Albano, Fabio et al.

Patent Trials and Appeals Board

Apr 24, 2020

13103008 - (D) (P.T.A.B. Apr. 24, 2020)

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.
13/103,008 05/06/2011 Fabio Albano 75750-20007.11 8334
25227 7590 04/24/2020
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE 300
MCLEAN, VA 22102
EXAMINER
FORD, NATHAN K
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte FABIO ALBANO, CHIA-WEI WANG, and
ANN MARIE SASTRY
_______________
Appeal 2019-004168
Application 13/103,008
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 45, 46, 48, 50, 67, 70, 71, 74–77, and
79–81 of Application 13/103,008. Final Act. 1; Appeal Br. 7, 9, 11. We
have jurisdiction under 35 U.S.C. § 6.

1 In our Decision, we refer to the Specification filed May 6, 2011 (“Spec.”)
of Application 13/103,008 (“the ’008 Application”); the Final Office Action
dated November 29, 2017 (“Final Act.”); the Appeal Brief filed November
19, 2018 (“Appeal Br.”); the Examiner’s Answer dated March 7, 2019
(“Ans.”); the Reply Brief filed May 7, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the inventor Dyson Technology Ltd. as
the real party in interest. Appeal Br. 2.
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For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’008 Application relates to a multi-cell thin film battery
composition. See Spec. Title (amended June 8, 2016); ¶¶ 61, 67; Figs. 5,
6B, 7.
Claim 45 is representative of the ’008 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
45. A multi-cell thin film battery composition comprising:
a substrate material configured to be wound between
reels bearing;
a multi-cell vertically stacked structure comprising a
plurality of discrete thin film battery cells, each of the plurality
of discrete thin film battery cells comprising:
a vapor deposited first electrode material comprising at
least one of lithium metal (Li), lithium titanium oxide
(L[i4]Ti5O12), graphite (C), or meso-carbon structures, the first
electrode material having a sinusoidal shape;
a vapor deposited solid electrolyte material overlying the
first electrode material and comprising at least one of lithium
phosphorus oxynitride (LIPON) or a lithium salt mixed with
poly-ethylene oxide (PEO), poly-vinylidene fluoride (PVDF),
or a combination of PEO and PVDF, the electrolyte material
having a sinusoidal shape;
a vapor deposited second electrode material overlying the
electrolyte material and comprising at least one of a layered
metal oxide material, a layered spinel material, or a layered
olivine material, the second electrode material having a
sinusoidal shape; and
an electrically conducting lead for connecting the
plurality of discrete thin film battery cells.
Appeal Br. 12 (emphasis added).
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Application 13/103,008

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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Ovshinsky et al.
(“Ovshinsky”)
US 5,411,592 May 2, 1995
Shakespeare US 7,294,209 B2 Nov. 13, 2007
Barbarich US 2003/0108800 A1 June 12, 2003
Obrovac et al.
(“Obrovac”)
US 2008/0248386 A1 Oct. 9, 2008
REJECTIONS
On appeal, the Examiner maintains the following rejections:3
1. Claims 45, 48, 50, 67, 70, 71, 74–77, and 79–81 under 35 U.S.C.
§ 103(a) as obvious over Ovshinsky, in view of Shakespeare, and
further in view of Obrovac. Final Act. 3.4
2. Claim 46 under 35 U.S.C. § 103(a) as obvious over Ovshinsky, in
view of Shakespeare and Obrovac, and further in view of
Barbarich. Final Act. 3–4.

3 Because this application claims priority to an application filed before the
March 16, 2013, effective date of the America Invents Act, we refer to the
pre-AIA version of the statute. Spec. ¶ 1.
4 Although the Examiner’s statement of the rejection includes claims 51 and
72, we view this inclusion as a clerical error as these claims have been
canceled. Final Act. 3; see Amendment filed August 30, 2017.
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DISCUSSION
Ground 1: Rejection of claims 45, 48, 50, 67, 70, 71, 74–77, and 79–
81 as obvious over Ovshinsky, in view of Shakespeare, and further in
view of Obrovac
Appellant argues independent claims 45 and 75 and each of their
respective dependent claims as a group. See generally Appeal Br. 2–11. We
select claim 45 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv)
(2017). The remaining claims in the group will stand or fall with claim 45.
The Examiner finds that the combination of Ovshinsky, in view of
Shakespeare, and further in view of Obrovac, teaches all limitations of claim
45. Final Act. 3.
Appellant does not dispute the Examiner’s conclusion that the
combination of Ovshinsky’s multi-cell thin film battery with Shakespeare’s
leads would have rendered obvious the claimed limitation “an electrically
conducting lead for connecting . . . thin film battery cells.” See generally
Appeal Br. 3–11; id. at 12. Rather, Appellant argues that the Examiner
reversibly erred in concluding that the combination of Ovshinsky and
Obrovac would have rendered obvious the limitation “a vapor deposited
solid electrolyte material . . . having a sinusoidal shape,” as recited in claim
45. See generally id. at 3–11; id. at 12.
The Examiner finds that the electrode materials in Ovshinsky’s multi-
cell thin film battery are not formed in a sinusoidal shape. Final Act. 3. The
Examiner finds that Obrovac forms “electrochemical cell electrodes in . . .
sinusoidal patterns,” which accommodate “higher levels of internal stress
[from] volume expansion.” Id. at 3 (citing Obrovac ¶¶ 5, 49; Fig. 1d). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to “reconfigure Ovshinsky’s planar
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base sinusoidally” in order to confer Obrovac’s stress accommodating
property. Final Act. 3. The Examiner finds that “the claimed result of
sinusoidal electrodes and electrolytes follows inherently” because “the
subsequent layers will necessarily conform to the shape of [Ovshinsky’s
modified] base.” Id.
Appellant argues that Obrovac is not directed to a solid sinusoidal
electrolyte, but to a solid electrode having a sinusoidal shape. Appeal Br. 5–
7 (citing Obrovac ¶ 45; Fig. 1d). Appellant contends that Obrovac’s
“sinusoidal electrode is limited to embodiments comprising a liquid or gel
electrolyte,” which are not within the scope of claim 45. Appeal Br. 7.
Appellant argues that only a liquid or gel electrolyte would have been able to
“‘necessarily conform to the [sinusoidal] shape of the base’” to
accommodate the volumetric expansion of Obrovac’s electrode. Id. (quoting
Final Act. 3); see also Reply Br. 3.
Contrary to Appellant’s argument, Obrovac does not exclude
employing a solid electrolyte within the known sinusoidally shaped
electrode. For purposes of § 103, a reference is prior art for all that it
discloses. Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed.
Cir. 1991); see also In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992)
(explaining that “[i]t is well settled that a prior art reference is relevant for
all that it teaches to those of ordinary skill in the art”)). Obrovac expressly
discloses that an electrode having “a raised pattern” can employ several
“[r]epresentative electrolytes, includ[ing] one or more lithium salts and a
charge-carrying medium in the form of a solid, liquid or gel.” Obrovac ¶¶
58, 59 (emphasis added). Obrovac explicitly discloses that “the phrase
‘raised pattern’ can refer to corrugation of an electrode with . . . raised
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features.” Id. at ¶ 23, ¶ 28 (explaining that “FIG. 1d illustrates an
embodiment of an electrode that has undulating pleats in a sinusoidal
shape.”); ¶ 49 (explaining that the sinusoidally shaped electrode depicted in
Fig. 1d illustrates one of several “exemplary raised patterns.”). Obrovac
thus discloses or suggests that a solid electrolyte would have been able to
accommodate the volumetric expansion of Obrovac’s sinusoidally shaped
electrode. We, furthermore, note that Appellant has not established that a
vapor deposited solid electrolyte cannot conform to the shape of Ovhinsky’s
modified sinusoidal base.
Appellant argues that there are two possible ways one of ordinary skill
in the art would have combined Ovshinsky and Obrovac. Appeal Br. 8.
Appellant specifically contends that one of ordinary skill in the art at the
time of the invention would have modified Ovshinsky’s flat electrode to
include Obrovac’s: (i) liquid or gel electrolyte to make a non-sinusoidal
electrode or (ii) sinusoidal electrode and liquid or gel electrolyte. Id. at 8–9.
Appellant argues that neither of these modifications would have resulted in a
multi-cell thin film battery within the scope of claim 45. Id.
In response, the Examiner determines that “[o]ne of ordinary skill is
also one of ordinary imagination and creativity, and . . . such an artisan
would [have] readily discover[ed] additional modes of combination,”
including the Examiner’s proposed combination. Ans. 4.
Appellant argues that the Examiner is impermissibly “fill[ing] in a
missing reason to combine the references with ‘ordinary imagination and
creativity.’” Reply Br. 4. Appellant contends that “the only teaching of a
solid sinusoidal electrolyte with a sinusoidal electrode is that of the present
invention.” Id.
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We are not persuaded by Appellant’s arguments as Obrovac discloses
or suggests use of a solid electrolyte in an electrode having raised patterns,
such as sinusoidally shaped electrodes. See Obrovac ¶¶ 23, 28, 49, 58, 59.
The Examiner, furthermore, correctly observes that one of ordinary skill in
the art would not have been limited to only these two combinations of prior
art features. Ans. 4; see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992) (“As long as some motivation or suggestion to combine the references
is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventors.”).
Thus, we agree with the Examiner that one of ordinary skill in the art at the
time of the invention would have discovered other possible combinations,
including the combination proposed by the Examiner. Ans. 3–4; Final
Act. 3.
The Examiner’s proposed motivation to combine Obrovac’s teachings
with that of Ovshinsky’s (a desire to accommodate higher levels of internal
stress from volume expansion) is supported by the Examiner’s finding that
Ovshinsky’s lithium battery invention would have benefited from Obrovac’s
solution to the undesirable effect of lithium battery charging, namely volume
expansion. See Ans. 3. The Examiner thus provides adequate motivation to
combine the references. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (Examiner’s explanation of reasons a person of ordinary skill in
the art would have had to combine the prior art teachings is sufficient when
allowance is made for “the inferences and creative steps that a person of
ordinary skill in the art would employ”).
Appellant argues that the Examiner’s proposed combination of
Ovshinsky’s multi-cell thin film battery with Obrovac’s sinusoidal electrode
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pattern would have rendered the prior art unsatisfactory for its intended
purpose. Appeal Br. 10–11; Reply Br. 3. Appellant specifically contends
that once Obrovac’s sinusoidally shaped electrode expands, Ovshinsky’s
solid electrolyte “would break or separate from the electrode layer, rendering
the modified thin-film battery inoperable.” Appeal Br. 11.
A prima facie case of obviousness may be shown where, as here,
structural similarities exist between the claimed and prior art compositions
and reason or motivation exists to make the claimed composition. In re
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc) (“the structural
similarity between claimed and prior art subject matter, proved by
combining references or otherwise, where the prior art gives reason or
motivation to make the claimed compositions, creates a prima facie case of
obviousness”); In re Best, 562 F.2d 1252, 1255–56 (Fed. Cir. 1977); In re
Wilder, 429 F.2d 447, 450 (CCPA 1970). Where the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Best, 562 F.2d at 1256.
Appellant has not met the burden of proving that Ovshinsky’s solid
electrolyte would have broken or separated from the expansion of
Ovshinsky’s modified sinusoidally shaped electrode. Therefore, Obrovac’s
recognition that it is desirable to shape an electrode, which contains a solid
electrolyte, with a sinusoidal pattern to accommodate higher levels of
internal stress from volume expansion would have suggested the disputed
limitation recited in claim 45. Comparing Ovshinsky’s, Shakespeare’s, and
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Obrovac’s disclosures with claim 45, we find that the claim encompasses the
prior art.
For the reasons provided above, claim 45 is obvious over Ovshinsky,
in view of Shakespeare, and further in view of Obrovac. Dependent claims
48, 50, 67, 70, 71, 74, 76, 77, and 79–81 and independent claim 75 are
obvious over Ovshinsky, in view of Shakespeare, and further in view of
Obrovac pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
Ground 2: Rejection of claim 46 as obvious over Ovshinsky, in view
of Shakespeare and Obrovac, and further in view of Barbarich
Appellant implicitly argues that the Examiner’s assertions do not cure
the deficiencies in Ground 1 (obviousness over Ovshinsky, in view of
Shakespeare, and further in view of Obrovac). See Appeal Br. 7, 9, 11.
Having found no deficiencies in Ovshinsky, in view of Shakespeare,
and further in view of Obrovac in Ground 1, supra, we sustain the rejection
of claim 46 as obvious over Ovshinsky, in view of Shakespeare and
Obrovac, and further in view of Barbarich.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
45, 48, 50,
67, 70, 71,
74–77, 79–
81
103(a) Ovshinsky,
Shakespeare,
Obrovac
45, 48, 50,
67, 70, 71,
74–77, 79–
81

46 103(a) Ovshinsky,
Shakespeare,
Obrovac,
Barbarich
46
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Application 13/103,008

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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
Overall
Outcome
45, 46, 48,
50, 67, 70,
71, 74–77,
79–81

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