Ex Parte Marple et al

Patent Trial and Appeal Board

Mar 31, 2016

13646954 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/646,954 10/08/2012
133724 7590
McDonald Hopkins, LLC
600 Superior A venue, East
Suite 2100
Cleveland, OH 44114
04/04/2016
FIRST NAMED INVENTOR
Jack W. Marple
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.
40410-00758 1036
EXAMINER
RHEE,JANEJ
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
ip@mcdonaldhopkins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK W. MARPLE and MICHAEL W. WEMPLE
Appeal2014-004969
Application 13/646,954
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
BEST, Administrative Patent Judge.
uECISION ON APPEAL
The Examiner finally rejected claims 1-13 of Application 13/646,954
under 35 U.S.C. § 103(a) as obvious. Final Act. (May 21, 2013).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 Eveready Battery Co. is identified as the real party in interest. App. Br. 4.
Appeal2014-004969
Application 13/646,954
BACKGROUND
The '954 Application describes lithium ion batteries comprising a
lithium negative electrode and an iron disulfide positive electrode. Spec.
i-f 2. In particular, the positive electrode includes iron disulfide particles
having a specific small average particle size range, which is alleged to
provide desirable properties in both low- and high-rate applications. Id.
Claim 1 is the only independent claim in the '954 Application and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. An electrochemical battery cell comprising:
a housing;
a negative electrode comprising lithium;
a positive electrode comprising a cathode mixture
including naturally occurring pyrite coated onto at least a
portion of each side of a thin metal strip, wherein the natural
pyrite comprises iron disulfide particles having a mean
diameter of a volume distribution for the iron disulfide particles
that is between 1 and 19 µm;
an electrolyte mixture, comprising at least one salt
dissolved in at least one non-aqueous organic solvent, disposed
within the housing;
a separator disposed between the negative electrode and
the positive electrode; and
wherein the negative electrode, positive electrode, and
the separator form a spiral wound cylindrical electrode
assembly.
App. Br. Claims App. 1 (emphasis added).
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Appeal2014-004969
Application 13/646,954
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-5, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination ofEguchi2 and Kashiwabara. 3 Final
Act. 2; Non-Final Act. 2 (November 8, 2012).
2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Eguchi, Kashiwabara, and Webber '683. 4 Final
Act. 2; Non-Final Act. 3.
3. Claims 9-11 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Eguchi, Kashiwabara, Webber '054, 5
and Iwamoto. 6 Final Act. 2; Non-Final Act. 3.
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Eguchi, Kashiwabara, and Lam. 7 Final Act. 2; Non-
Final Act. 5.
DISCUSSION
Claim I-the only independent claim in the '954 Application-states,
in relevant part, that the positive electrode comprises iron disulfide particles
having a mean diameter of a volume distribution between 1 and 19 µm. The
Examiner found that Eguchi describes a positive electrode comprising iron
2 US 2005/0106458 Al, published May 19, 2005.
3 JP 56-128577, published October 8, 1981.
4 US 5,219,683, issued June 15, 1993.
5 US 6,218,054 B 1, issued April 17, 2001.
6 US 2002/0039677 Al, published April 4, 2002.
7 US 2006/0035147 Al, published February 16, 2006.
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Appeal2014-004969
Application 13/646,954
disulfide particles satisfying this claim limitation. Non-Final Act. 2. The
Non-Final Action, however, does not provide a specific site where Eguchi
describes such an electrode.
Appellants argue that Eguchi only describes the use of iron disulfide
particles having a particle size of between 1 and 60 µm, preferably 20-40
µm. Appeal Br. 9; see also id. at 6 (citing Eguchi i-f 46). Appellants further
argue that Eguchi does not describe the average diameter of the volume
distribution of its particles. Id. at 9; Reply Br. 1-2.
In response, the Examiner does not direct our attention to any
description in Eguchi of the mean diameter of the volume distribution of its
iron disulfide particles. See Answer 4--5. Rather, the Examiner asserts that
"[i]t would have been obvious to one having ordinary skill in the art at the
time applicant's invention was made to provide [the] claimed range [of] 1-
19um [sic, µm] since it overlaps within prior art Eguchi' s range of 1---60um
[sic, µm]." Id. at 4.
On the record before us, we are constrained to reverse the Examiner's
rejection of claim 1. Eguchi provides upper and lower limits for the size of
its iron disulfide particles. Eguchi, however, does not provide any
information regarding either the numerical distribution of particle particles
within its size range, or the volume distribution of particles within the size
range. 8 In the absence of this information, a person of ordinary skill in the
8 It is important to note that the mean diameter of the numerical distribution
( Inidi) d h d" f h 1 d" "b . ( LVidi) b ~ I ni an t e mean iameter o t e vo ume 1stn ut10n ~ I vi can e
very different. See generally Warren H. Finlay, The Mechanics of Inhaled
Pharmaceutical Aerosols: An Introduction 3-12 and (Academic Press
2001). Because of this difference, it is important to understand which value
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Appeal2014-004969
Application 13/646,954
art would have no reason to believe that Eguchi describes the use of particles
having a mean diameter of the volume distribution of between 1 and 19 µm.
Thus, the Examiner's finding that Eguchi describes or suggests the use of
iron disulfide particles with the claimed mean diameter of the volume
distribution amounts to mere speculation.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-
13 of the '954 Application.
REVERSED
is either is claimed or reported in a prior art reference. An apples-to-apples
comparison is required.
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