Ex Parte Viswanathan

Patent Trial and Appeal Board

Jun 6, 2018

14066689 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/066,689 10/30/2013
15829 7590 06/08/2018
NXP-Mason Group Patent Specialists LLC
6501 William Cannon Drive West
Austin, TX 78735
FIRST NAMED INVENTOR
Lakshminarayan Viswanathan
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.
NS30227ZK 8646
EXAMINER
TRAN, BINH BACH THANH
ART UNIT PAPER NUMBER
2848
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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):
ip.department.us@nxp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAKSHMINARA YAN VISW ANATHAN
Appeal2017-008398
Application 14/066,689
Technology Center 2800
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and MICHAEL
G. McMANUS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1--4, 7, 8, 10, 12, 13, and 15 under
1 In explaining our Decision, we cite to the Specification of October 30,
2013 (Spec.), Final Office Action of July 21, 2016 (Final), Appeal Brief of
February 13, 2017 (Appeal Br.), Examiner's Answer of April 21, 2017
(Ans.), and Reply Brief of May 11, 2017 (Reply Br.).
2 Appellant identifies the real party in interest as NXP USA, Inc., which is a
wholly owned subsidiary of Freescale Semiconductor Holdings V. Inc.,
which is a wholly owned subsidiary ofNXP B.V., which is a wholly owned
subsidiary ofNXP Semiconductors N.V. Appeal Br. 3.
Appeal2017-008398
Application 14/066,689
35 U.S.C. § 103 as obvious over Chu3 in view ofNerz4 and adding further
prior art to reject claims 5, 6, 9, 11, and 14. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a circuit having a structure for inhibiting
dendrite formation. See, e.g., claim 1. The circuit includes a first electrode,
a second electrode, and an electrically conductive structure. Claim 1 is
illustrative:
1. A circuit having a structure for inhibiting dendrite
formation, the circuit comprising:
a first electrode disposed within a first area of the circuit,
wherein the first electrode is configured to be coupled to an
ionic source that forms ions when a first electric potential is
applied to the first electrode;
a second electrode disposed within a second area of the
circuit, wherein the second electrode is configured to receive a
second electric potential that is less than the first electric
potential and that causes the ions to migrate toward the second
electrode to contribute to dendrite formation;
an electrically conductive structure disposed within a
third area of the circuit, wherein the electrically conductive
structure is configured to receive a third electric potential to
create a barrier of voltage that inhibits the migration of at least
some of the ions from the first electrode to the second electrode
to inhibit the dendrite formation.
Appeal Br. 15 (claims appendix).
3 Chu et al., US 2001/0041294 Al, published Nov. 15, 2001.
4 Nerz et al., US 5,532,087, issued July 2, 1996.
2
Appeal2017-008398
Application 14/066,689
OPINION
Appellant does not argue any claim or any rejection apart from the
others and, thus, the issues are adequately addressed by focusing on the
rejection of claim 1. The Examiner's rejection and Appellant's arguments
give rise to two main issues:
I. Has Appellant identified a reversible error in the Examiner's
finding of a reason to replace Chu's protective layer 308 with
Nerz's metal mesh separator 52?
II. Has Appellant identified a reversible error in the Examiner's
finding that Nerz's separator 52, which is made of metal screen or
mesh, is "configured to receive a third electric potential to create a
barrier of voltage that inhibits the migration of at least some of the
ions from the first electrode to the second electrode to inhibit the
dendrite formation" as required by claim 1?
Appellant has not identified such errors.
As to issue I, Appellant contends that Chu and Nerz teach away from
their combination. Appeal Br. 10. We do not find this argument persuasive
of a reversible error in the Examiner's finding of a suggestion to make the
proposed substitution of Chu's protective layer 308 with Nerz's separator
52.
The Examiner finds, and Appellant does not dispute, that Chu
discloses, in Figure 3, a circuit having a structure for inhibiting dendrite
formation. Compare Final 3, with Appeal Br. 9-13, and Reply Br. 2-5.
Chu teaches a battery with a negative electrode 314, a positive electrode 316
and an electrolyte region 316 that may include a separator electrically
separating the two electrodes. Chu i-fi-171-72, Fig. 3. A protective layer 308
3
Appeal2017-008398
Application 14/066,689
abuts the negative electrode and either negative electrode 314 or protective
layer 308 contacts the electrolyte in electrolyte region 316. Chu i-f 71. Chu's
protective layer is made from glass or amorphous material that conducts
lithium ion but does not significantly conduct other ions. Chu i-f 48. The
protective layer serves to protect the lithium metal from attack by the
electrolyte and reduces the formation of dendrites and mossy deposits. Chu
i-f 46. Chu also desires the protective layer be impervious to agents from the
ambient environment, i.e., air, moisture, and other outside agents. Id. Thus,
Chu counsels making the protective layer substantially free of pores. Id.
The Examiner acknowledges that protective layer 308 is not
electrically conductive, but finds Nerz teaches an electrically conductive
nickel mesh separator 52. Final 4.
Nerz teaches an electrochemical cell, such as a battery, that, like the
battery of Chu, has a negative electrode 30, a separator 40, and a positive
electrode 20. Nerz col. 1, 11. 11-12; col. 3, 11. 3-7; Fig. 2. Nerz does not
include the glassy or amorphous protective layer taught by Chu. N erz
instead places a current collector 52 in the position of Chu's protective layer.
Nerz col. 3, 11. 11--45, Fig. 2. Nerz's current collector 52 is a metal screen or
mesh, which may be made of nickel. Id. Nerz suggests employing the metal
screen or mesh current collector between the negative electrode and
separator "in cases where the electrode (30) is subject to dendritic growth as
is the case with electrodes fabricated from zinc and/or lithium." Id.
First, we note that the Examiner clarified the rejection in the Answer
in response to Appellant's contention that "[t]he Final Office Action does
not state whether layer 308 of Chu would be replaced with layer 52 ofNerz
or whether layer 52 ofNerz would be added to layer 308 of Chu." Appeal
4
Appeal2017-008398
Application 14/066,689
Br. 10. Specifically, the Examiner clarifies that "one skilled in the art would
replace the protective layer of Chu with the conductive metal mesh of Nerz."
Ans. 2. Thus, the issue is whether Appellant has identified a reversible error
in the Examiner's rationale with regard to replacing Chu's protective layer
308 with Nerz's metal screen or mesh current collector 52.
Appellant contends Chu and Nerz teach away from their combination
based on differences in the construction of the protective layer versus the
current collector and the problems each addresses. Appeal Br. 10-13. But
these differences do not amount to the type of teachings that teach away
from making the proposed substitution.
The types of teachings that "teach away" in the context of
nonobviousness are teachings that criticize, discredit, or otherwise
discourage the proposed modification or would produce an inoperable result
when applied in the proposed prior art combination. See United States v.
Adams, 383 U.S. 39, 52 (1966) ("known disadvantages in old devices which
would naturally discourage the search for new inventions may be taken into
account in determining obviousness"); In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (prior art teaching alternatives did not "teach away" because
such disclosure did not criticize, discredit, or otherwise discourage the
solution claimed); McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354
(Fed. Cir. 2001) (references "teach away" from the combination when the
combination would produce a seemingly inoperative device).
N erz itself provides evidence that a combination of two electrodes and
an electrically conductive structure meeting the structural requirements of
claim 1 would have provided a circuit having a structure for inhibiting
dendrite formation.
5
Appeal2017-008398
Application 14/066,689
Nerz also indicates that the result of the substitution would be
operable: Nerz discloses that a metal screen or mesh current collector
placed between a negative electrode and separator will suppress dendrite
growth. Nerz col. 3, 11. 11-23. That is a function Chu discloses for the
protective layer of Chu. Chu i-f 79. Although Chu teaches other benefits for
the protective layer not taught by Nerz, "a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006). It remains that the prior art suggests that the
proposed device would be operable. In essence, the proposed combination is
simply a matter of replacing a structure known to prevent dendrites with
another structure known to prevent dendrites. "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
Appellant has not identified a reversible error in the Examiner's
finding of a reason to replace Chu's protective layer 308 with Nerz's metal
screen or mesh current collector 52.
Turning to issue II, this issue involves the question of whether Nerz's
current collector 52 has the structure required by the "configured to"
language of the last clause of claim 1.
The Examiner finds Nerz's current collector 52 is an electrically
conductive structure with the configuration required by claim 1. Final 4. In
this vein, the Examiner finds that the current collector may be made of
nickel, an electrically conductive metal. Id. The Examiner further finds that
the nickel separator (current collector 52):
6
Appeal2017-008398
Application 14/066,689
is configured to receive a third electric potential (the potentials
at electrode 20, 30 and separator 52 are obviously different
from each other. The two electrodes 20 and 30 may be an
anode and cathode in this field of technology. The electrode is
made from a different material compared to the separator. List
of the material for the electrode is shown at column 1, line 63 -
67. The potential at the electrodes are first and second
potential. The potential at the separator is the third potential) to
create a barrier of voltage (the different potential at the
electrode and the separator is the voltage barrier) to inhibit the
dendrite formation (separator 52 acts to suppress the growth
and/or the effect of dendrites in the electrode 30, column 3, line
21 - 23).
Final 4.
Appellant has not persuaded us that the Examiner reversibly
erred in finding Nerz's current collector 52 has the required structure.
Appellant contends that column 3, lines 21-23 ofNerz fails to
state that Nerz creates a barrier of voltage to inhibit dendrite
formation, but that instead Nerz seems to imply that nickel mesh 52
decreases the effect of dendrites by increasing the distance between
the electrode and the separator. Appeal Br. 13.
First, this argument is not persuasive because it does not call
into question the Examiner's finding that the different potentials at the
electrode and the separator creates a voltage barrier.
Second, there is no persuasive evidence that the "configured to"
language of the claim differentiates the electrically conductive structure of
claim 1 from N erz' s metal screen or mesh, which is an electrically
conductive structure. "[A ]pparatus claims cover what a device is, not what a
device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
7
Appeal2017-008398
Application 14/066,689
1468 (Fed. Cir. 1990). A review of the Specification turns up no specific
structure associated with the "configured to" language that differentiates the
electrically conductive structure of the claim from Nerz' s metal screen or
mesh, which is conductive, is termed a "current collector" by Nerz, and acts
to suppress the growth of dendrites in electrode 30. See Spec., generally;
Nerz col. 3, 11. 11-23.
Appellant has not identified a reversible error in the Examiner's
finding that Nerz's current collector 52, which is made of metal screen
or mesh, is "configured to receive a third electric potential to create a
barrier of voltage that inhibits the migration of at least some of the
ions from the first electrode to the second electrode to inhibit the
dendrite formation" as required by claim 1.
CONCLUSION
In summary:
1--4, 7' 8, § 103 Chu, Nerz 1--4, 8, 10,
10, 12, 13, 12, 13, 15
15
5,6 § 103 Chu, Nerz, 5,6
Jenson
9 § 103 Chu, Nerz, 9
Jenson, Y orita
11, 14 § 103 Chu, N erz, La 11, 14
Follette
Summa 1-15
8
Appeal2017-008398
Application 14/066,689
DECISION
The Examiner's decision is affirmed.
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)(l).
AFFIRMED
9