Ex Parte Aitken et al

Patent Trial and Appeal Board

Apr 11, 2017

12362063 (P.T.A.B. Apr. 11, 2017)

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.
12/362,063 01/29/2009 Bruce Gardiner Aitken SP09-015 9369
22928 7590 04/13/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1 LEWIS, BEN
CORNING, NY 14831
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
04/13/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE GARDINER AITKEN,
TODD PARRISH ST. CLAIR, JAMES R. LIM,
PRANTIK MAZUMDER, and
MARK ALEJANDRO QUESADA1
Appeal 2015-007543
Application 12/362,063
Technology Center 1700
Before: ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—30. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Coming Incorporated.
Appeal Br. 2.
2 In our Decision below we refer to the Specification filed January 29, 2009
(“Spec.”), the Final Office Action mailed July 31, 2014 (“Final Act.”), the
Appeal Brief filed January 16, 2015 (“Appeal Br.”), the Examiner’s Answer
mailed June 17, 2015 (“Ans.”), and the Reply Brief filed October 13, 2015
(“Reply Br.”).
Appeal 2015-007543
Application 12/362,063
STATEMENT OF CASE
The claims are directed to a barrier layer for hermetically sealing a
thin film battery and a process for making the same. Spec. |1. Claim 1,
reproduced below with relevant claim language emphasized, is illustrative of
the claimed subject matter:
1. A thin film battery comprising:
a substrate;
an anode current collector layer and a cathode current
collector layer formed on the substrate;
a cathode layer formed over the cathode current collector
layer,
an electrolyte layer formed over the cathode layer;
an anode layer formed over both the anode current
collector layer and the electrolyte layer, and
a single layer barrier layer formed over and in physical
contact with each of the anode layer and the electrolyte layer,
wherein the barrier layer comprises a glass material selected
from the group consisting of SnO, tin phosphate, tin
fluorophosphate, chalcogenide glass, tellurite glass and borate
glass.
Claims Appendix at Appeal Br. 16 (emphasis added).
REJECTIONS
The Examiner made the following rejections:
A. Claims 1, 4, 5, 10, 11, 14, 23, and 26—30 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over
Bates3 in view of Treger.4 Final Act. 2.
3 John B. Bates, US 2008/0003493 Al, published January 3, 2008 (“Bates”).
4 Jack Treger, US 5,355,089, issued October 11, 1994 (“Treger”).
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Application 12/362,063
B. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates in view of Treger and further in
view of Ugaji.5 Id. at 6.
C. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates in view of Treger and further in
view of Kondo.6 Id. at 7.
D. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates in view of Treger and further in
viewoflto.7 Id. at 10.
E. Claims 7, 8, 18, and 19 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Bates in view of Treger
and further in view of Neudecker.8 Id. 12.
F. Claims 9 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bates in view of Treger and
further in view of Tamowski.9 Id.
G. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates in view of Treger in further view
of Jenson.10 Id. at 13.
H. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates in view of Treger in further view
of Pearce.11 Id. at 15.
5 Ugaji et al., US 2004/0106045 Al, published June 3, 2004 (“Ugaji”).
6 Kondo et al., US 2009/0003493 Al, published January 3, 2008 (“Kondo”).
7 Ito et al., US 2004/0185336 Al, published September 23, 2004 (“Ito”).
8 Neudecker et al., US 2009/0181303 Al, published July 16, 2009
(“Neudecker”).
9 Tamowski et al., US 2005/0147877 Al, published July 7, 2005
(“Tamo wski”).
10 Jenson et al., US 2007/0243459 Al, published October 18, 2007
(“Jenson”).
11 Pearce et al., US 2008/0053519 Al, published March 6, 2008 (“Pearce”).
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Application 12/362,063
I. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates in view of Treger in further view
of Nathan.12 Id. at 16.
J. Claim 21—23 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bates in view of Treger in further
view of Shionoiri.13 Id. at 17.
K. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bates in view of Treger in
further view of Ekchian14 as evidenced by Kawano15 and
Krasnov.16 Id. at 19.
Appellants request our reversal of Rejections A—K. Appeal Br. 4—6.
We need only address independent claim 1 (and Rejection A) as the basis for
our reversal, i.e., the lack of a single barrier layer in physical contact with
both the anode and electrolyte layers, is present in all rejected claims.
Moreover, the Examiner does not rely upon additional references applied to
the remaining claims to remedy the deficiency of Bates and Treger.
12 Nathan et al., US 2006/0032046 Al, published February 16, 2006
(“Nathan”).
13 Shionoiri et al., US 2007/0229271 Al, published October 4, 2007
(“Shionoiri”).
14 Ekchian et al, US 2009/0010462 Al, published January 8, 2009
(“Ekchian”).
15 Kawano et al., US 2009/0159432 Al, published June 25, 2009
(“Kawano”).
16 Krasnov et al., US 2008/0213664 Al, published September 4, 2008
(“Krasnov”).
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Application 12/362,063
OPINION
The Examiner rejects claim 1 (among others) as obvious over Bates in
view of Treger. Final Act. 2. The Examiner finds that Bates teaches a thin
film battery as claimed. Id. The Examiner acknowledges however that
Bates does not specifically teach a single layer barrier layer. Id. at 3.
Rather, the hermetic sealing material of Bates comprises “a polymeric
sealing layer 72, at least one outer layer 74, and an inner metal foil layer 76
disposed between the polymeric layers 72 and 74.” Id. The Examiner also
finds that the “[bjarrier properties of the barrier material 70 may be
attributed to the metal foil layer 76, because the transmission rates of water
vapor and oxygen through the polymeric layers 72 and 74 are relatively high
(Paragraph 0048).” Id. at 4. The Examiner reasons that it would have been
obvious at the time to use the Bates multilayer hermetic seal as a single layer
hermetic seal “because when combined the multilayer seal of Bates ’493
forms a single barrier layer that prevents the transmission of water vapor and
oxygen (Paragraph 0048).” Id. The Examiner further finds that while Bates
does not teach a barrier layer that is borate glass, Treger teaches a moisture
barrier that can include borate glasses. Id. at 5. The Examiner concludes
that it would have been obvious to one skilled in the art at the time to
incorporate the borate glass of Treger in the thin film battery of Bates “in
order to prevent moisture from reaching the anodes.” Id.
Appellants argue that Bates fails to teach the claimed barrier structure,
i.e., a single layer barrier layer formed over and in physical contact with the
anode layer and electrolyte layer. Id. at 9-10. Rather, Appellants urge that
Bates teaches two embodiments, one depicted at Figure 1 and “having a
cover or lid that cooperate[s] with an adhesive 34[,]” which does not teach a
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Application 12/362,063
barrier layer of any kind, and the second embodiment, as shown in Figures 4
and 5 “having a multilayer hermetic sealing material 70 with three layers: a
polymeric inner sealing layer 72 and a polymeric outer layer 74 with an
intermediate metal foil layer 76.” Id. at 10-11 (citing Bates, 143).
Appellants explain that the two polymeric layers, of Figures 4 and 5, do not
act as a hermetic seal and that
it would not be obvious that the metal foil layer 76 acts as the
claimed hermetic seal since (1) the metal foil layer 76 is not
disclosed as being in physical contact with each of the anode
layer and the electrolyte layer and (2) the metal foil layer 76
cannot be in physical contact as this would render the battery of
Bates ’493 inoperable for its intended purpose effectively short
circuiting the battery.
Id. at 11. Thus, Appellants urge that any modification of the Bates
multilayer structure to a single layer structure so that the single layer barrier
layer is in physical contact with the electrode and anode layers would render
the device unsatisfactory for its intended purpose and only through hindsight
can such a modification, albeit an inoperable one, be made. Id.
The preponderance of the evidence favors Appellants’ arguments.
Claim 1 requires “a single layer barrier layer formed over and in physical
contact with each of the anode layer and the electrolyte layer.'1'’ The
Specification explains that “[t]he barrier layer can comprise a single,
homogeneous layer, and may be an amorphous or a crystalline layer.” Spec.
43. Further, Appellants explain that “the barrier layer substantially inhibits
air and water from contacting the anode.” Id. 20. The Examiner recognizes
that Bates, in contrast to claim 1, teaches a multilayer layer design but
reasons that the multilayer hermetic seal of Bates, when combined, forms a
single barrier layer as claimed. Final Act. 4. This position might have
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Application 12/362,063
appeal where each layer is composed of the same material, i.e., the layers are
homogeneous. However here, Bates explains that the layers of the Bates
multilayer barrier material are different and the
[bjarrier properties of the barrier material 70 may be attributed
to the metal foil layer 76, because the transmission rates of water
vapor and oxygen through the polymeric layers 72 and 74 are
relatively high.
Bates 148. Thus, the only layer that “substantially inhibits air and water
from contacting the anode” is the metal foil layer 76 but, the foil layer is not
in physical contact with the anode layer and electrolyte layer as required by
the claims.
The Examiner’s response to Appellants’ arguments, i.e., that
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to use the multilayer hermetic
seal of Bates ’493 as a single hermetic seal layer because when
combined the multilayer seal of Bates ’493 forms a single barrier
layer that prevents the transmission of water vapor and oxygen
(Paragraph 0048) [Ans. 24 and 28]
is insufficient to persuade us otherwise.
The Examiner has not met the initial burden of showing that the
claimed subject matter would have been prima facie obvious over the prior
art of record. On this record, we do not sustain the Examiner’s § 103
rejections.
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CONCLUSION
The Examiner reversibly erred in rejecting claims 1—30 as obvious
over Bates in view of Treger (among other references).
DECISION
For the above reasons, the Examiner’s rejection of claims 1—30 is
reversed.
REVERSED
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