Ex Parte Grimminger et al

Patent Trial and Appeal Board

Oct 12, 2018

14553600 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/553,600 11/25/2014
24972 7590 10/16/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Jens Grimminger
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.
BOSC.P9056US/l 1604095 2134
EXAMINER
HERNANDEZ-DIAZ, JOSE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS GRIMMINGER and MARCUS WEGNER
Appeal 2017-011035
Application 14/553,600
Technology Center 1700
Before KAREN M. HASTINGS, A VEL YN M. ROSS and
LILAN REN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-10 and 122 under 35 U.S.C. § 103(a) as unpatenable
over the combined prior art of Dudley (US 2002/0197535 Al, published
Dec. 26, 2002) and Hisamitsu (US 8,450,011 B2, published May 28, 2013).
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Appellant is the assignee, Robert Bosch GmbH, which is also stated to be
the real party in interest (Appeal Br. 2).
2 As Appellant acknowledges, it is clear that the Examiner included claim 3
in the rejection (Appeal Br. 6; Ans. 2, 5). Claim 11 was cancelled by
amendment filed Jan. 24, 2017, which was entered by the Examiner in the
Advisory Action mailed Mar. 3, 2017.
Appeal 2017-011035
Application 14/553,600
Claim 1 is illustrative ( emphasis added to highlight key limitation in
dispute):
Claim 1. A method for producing an electrode for an
electrochemical storage system, comprising:
(a) applying an electrode slurry onto at least one side
of a current collector to form an electrode coating on the current
collector, the electrode slurry having at least one active
material;
and
(b) applying an inhibitor material, with a
predetermined width, onto adjacent regions of the electrode
coating applied on the current collector, the inhibitor material
being impermeable to liquid active material and to forms of the
active material dissolved in an electrolyte, including a precursor
of the active material, an end product in the discharge of the
electrochemical storage system, and intermediate products in
the operation of the electrochemical storage system, wherein
the inhibitor material is applied so as to surround the entire
periphery of the electrode coating.
Claim 12 is similar to claim 1, reciting "wherein the inhibitor material
is applied so that it completely surrounds the electrode coating along an edge
periphery of the electrode coating" (Appeal Br. 9; Claims Appendix).
Appellant only presents arguments directed to this common feature of
independent claims 1 and 12 (Appeal Br. 4--6).
ANALYSIS
Upon consideration of the evidence in this appeal and each of
Appellants' contentions, we determine that the preponderance of evidence
on this record supports the Examiner's conclusion that the subject matter of
Appellant's independent claims 1 and 12 (each directed to a method of
producing an electrode) is unpatentable over the applied prior art. We adopt
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Application 14/553,600
the Examiner's findings of fact (Ans. 2---6), the preponderance of which
support the conclusion of law articulated by the Examiner in the obviousness
rejection.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). "[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418.
Appellant first argues that Risa does not teach or suggest that its
insulating material completely surrounds the electrode (Appeal Br. 4; see
also Reply Br. 2). Appellant also argues that one would not have combined
the teachings of Hisamitsu and Dudley since "preventing shorts is not the
purpose of Dudley's edge material" (Reply Br. 2; see also Appeal Br. 5
stating that Dudley's material is applied for a different purpose than
Hisamitsu's insulator edge).
Contrary to Appellant's position, Dudley does use its edge insulator
material to prevent short circuits (Dudley ,r 16; e.g., Ans. 2; Final Action 4;
see also Ans. 10, 11 ).
Furthermore, these arguments fail to adequately consider the prior art
as a whole, and do not adequately address the Examiner's obviousness
position (generally Ans.). See In re Keller, 642 F.2d 413, 425-26 (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
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Application 14/553,600
reference .... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art."); see
also e.g., In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (it is well
established that in evaluating references it is proper to take into account not
only the specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom).
As aptly pointed out by the Examiner, one of ordinary skill in the art
would have readily inferred that the insulator edges 43 of Hisamitsu may
surround the entire perimeter of its electrodes (e.g., Ans. 7, 8). Indeed, it is
apparent that one of ordinary skill would have reasonably used the insulator
edge material of Dudley on the entire periphery of the cathode even absent
reliance on Hisamitsu. 3 In any event, Appellant has not asserted that the
proposed modification of Dudley to include insulator edges to surround the
entire periphery of its electrode coating as suggested in Hisamitsu would
3 Indeed, Appellant admits it was known to apply an electrode slurry onto a
current collector foil (e.g., Spec. 7:8-14, Fig. 1). To apply inhibitor material
around the entire periphery of the cathode coating of the admitted prior art
Fig. 1 would have been obvious in light of the known use of
inhibitor/insulator material for cathode edges as exemplified in either of
Dudley or Hisamitsu. An applicant cannot defeat an obviousness rejection
by asserting that the cited references fail to teach or suggest elements which
the applicant has acknowledged are taught by the prior art. Constant v.
Advanced Micro-Devices, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) ("A
statement in a patent that something is in the prior art is binding on the
applicant and patentee for determinations of anticipation and obviousness.")
and In re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an
applicant that certain matter is prior art is an admission that the matter is
prior art for all purposes).
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Application 14/553,600
have been beyond the capabilities of a person of ordinary skill in the art.
Absent such assertion or adequate evidence, we "take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ," and find a person of ordinary skill in the art would have overcome
those difficulties within their level of skill. KSR, 550 U.S. at 418; see also
id. at 421 ("A person of ordinary skill is also a person of ordinary creativity,
not an automaton."); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry
set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ (emphasis omitted)); In re Sovish, 769 F.2d 738, 743
(Fed. Cir. 1985) (holding that one of ordinary skill is presumed to be skillful
and concluding an argument that "presumes stupidity rather than skill" is not
persuasive).
Furthermore, Appellant's argument that a stripe coating method as
discussed in Dudley would not have resulted in the recited step of applying
the inhibitor material around the entire periphery of the cathode (Reply Br.
3) falls short of showing harmful error. As pointed out by the Examiner,
Dudley also teaches other coating methods may be used (e.g., Final Action
8).
Accordingly, Appellant has not provided persuasive technical
rationale or any credible evidence to refute the Examiner's obviousness
determination (generally Ans.; Appeal Br.; Reply Br.). KSR, 550 U.S. at
416 ( the predictable use of prior art elements according to known methods
for their established functions is likely to be obvious when it does no more
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than yield predictable results). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
The decision of the Examiner 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).
AFFIRMED
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