Ex Parte Pozin et al

Patent Trial and Appeal Board

Aug 29, 2016

12423195 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/423, 195 04/14/2009
138364 7590 08/31/2016
Marshall, Gerstein & Bornn LLP/Duracell
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
FIRST NAMED INVENTOR
Michael Pozin
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.
32549/50296 8081
EXAMINER
GATEWOOD, DANIELS
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL POZIN,
NIKOLAI NIKOLAEVICH ISSAEV, and
MICHAEL DEAN SLIGER
Appeal2015-001539
Application 12/423, 195
Technology Center 1700
Before BEYERL YA. FRANKLIN, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-3 and 5-14. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
To give Appellants a fair and full opportunity to respond, we
designate portions of our affirmance as constituting NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 Appellants identify the real party in interest as The Gillette Company.
Appeal Brief filed July 21, 2014 ("App. Br."), 1.
2 Final Office Action mailed May 9, 2014 ("Final Act.").
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Application 12/423, 195
The subject matter on appeal relates to a method of making lithium
primary cells having a cathode of iron disulfide. Spec. 1, 11. 5-6. Claim 1,
reproduced below, is illustrative of the claims on appeal.
1. A method for treating a cathode electrode assembly, the
method comprising the steps of:
providing a cathode electrode assembly comprising a
cathode mixture comprising iron disulfide coated on to at least
one side of a substrate;
contacting the cathode electrode assembly with a solution
comprising acid having a pH value between about 2 and about 4
in a manner so as to remove impurities from the cathode
electrode assembly; and
drying the cathode electrode assembly under conditions
that result in a cathode electrode assembly moisture content of
less than about 2500 ppm.
REJECTIONS ON APPEAL
1. Claims 1-3, 6-11, and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tagami3 in view of Ramani4, Marple5, and
further in view of Issaev6;
3 Tagami, JP 2006-127872, published May 18, 2006 (hereinafter "Tagami").
4 Ramani et al., Investigation of Nafion® IHPA composite membranes for
high temperature/low relative humidity PEMFC operation, 232 J.
Membrane Science 31, 31--44 (2004) (hereinafter "Ramani").
5 Marple et al., US 2005/0277023 Al, published Dec. 15, 2005 (hereinafter
"Marple").
6 Issaev et al., US 2007 /0089289 Al, published Apr. 26, 2007 (hereinafter
"Issaev").
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Application 12/423, 195
2. Claims 5 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tagami in view of Ramani, Marple, and Issaev,
and further in view of Khudaish 7; and
3. Claim 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Tagami in view of Ramani, Marple, and Issaev, and further in
view ofKubota8.
ANALYSIS
After review of Appellants' arguments, we determine that Appellants
have not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, and by the
Examiner in the Answer. See generally Ans. 2-23.
Appellants' substantive arguments for patentability are based on
limitations recited in claim 1, including separately rejected claims 5, 12, and
13. All claims therefore stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue that none of the references relied upon by the
Examiner teach or suggest "contacting the cathode electrode assembly with
a solution comprising acid having a pH value between about 2 and about 4
in a manner so as to remove impurities from the cathode electrode
assembly," as recited in claim 1. App. Br. 2--4.
7 Khudaish, Mass and electron-transfer conditions for the electrochemical
oxidation of hydrogen sulfide at vanadium pentoxide film modified
electrode, 131 Sensors and Actuators B 223, 223-229 (2008) (hereinafter
"Khudaish").
8 Kubota et al., JP 09-231963 A, published September 5, 1997 (hereinafter
"Kubota").
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Application 12/423, 195
lssaev teaches forming a cathode by preparing a cathode material
slurry, coating a current collector (substrate) with the cathode material slurry
to form a cathode, and then vacuum baking the cathode to remove surface
moisture from the cathode to reduce gassing (production of carbon dioxide
gas). Issaev i-fi-128, 34, 43. Issaev teaches that the cathode material can
include iron disulfide. Id. at i-f 13. Issaev teaches vacuum baking the
cathode until the cathode material includes about 600 ppm of water or less.
Id. at i-f 45.
Tagami teaches that iron disulfide processed from natural pyrite ores
contains various impurities such as zinc, copper, and lead. Tagami i1 4; see
also Appellants' Spec. 1, 11. 18-20. Tagami also teaches that iron disulfide
oxidizes easily in air with humidity. Tagami i1 4; see also Spec. 2, ll, 4---6
(teaching that iron disulfide my react with atmospheric moisture and/ or aid
to form various impurities such as H2S, H2S04, FeSQ4, FeSQ4·nH20),
Fe2(SQ4)3, Fe2(SQ4)3·nH20, and others.). Tagami teaches that when these
impurities are present in the iron disulfide cathode it reduces the storage
performance of the resultant battery. Tagami i-f 10; see also Spec. 2, 11. 6-11
(teaching that when an iron disulfide material with impurities is introduced
in an assembled cell, the cell's overall performance and safety is reduced.).
To address this problem, Tagami teaches that a method of purifying an iron
disulfide material by contacting the material with an acidic solution of
0.05 Nor above, preferably a hydrochloric acid, a nitric acid, or a sulfuric
acid. Id. at Abstract, i-fi-f 11, 13; see also Appellants' claim 3 (which recites
sulfuric acid as an acid having a pH value between about 2 and about 4).
Although Tagami teaches purifying the natural iron disulfide material
and not the cathode electrode assembly that includes the iron disulfide
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Application 12/423, 195
material, Tagami's teaching that using iron disulfide with impurities in a
battery reduces the storage performance of the battery, as well as
Appellants' admission "in the Background of the Invention" that using iron
disulfide with impurities in an assembled cell would reduce the cell's overall
performance and safety features, would have led one of ordinary skill in the
art, through no more than ordinary creativity, to reduce impurities in Issaev's
iron disulfide containing cathode assembly by washing the assembly with a
sulfuric acid solution to improve performance and safety of the assembly.
See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (Appellants
representations in their Specification may be used in determining the
patentability of a claimed invention); see also KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (in making an obviousness determination one "can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ").
Appellants argue that Issaev does not teach or suggest the cathode
electrode assembly has a moisture content of less than 2500 ppm as required
by claim 1. App. Br. 4. This argument is not persuasive because Issaev
teaches the water content of the cathode, which includes a cathode material
that is coated on a current collector (substrate) (i-f 23) (i.e., a cathode
electrode assembly), can include about 600 ppm of water or less (i-f 27),
which is within the moisture content range recited in claim 1.
For the reasons above, we sustain the Examiner's rejection of claim 1,
but because our fact finding and reasoning for combining the prior art
deviates somewhat from that of the Examiner, we designate such as a new
ground of rejection. In re Leithem, 661F.3d1316, 1319 (Fed. Cir. 2011)
("Mere reliance on the same statutory basis and the same prior art
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references, alone, is insufficient to avoid making a new ground of rejection
when the Board relies on new facts and rationales not previously raised to
the applicant by the examiner.").
Appellants argue that there is no reason to combine the teachings of
Ramani with Tagami to reach the feature of claim 1 that requires "contacting
the cathode electrode assembly with a solution comprising acid in a manner
so as to remove impurities from the cathode electrode assembly." App.
Br. 5. Although we agree with Appellants that one of ordinary skill in the
art would have no reason to apply the teachings of Ramani, which teaches
boiling a membrane electrode assembly in a sulfuric acid solution to enable
the Nafion® in the membrane to regain protonic form (Ramani 32, 34 (3.6
MEA fabrication), to Tagami's iron disulfide cathode material, which does
not conduct protons (App. Br. 5), we nevertheless find in the new ground of
rejection under 37 C.F.R. § 41.50(b), that there is a reason for combining
Issaev and Tamagi to arrive at the "contacting" step of claim 1.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1-3, 6-11, and 14
over Tagami in view of Ramani, Marple, and further in view of Issaev,
claims 5 and 13 over Tagami in view of Ramani, Marple, and Issaev, and
further in view of Khudaish, and claim 12 over Tagami in vie wof Marple,
Issaev, and further in view of Kubota are affirmed. Because our affirmance
of these rejections relies upon findings of fact and reasoning that differ from
the Examiner, we designate our affirmance of these rejections as constituting
new grounds of rejection.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant
may again appeal to the Hoard pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
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Application 12/423, 195
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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