Ex Parte Amendola et al

Patent Trial and Appeal Board

Jun 29, 2018

13811013 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/811,013 01/18/2013
83332 7590 06/29/2018
Jonathan P. O"Brien, Ph.D.
Honigman Miller Schwartz and Cohn LLP
650 Trade Centre Way
Suite 200
KALAMAZOO, MI 49002-0402
FIRST NAMED INVENTOR
Steven Amendola
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.
232217/B/335149 2918
EXAMINER
DIGNAN, MICHAEL L
ART UNIT PAPER NUMBER
1723
MAILDATE DELIVERY MODE
06/29/2018 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 STEVEN AMENDOLA, LOIS JOHNSON,
MICHAEL BINDER, MICHAEL KUNZ,
PHILLIP J. BLACK, MICHAEL OSTER,
STEFANIE SHARP-GOLDMAN,
TESIA CHCIUK, and REGAN JOHNSON
Appeal2017-007876
Application 13/811,013
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants 1 appeal the final rejection of
claims 22-26, 28, and 66-69. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as EOS Energy Storage LLC.
Appeal Br. 2.
Appeal2017-007876
Application 13/811,013
Appellants' invention is directed to an electrically rechargeable,
metal-air battery system. Spec. i-fi-1 4, 5. A proposed zinc-air embodiment is
said to be capable of over 200 discharges and charges, with no evidence of
air cathode degradation. Id. at i14.
Claim 22 is illustrative:
22. A battery cell assembly comprising:
a first cell comprising:
a first metal electrode extending horizontally;
a first air electrode opposing the first metal electrode and
extending substantially parallel to the first metal electrode, the
first air electrode and the first metal electrode separated by a
fixed distance across the first air electrode and the first metal
electrode without contacting one another to define a space
therebetween with the first air electrode situated vertically
above the first metal electrode; and
a first aqueous electrolyte disposed within the space
between the first air electrode and the first metal electrode, the
first aqueous electrolyte supported by the first metal electrode;
and
a second cell situated vertically underneath the first cell to
layer the first cell and the second cell in a vertically stacked
configuration, the second cell comprising:
a second metal electrode extending horizontally;
a second air electrode situated vertically above the
second metal electrode and vertically below the first metal
electrode and extending substantially parallel to opposing
surfaces of the second metal electrode and the first metal
electrode without contacting the second metal electrode; and
a second aqueous electrolyte disposed between the
second air electrode and the second metal electrode, the second
aqueous electrolyte supported by the second metal electrode;
wherein the first metal electrode of the first cell contacts the
second air electrode of the second cell by crimping around the
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Application 13/811,013
second air electrode to form an air tunnel between the first
metal electrode and the second air electrode, the air tunnel
defined by a uniform separation distance across opposing
surfaces of the first metal electrode and the second air
electrode, wherein a gas flows horizontally through the air
tunnel between the first cell and the second cell layered in the
stacked vertical configuration, and wherein the first metal
electrode and the second air electrode are substantially
horizontally oriented.
Appeal Br. 11 (Claims App'x) (emphasis added).
Appellants appeal the following rejection:
1. Claims 22-26, 28, and 66---69 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wycliffe (US 4,988,581, issued
Jan. 29, 1991, "Wycliffe") in view of Dengler (US 3,306,774,
issued Feb. 28, 1967, "Dengler").
Appellants' arguments focus on independent claim 22. Appeal Br. 6-
10; Reply Br. 2-7. We select claim 22 as representative. 37 C.F.R.
§ 41.37(c)(l)(iv). Accordingly, claims 23-26, 28, and 66---69 will stand or
fall with each of their respective independent claims.
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding Wycliffe and
Dengler are located on pages 2 to 5 of the Answer. We adopt the
Examiner's findings and well-reasoned conclusions as our own. We add the
following analysis primarily for emphasis.
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Application 13/811,013
Wycliffe's Figure 13, which illustrates a sectional view of an
anode/cathode assembly, is reproduced below.
Figure 13 illustrates features of the anode/cathode assembly, including
anode 25 having side edges 26 with crimped edge portions 27 adapted to
hold air cathode 21.
Appellants argue that Wycliffe fails to disclose every limitation
recited in claim 22. In particular, Appellants assert that Wycliffe is silent
with regard to the requirement that anode 25 and air cathode 21 are
separated by a fixed distance across the first air electrode and the first metal
electrode without contacting one another. Appeal Br. 6; Reply Br. 2-3.
Rather, Appellants contend that "Wycliffe's crimped edge portions (27) of
the anode (25) are adapted to support and hold the air cathode (21) of the
same closed cell such that the anode (25) and the air cathode (21) are in
direct contact with one another." Appeal Br. 6; Reply Br. 4. Appellants
further argue that the applied prior art "fails to disclose a first metal
electrode of a first cell contacting a second air electrode of a second cell by
crimping around the second air electrode to define an air tunnel such that a
gas flows horizontally through the air tunnel." Appeal Br. 9; Reply Br. 5.
Appellants' arguments are not persuasive.
We agree with the Examiner that one skilled in the art would have
reasonably inferred that the crimped electrode depicted in Wycliffe's Figure
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13 forms two half-cells, with the air electrode 21 and the anode 25 being
from different cells. Ans. 6-8. As the Examiner found,
Wycliffe teaches putting the [crimped electrodes] into a slotted
tank ... , and filling the tank up with electrolyte between each
slot, leaving a 'first' metal cathode and 'first' metal anode
spaced apart from each other to form a working cell, with
aqueous electrolyte between the electrodes to provide the ion
transfer medium, while the 'crimped' portion is not filled with
aqueous electrolyte, and is exposed to the air above the
electrolyte level.
Ans. 8 (citing Wycliffe Figs. 16, 18); see also Wycliffe Fig. 20. Thus,
Wycliffe teaches that anode 25 and air cathode 21 are separated by a fixed
distance across the first air electrode and the first metal electrode without
contacting one another. Furthermore, Appellants have not identified
reversible error in the Examiner's finding that Wycliffe's crimped portion
facilitates formation of an air gap between the anode and cathode that, when
modified by Dengler, would have provided a gas flowing horizontally
therethrough. Ans. 9; see Wycliffe 2:7-8, 2:11-12; Dengler Fig. 4.
The Examiner's rejection is not based solely on Wycliffe's features
depicted in Figure 13 as alone or individually teaching the limitations recited
in claim 22. Rather, the Examiner finds that the combined teachings of
Wycliffe at Figures 13-20; 1: 13, 3: 1-31, and 5:53---6: 10, and Dengler at
Figures 1and4; 3:63-64, 1:50-55, and 2:15-32 would have suggested to the
ordinary skilled artisan that modifying Wycliffe's passive, vertically
oriented electrodes to function within Dengler's horizontally oriented and
stacked fuel cell type would have enhanced air flow, reaction area, and cell
efficiency. Ans. 5; see also id. at 3-5. In re Preda, 401 F.2d 825, 826
(CCPA 1968) ("However, in considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
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Application 13/811,013
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.").
Appellants argue that the Examiner's proposed modification of
rearranging Wycliffe's Figure 13 such that air cathode 21 is situated
vertically underneath anode 25 would have rendered Wycliffe unfit for its
intended purpose. Appeal Br. 7. According to Appellants, the proposed
modification would have resulted in "air cathode (21) being entirely
submerged in the liquid electrolyte bath, thereby eliminating the ability to
provide an open air gap exposed to oxygen/air flow between the anode (25)
and the air cathode (21)." Id. at 7-8; see also Reply Br. 3.
We are unpersuaded by these arguments.
As the Examiner reasoned, the ordinary skilled artisan in the battery
assembly arts would have known that incorporating Wycliffe's crimping
method of securing the half-cell connection between a metal anode and an
air cathode requires "securing connections, inlets, outlets, conduits, and the
like" to prevent such cathode submersion in the electrolyte. Ans. 12; see
id.at 11-12. Thus, we agree with the Examiner that, because the ordinary
level of skill is high, implementing the proposed modification would have
no effect on the ability to provide an open air gap between anode 25 and air
cathode 21.
Appellants argue that "Dengler's vertically stacked bipolar cell
configuration of Figure 4 is in an opposite configuration from the claimed
invention with the anodes (48, 60) and cathodes (41, 56) being flipped 180-
degrees." Appeal Br. 8. Appellants further argue such an orientation
"renders Dengler unfit for its intended purpose" because this would have
restricted "the carbon dioxide formed at the anode ( 48) from escaping
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through a compartment ( 49) situated vertically below the anode ( 48)." Id.;
see also Reply Br. 3--4.
We are unpersuaded by these arguments.
Appellants' arguments regarding Dengler's carbon dioxide venting
are premised on bodily incorporation and are not focused on the Examiner's
reason for combining the cited art. It is well established that the obviousness
inquiry does not ask "whether the references could be physically combined
but whether the claimed inventions are rendered obvious by the teachings of
the prior art as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
bane); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference."). In this
instance, the Examiner does not proposed modifying Wycliffe with
Dengler's porous electrodes. Ans. 14. Rather, the Examiner cites Dengler
for the general propositions that 1) electrodes can be stacked
vertically and be provided with horizontally oriented outlets for
reactants and streams and 2) that this general orientation of
electrodes can be applied across a wide variety of embodiments
... and across a wide variety of cell chemistries for metal-air
batteries.
Id. at 14--15. Thus, Appellants' arguments have not identified reversible
error in the Examiner's conclusion that it would have been obvious to stack
Wycliffe's electrodes as suggested by Dengler so that the second air
electrode was situated vertically above the second metal electrode and
vertically below the first metal electrode, since this is one of two possible
and equivalent configurations. Id. at 5, 15.
On this record, the preponderance of the evidence favors the
Examiner's obviousness conclusion.
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DECISION
The Examiner's decision is affirmed.
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 )(iv).
ORDER
AFFIRMED
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