER NUMBER 1727 MAIL DATE DELIVERY MODE 12/09/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DANIEL W. GIBBONS and MICHAEL POZIN ________________ Appeal 2012-006647 Application 11/387,010 Technology Center 1700 ________________ Before JEFFREY T. SMITH, MICHAEL P. TIERNEY, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006647 Application 11/387,010 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the Examiner’s second or subsequent non-final rejection of claims 1, 2, 5-13, and 15-24. We have jurisdiction under 35 U.S.C. § 6. Appellants’ claimed invention relates to “a metal/air cell preferably having an anode comprising zinc, a catalytic cathode, and a separator glued to the cathode with a glue preferably of crosslinked polyvinylalcohol containing boron.” Spec. 1. Claim 1 is illustrative (disputed claim limitations italicized): 1. A zinc/air depolarized cell comprising an anode casing and a cathode casing; an anode mixture comprising zinc particles and aqueous alkaline electrolyte within said anode casing; a cathode within said cathode casing; an electrolyte permeable separator between said cathode and anode; and a glue comprising a crosslinked polyvinylalcohol, said glue located between the separator and a side of said cathode to adhesively bond the separator to the cathode. The Examiner relied on the following references in rejecting the appealed subject matter: Treger US 2001/0028976 October 11, 2001 Jiang US 2005/0003271 January 6, 2005 Yasukochi US 2005/0053646 March 10, 2005 Malinski WO 2004/064175 July 29, 2004 The Examiner withdrew the appealed rejections1 under 35 U.S.C. § 103(a) and entered the following rejections over the same references:2 1 Ans. 5; App. Br. 3. 2 Ans. 5, 9. Appeal 2012-006647 Application 11/387,010 3 Rejection 1. Claims 1, 2, 5, 9-13, 15, 16, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Malinski in view of Treger and further evidenced by Yasukochi. Rejection 2. Claims 17-20 and 24 under 35 U.S.C. § 103(a) as unpatentable over Malinski in view of Treger and further evidenced by Yasukochi as applied to claim 5, and further in view of Jiang. OPINION3 The issue dispositive of this appeal is whether the Examiner erred in determining that Malinski discloses a separator coating, which inherently has adhesive properties, acts as a glue, and comprises a crosslinked polyvinylalcohol? After review of the arguments and evidence presented by both Appellants and the Examiner, we AFFIRM. The Examiner finds that Malinski’s electrochemical cell includes zinc/air cells, anode and cathode casings, an electrolyte, and a separator disposed between the anode and cathode assembly. Ans. 5. The Examiner also finds that the separator in Malinski is constructed from a non-woven fabric coated with a material containing polyvinylalcohol mixed with an inorganic solution containing a borate derivative. Id. The Examiner acknowledges that Malinski does not explicitly state the zinc/air cell has an anode mixture comprising zinc particles and an electrolyte. Id. The Examiner determines, however, that “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to 3 Appellants have not presented separate substantive arguments addressing claims 1, 2, 5-13, and 15-24. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as representative for deciding the issue on appeal. Appeal 2012-006647 Application 11/387,010 4 use an anode comprising zinc particles, cathode catalyst comprising manganese dioxide and an alkaline electrolyte in a zinc air cell because Treger teaches this [is] a well known composition for a zinc air alkaline depolarized cell.” Id. at 6. The Examiner also finds that while Malinski does not explicitly recite a glue located between the separator and the cathode (id. at 5), Malinski “inherently teaches that the separator coating has adhesive properties and acts as a glue which comprises a crosslinked polyvinylalcohol” (id. at 6). The Examiner cites as support Yasukochi which “provides evidence that a hydroxyl group-containing monomer such as vinyl alcohol crosslinked by a boron containing agent produces an adhesive.” Id. Appellants argue in the Appeal Brief that Yasukochi cannot be combined with Malinski because it is directed to an adhesive affixed to the surface of a skin so as to continuously administer a drug and therefore is non-analogous art. App. Br. 3. Appellants further argue that Malinski teaches “crosslinking of the coating itself – to avoid using heat, light, radiation, and other undesirable techniques used in conventional methods for coating electrodes – but not adhesively bonding the separator to the cathode with a glue disposed therebetween.” Id. at 5. Regarding Treger, Appellants argue the reference “neither teaches nor suggests adhesive glue bonding between the cathode and the separator.” Id. at 6. The Examiner responds that Yasukochi “does not modify the teachings of Malinski but instead provides recognition within the art (as an evidentiary reference) that a polyvinylalcohol crosslinked with a boron containing compound inherently has adhesive properties allowing the material to act as a glue” (Ans. 11) and that these properties are inherent in Appeal 2012-006647 Application 11/387,010 5 Malinski absent objective evidence of differences between the separator coating disclosed in the prior art and that claimed by Appellants (id.). In the Reply Brief, Appellants repeat arguments made in the Appeal Brief and assert the Examiner has not provided “an adequate basis – in evidence or scientific reasoning – to support his contention that the Malinski reference inherently possesses the claimed feature, i.e., adhesive bonding between the cathode and the separator with a glue located therebetween.” Reply Br. 6. Appellants dispute the Examiner’s statement that the separator coating taught by the prior art and the applicant are identical within the scope of claims 1 and 5 on the basis that “Malinski uses a crosslinked polymer as an additional layer of a separator.” Id. Appellants distinguish the claimed invention from Malinski as follows: “In the claimed invention a glue, comprising a crosslinked polyvinylalcohol and disposed between the separator and the cathode, adhesively bonds the separator to the cathode.” Id. Appellants further argue that the “obviousness rejection based on inherency is improper as a matter of law – even if the alleged inherency of the claimed feature(s) in Malinski can be supported.” Id. Appellants’ arguments are not persuasive. The Examiner has provided the record with a preponderance of evidence including commonalities in the components shared by the separator coating of Malinski, the adhesive of Yasukochi, and the glue of claim 1 which justifies requiring Appellants to prove that Malinski’s separator coating does not necessarily or inherently possess the claimed characteristic of adhesiveness to bond the separator to the cathode. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his Appeal 2012-006647 Application 11/387,010 6 claimed product. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” (footnote omitted)). Appellants have not directed us to evidence to refute the Examiner’s determination. The evidence of record shows that Malinski’s separator is formed by layering a porous fabric with a viscous composition of polyvinylalcohol crosslinked with a borate derivative that has adhesive properties and Appellants have not shown otherwise. Appellants concede that the separator coating of Malinski is crosslinked. App. Br. 4-6; Reply Br. 2-3. Appellants do not dispute that the separator coating is layered on the separator in Malinski and therefore between the separator and cathode. See App. Br. 4 (“Malinski adds a layer of crosslinked polymer to a relatively porous fabric thereby forming ‘a conformal separator . . . that occupies significantly less volume then a conventional fabric’” (quoting Malinski [0033])); Reply Br. 2. Appellants provide quotations from Malinski that show crosslinking of the vinyl alcohol when mixed with an inorganic crosslinking agent such as a borate derivative. App. Br. 5; Reply Br. 3. Appellants suggest that crosslinked in the context of Malinski is somehow different from crosslinked in the context of claim 1 because Malinski’s crosslinked separator coating bonds polymer chains to one another through the crosslinking reaction. See App. Br. 5; Reply Br. 3. This argument is not persuasive because it fails to explain (1) why that would preclude the separator coating of Malinski from having the claimed adhesive property and (2) how the crosslinked separator coating of Malinski would differ from the claimed crosslinked Appeal 2012-006647 Application 11/387,010 7 polyvinylalcohol. See App. Br. 5; Reply Br. 3. Moreover, Malinski describes the crosslinked polymer as being suitable for applying with a spray gun and therefore viscous. Malinski [0049]. Absent evidence to the contrary, polyvinylalcohol compositions crosslinked with boron-containing compounds would be expected to share the same properties. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and all of its properties are inseparable”). Appellants have not directed us to any objective evidence in this appeal that the separator coating of Malinski would not possess an adhesive property to adhesively bond the separator to the cathode as required by claim 1. For the foregoing reasons, and those provided in the Answer including the Response to Argument section, we affirm the rejection of claims 1, 2, 5- 13, and 15-24 under 35 U.S.C. § 103(a). 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)(v). AFFIRMED bar Copy with citationCopy as parenthetical citation