Ex Parte Huang et al

Patent Trial and Appeal Board

Mar 3, 2015

12695386 (P.T.A.B. Mar. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KEVIN HUANG, SHAILESH D. VORA,
MEHRDAD TARTIBI, NICOLAS VORTMEYER,
KEVIN P. LITZINGER, CHUN LU,
and MICHAEL JOSEF SUESS
________________

Appeal 2013-004683
Application 12/695,386
Technology Center 1700
________________

Before TERRY J. OWENS, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an electrochemical storage device, a battery cell
and a bank of cells. Claim 1 is illustrative:
1. An electrical storage device comprising:
an A-gas electrode;
a metallic electrode; and
an anion conducting electrolyte arranged between the
A-gas electrode and the metallic electrode,
Appeal 2013-004683
Application 12/695,386

2
where the A-gas, metallic or both electrode is a reservoir
for ions and where ions are transferred back and forth between
the A-gas and metallic electrodes,
wherein the metallic electrode is solid at operating
temperatures.

The Reference
Tao US 2005/0089738 A1 Apr. 28, 2005
The Rejections
The claims stand rejected as follows: claims 4, 12, and 16 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
Appellant regards as the invention, claims 1-6, 12, 13, 21, 22, and 24-27
under 35 U.S.C. § 102(b) over Tao and claims 7-11, 14-20, and 23 under
35 U.S.C. § 103 over Tao.
OPINION
We reverse the rejection under 35 U.S.C. § 112, second paragraph as
to claims 4 and 12 and affirm it as to claim 16, and affirm the rejections
under 35 U.S.C. §§ 102(b) and 103.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second paragraph, is
whether the claim language, as it would have been interpreted by one of
ordinary skill in the art in light of the Appellants’ Specification, sets out and
circumscribes a particular area with a reasonable degree of precision and
particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).

Appeal 2013-004683
Application 12/695,386

3
Claims 4 and 12
Claims 4 and 12 require that “the metallic electrode is comprised of an
alloy and a solid solution, wherein the alloy comprises any combination of a
plurality of metal formed alloy and the solid solution comprises [any of a
(claim 4) or any of any (claim 12)] combination of a plurality of oxide
formed solid solution.” The Appellants’ Specification states that “the
metallic electrode is comprised of any combination of a two-and-greater-
than-two metal formed alloy and any of any combination of a two-and-
greater-than-two oxide formed solid solution” (Spec. ¶ 46).
The Examiner argues that it is unclear whether “combination” and
“plurality” refer to the number of metals in the alloy or oxide or the number
of alloys or oxides, and it further is unclear whether “plurality” can mean the
number of steps in forming the alloy (Ans. 3, 9-10).
As indicated by the Appellants’ Specification (Spec. ¶ 46), “plurality
of metal formed alloy” and “plurality of oxide formed solid solution” mean,
respectively, two or greater than two metal formed alloys or oxide formed
solid solutions, and “any combination” and “any of a combination” (or “any
of any combination”) mean, respectively, any group of those two or greater
than two alloys or solid solutions.
The Examiner, therefore, has not established that the Appellants’
claims 4 and 12 fail to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. Hence, we reverse the
rejection of those claims under 35 U.S.C. § 112, second paragraph.

Appeal 2013-004683
Application 12/695,386

4
Claim 16
Claim 16 requires that “the second electrode is any solid phase that
holds a fixed partial pressure of oxygen at a fixed temperature, . . .”
The Examiner argues that “[t]he claim is indefinite specifically
because it is unclear how a solid material can have a partial pressure of
oxygen” (Ans. 4).
The Appellants cite to the disclosure in the Specification that “[i]n
discharge mode, oxide-ion anions migrate from high partial pressure of
oxygen side (air side in this case) to low partial pressure of oxygen side
(metal-metal oxide electrode) under the driving force of gradient of oxygen
chemical potential” (Spec. ¶ 40)
1
and asserts that “the claim language as
currently drafted meets the Section 112 requirements” (App. Br. 6-7).
The Appellants’ mere citation to the Specification and assertion that
the claim language is definite do not provide a substantive argument
indicating reversible error in the rejection. Accordingly, we affirm the
rejection of claim 16 under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 102(b)
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).

1
Other relevant disclosures in the Appellants’ Specification are “a second
electrode material which can transfer air to an electrolyte” (¶ 11) and “the
second air electrode can be any solid phase that holds a fixed partial pressure
of oxygen at a fixed temperature” (¶ 46).
Appeal 2013-004683
Application 12/695,386

5
Tao discloses “an electrochemical device that can operate either as a
fuel cell or a battery” (¶ 2) and “features a chemically rechargeable anode,
particularly where the anode comprises a liquid such as a metal or a metal
alloy.” Id. The operating temperature can be about 300ºC to about 1500 ºC
or within other temperature ranges, where “[p]referably, the chosen
temperature range involves producing the anode in a liquid state” (¶ 112).
“[A] solid electrode would form an oxidized portion at the anode/fuel
interface, and the oxidized portion may block the fuel from accessing the
anode” (¶ 46). It is undisputed that one of Tao’s disclosed metals, antimony,
has a melting point of 630.8 ºC (Ans. 6; App. Br. 8).
The Appellant argues that Tao’s only disclosed and exemplified anode
is liquid at operating temperatures and points out that Tao discloses
numerous advantages of a liquid anode (App. Br. 7–9; Reply Br. 3–4).
Tao is not limited to its preferred embodiment or examples. See In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Kohler, 475 F.2d
651, 653 (CCPA 1973); In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re
Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Tao’s disclosures that a solid
anode has disadvantages and that, therefore, a liquid anode is preferred
(¶ 45–46, 112) indicate that the anode can be solid at operating temperatures
but that due to a solid electrode’s disadvantages, an anode which is liquid at
operating temperatures is preferred. Thus, Tao discloses that the device can
comprise either a preferred anode which is liquid at operating temperatures
or a nonpreferred anode which is solid at operating temperatures.
We therefore are not persuaded of reversible error in the rejection
under 35 U.S.C. § 102(b).
Appeal 2013-004683
Application 12/695,386

6
Rejection under 35 U.S.C. § 103
With respect to the rejection under 35 U.S.C. § 103 the Appellants
rely solely upon the arguments set forth with respect to the rejection under
35 U.S.C. § 102(b) (App. Br. 9). Those arguments are not persuasive of
reversible error for the reason given above regarding that rejection.
DECISION/ORDER
The rejection of claims 4, 12, and 16 under 35 U.S.C. § 112, second
paragraph is reversed as to claims 4 and 12 and affirmed as to claim 16. The
rejections over Tao of claims 1-6, 12, 13, 21, 22, and 24-27 under
35 U.S.C. § 102(b) and claims 7-11, 14-20, and 23 under 35 U.S.C. § 103
are affirmed.
It is ordered that 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).
AFFIRMED
sl