2020005269 (P.T.A.B. Dec. 29, 2021)

PRESIDENT AND FELLOWS OF HARVARD COLLEGE

Patent Trials and Appeals BoardDec 29, 2021

2020005269 (P.T.A.B. Dec. 29, 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. 14/431,175 03/25/2015 Brian Huskinson 50334-034004 8809 21559 7590 12/29/2021 CLARK & ELBING LLP 101 FEDERAL STREET BOSTON, MA 02110 EXAMINER BUCHANAN, JACOB ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 12/29/2021 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): patentadministrator@clarkelbing.com smmichaud@clarkelbing.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN HUSKINSON, MICHAEL MARSHAK, MICHAEL J. AZIZ, ROY G. GORDON, THEODORE A. BENTLEY, ALAN ASPURU-GUZIK, SULEYMAN ER, and CHANGWON SUH Appeal 2020-005269 Application 14/431,175 Technology Center 1700 BEFORE BEVERLY A. FRANKLIN, BRIAN D. RANGE, and JANE E. INGLESE, Administrative Patent Judges. FRANKLIN, 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 reject claims 1, 6–9, and 12–25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as President and Fellows of Harvard College. Appeal Br. 1. Appeal 2020-005269 Application 14/431,175 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A rechargeable battery comprising first and second electrodes, wherein in its charged state, the battery comprises a redox active species in contact with the first electrode and a hydroquinone in aqueous solution or aqueous suspension in contact with the second electrode, wherein during discharge the redox active species is reduced and the hydroquinone is oxidized to a corresponding quinone, and wherein the redox active species is a second quinone in aqueous solution or aqueous suspension, and the corresponding quinone is an anthraquinone or naphthoquinone, wherein the redox potential of the hydroquinone is insufficient for hydrogen gas evolution from the aqueous solution or aqueous suspension. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Shimomura US 2007/0134520 A1 June 14, 2007 Inatomi US 2009/0017379 A1 January 15, 2009 Brozell US 2011/0284456 A1 November 24, 2011 Doherty WO 2011/131959 A1 October 27, 2011 THE REJECTIONS2 1. Claims 1, 6–8, 12, and 21–24 are rejected under 35 U.S.C. § 103 as unpatentable over Doherty. 2. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Doherty and Shimomura. 2 The anticipation rejection has been withdrawn by the Examiner. Ans. 3. Appeal 2020-005269 Application 14/431,175 3 3. Claims 13–19 are rejected under 35 U.S.C. § 103 as unpatentable over Doherty and Brozell. 4. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over Doherty, Brozell, and Inatomi. 5. Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over Doherty and Inatomi. OPINION Appellant does not make separate arguments in support of patentability of any particular claim or claim grouping. Appeal Br. 10–11. Accordingly, the claims subject to each ground of rejection will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(iv). We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections for the reasons stated by the Examiner in the record, highlighted below. Rejections 1–5 We refer to the Examiner’s statement of the rejection as set forth on pages 2–8 of the Final Office Action. In response thereto, Appellant presents argument as set forth on pages 5–11 of the Appeal Brief. Therein, Appellant argues, for the reasons stated therein, that Doherty does not teach Appeal 2020-005269 Application 14/431,175 4 or suggest the use of a quinone and a hydroquinone in aqueous solution or suspension. We are unpersuaded by this line of argument essentially for the reasons provided by the Examiner on pages 3–13 of the Answer which we adopt as our own. In the Reply Brief3, Appellant argues that the Examiner has misconstrued the Declaration of Professor Gordon for the reason stated on pages 2–3 of the Reply Brief. Throughout the Answer, the Examiner sufficiently considers the Gordon Declaration and we are unconvinced that the Examiner’s consideration is in error. We are unpersuaded by this line of argument. 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) (consider the nature of the matter sought to be established as well as the strength of the opposing evidence in assessing the probative value of expert opinion); In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual support rendered an affidavit of little probative value in overcoming obviousness rejection); Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”). 3 In the Reply Brief, Appellant mistakenly believes that claims 6–8, 12, and 21–24 are allowable. Reply Br. 2. However, while the Examiner withdrew the anticipation rejection of claims 1, 6–8, 12, and 21–24, the Examiner did not withdraw the obviousness rejection of these claims over Doherty. Appeal 2020-005269 Application 14/431,175 5 Upon our review of the Gordon Declaration, we agree with the Examiner that the statements made therein regarding the Doherty’s teaching of water as a suitable solvent are unpersuasive, and amount to unsupported testimonial. That is, no probative evidence is set forth in the Declaration to support the opinions expressed therein. See e.g., Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) (citations omitted); In re Etter, 756 F.2d 852, 849-60 (Fed. Cir. 1985) (en banc) (opinion affidavit asserting the reference disclosed obsolete technology was correctly characterized by the board “as merely representing opinions unsupported by facts and thus entitled to little or no weight.”) (citing In re Piasecki, 745 F.2d 1468, 1472-73 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976)). In view of the above, we affirm Rejection 1. For the same reasons, we affirm Rejections 2–5 (Appellant relies upon the same arguments for these rejections (Appeal Br. 10–11)). CONCLUSION We affirm the Examiner’s decision. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6–8, 12, 21–24 102(a)(1) Doherty 1, 6–8, 12, 21–24 1, 6–8, 12, 21–24 103 Doherty 1, 6–8, 12, 21–24 Appeal 2020-005269 Application 14/431,175 6 9 103 Doherty, Shimomura 9 13–19 103 Doherty, Brozell 13–19 20 103 Doherty, Brozell, Inatomi 20 25 103 Doherty, Inatomi 25 Overall Outcome 1, 6–9, 12– 25 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED