Ex Parte Farmer

Patent Trial and Appeal Board

Jul 5, 2016

12890099 (P.T.A.B. Jul. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/890,099 09/24/2010 Joseph C. Farmer
24981 7590 07/07/2016
Lawrence Livermore National Security, LLC
LA WREN CE LIVERMORE NA TI ON AL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
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.
IL-12180 7645
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
07/07/2016 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH C. FARMER
Appeal2015-001726
Application 12/890,099
Technology Center 1700
Before JEFFREY T. SMITH, MONTE T. SQUIRE, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5, 11, 12, and 14. We have jurisdiction. 35
U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, the Real Party in Interest is Lawrence
Livermore National Security, LLC. Appeal Br. 2.
Appeal2015-001726
Application 12/890,099
STATEMENT OF THE CASE
Appellant describes the present invention as relating to high-
performance rechargeable batteries with fast solid-state ion conductors.
Spec. i-f 3. Claim 1 is illustrative of the claimed subject matter and is
reproduced below with emphasis added to highlight disputed claim
limitations:
1. A rechargeable battery apparatus, comprising:
an enclosure,
a first electrode operatively connected to said enclosure wherein
said first electrode is an electro-catalytic anode,
a second electrode operatively connected to said enclosure
wherein said second electrode is an oxygen cathode,
a suspended flowing material in said enclosure wherein said
suspended flowing material comprises nanoparticles and
wherein said suspended flowing material is directly connected to
said first electrode wherein said first electrode is an electro-
catalytic anode,
an electrolyte and separator between said first electrode and said
second electrode,
an oxygen selective membrane between said first electrode and
said second electrode,
a suspended flowing material storage tank containing said
suspended flowing material wherein said suspended flowing
material storage tank is connected to said enclosure by flow lines
for flowing said suspended flowing material into and out of said
enclosure,
a pump for circulating said suspended flowing material from said
suspended flowing material storage tank into and out of said
enclosure, and
a heat transfer unit connected to said suspended flowing material
in said suspended flowing material storage tank.
2
Appeal2015-001726
Application 12/890,099
Appeal Br.2 26 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Kao
Lefebvre
Faris
Nakanishi et al.
(hereinafter "Nakanishi")
us 5,372,691
US 2003/0069129 Al
US 2006/0127731 Al
US 2010/0151336 Al
REJECTIONS
Dec. 13, 1994
Apr. 10, 2003
June 15, 2006
June 17, 2010
The Examiner withdrew rejection of claims 1, 2, 5, 11, 12, and 14 as
obvious over Lefebvre in view of Faris and Kao. Ans. at 5. The Examiner
also withdrew rejection of claim 3 as obvious over Lefebvre, Faris, and Kao
in further view of Nakanishi. Id. On appeal, the Examiner entered new
rejections. Id. at 2-5.
In light of the Examiner's \'l1ithdra\'l1al of rejections and adding ne\'l/
rejections, the Examiner now maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 5, 11, 12, and 14 are rejected under 35
U.S.C. § 103 as unpatentable over Lefebvre in view of Faris. Ans. 2.
Rejection 2. Claim 3 is rejected under 35 U.S.C. § 103 as
unpatentable over Lefebvre and Faris in further view of Nakanishi.
2 In this decision, we refer to the Final Office Action mailed April 10, 2014
("Final Act."), the Appeal Brief filed July 8, 2014 ("Appeal Br."), the
Examiner's Answer mailed October 27, 2014 ("Ans."), and the Reply Brief
filed November 20, 2014 ("Reply Br.").
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Appeal2015-001726
Application 12/890,099
ANALYSIS
Each of the two independent claims on appeal, claims 1 and 11, recite
"an oxygen selective membrane between said first electrode and said second
electrode." Appeal Br. 26-27 (Claims Appendix). Appellant argues that the
Examiner has not adequately identified this teaching in the cited prior art
references. Appeal Br. 12 and 18; Reply Br. 9. Based on the present record,
we agree.
The Specification states, in the context of its Figure 2, that "[ o ]xygen
or air 207 provides selective transport of molecular oxygen 208 through
oxygen selective membrane 209 to electrolyte and separator 205." Spec.
i-f 45. Based on the Specification and the language of claims 1 and 11, we
agree with Appellant that the recited "oxygen selective membrane" is a
separate claim element than the recited "electrolyte and separator between
said first electrode and said second electrode." Appeal Br. 18. Moreover,
because the "oxygen selective membrane" must be selective, we construe
this term as being a membrane that readily allows transport of oxygen
through it while limiting the transport of other molecules.
In the Final Action, the Examiner construes "oxygen selective
membrane" as being the separator and states that it would have been obvious
to modify Lefebvre to include such a separator. Final Act. 3. But, as
explained above, these elements are distinct. In the new ground of rejection,
the Examiner construes "oxygen selective" as meaning that oxygen
permeates the membrane. Ans. 6. Based on this construction, the Examiner
appears to find that the separator the Examiner states is inherent in
Lefebvre's batteries would be oxygen selective because it "inherently
transports material derived from the air cathode .... " Ans. 4. The
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Appeal2015-001726
Application 12/890,099
Examiner's claim construction, however, is in error because it does not
account for the word "selective." Cf Application of Miller, 441 F.2d 689,
694 (C.C.P.A. 1971) ("All words in a claim must be considered in judging
the patentability of that claim against the prior art.") (internal quotes and
citation omitted). The Examiner provides no citations to the record that
establish an "oxygen selective membrane" in the cited art (as that term is
construed above) and provides no persuasive rationale for why a properly-
construed "oxygen selective membrane" is inherent in the prior art.
Therefore, based on the present record, we do not sustain the
Examiner's rejection of claims 1 and 11. We likewise do not sustain the
Examiner's rejection of claims 2, 5, 12, and 14 because those claims depend
from claim 11.
In rejecting claim 3, the Examiner additionally relies on the Nakanishi
reference. Ans. 3. The Examiner's explanation of Nakanishi (Ans. 5) does
not cure the deficiency with respect to the oxygen selective membrane. We
thus do not sustain the Examiner's rejection of claim 3 because it depends
from claim 1.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-3, 5, 11, 12, and 14.
REVERSED
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