EXIDE TECHNOLOGIES

Patent Trials and Appeals Board

Aug 25, 2020

13664871 - (D) (P.T.A.B. Aug. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/664,871 10/31/2012 Sudhakar Jagannathan EXD0019US 8115
23413 7590 08/25/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
OHARA, BRIAN R
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUDHAKAR JAGANNATHAN, JOHN HAROLD MILLER,
LAYNA LANIER MENDLINGER, and TRAVIS ZACHARY TORREY
Appeal 2019-003285
Application 13/664,871
Technology Center 1700
Before JEFFREY B. ROBERTSON, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–24. Appeal Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents: Specification
filed October 31, 2012 (“Spec.”); Final Office Action mailed November 29,
2017 (“Final Act.”); Appeal Brief filed October 29, 2018 (“Appeal Br.”);
and Examiner’s Answer mailed January 10, 2019 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Exide
Technologies. Appeal Br. 2.
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Application 13/664,871

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We affirm.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to an absorbed glass mat (AGM)
valve regulated lead-acid (VRLA) battery. Spec. 3. Claim 1, reproduced
below, is illustrative of the claimed subject matter (Appeal Br., Claims App.
13):
1. An absorbed glass matt (AGM) valve regulated lead-acid
(VRLA) battery, comprising:
a positive plate comprising a positive active material;
a negative plate comprising a negative active material;
wherein the negative active material comprises
a composition comprising a carbon additive;
an AGM separator;
and an electrolyte;
wherein the positive plate, the negative plate, the
separator, and the electrolyte are disposed in a container
comprising a valve; and
wherein the electrolyte is present in an amount that
ranges from 100 to 150 % by volume based on the total pore
volume of the separator.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chalasani US 6,265,108 B1 July 24, 2001
Boden et al.
(hereinafter “Boden”)
US 2009/0325068 A1 December 31, 2009

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Dickinson, V et al.
(hereinafter
“Dickinson”)
US 2010/0015531 A1 January 21,2010
Wang US 2011/0274969 A1 November 10, 2011
Atanassova et al.
(hereinafter
“Atanassova”)
WO 2011/053670 A1,
citations to US
2012/0211703 A1
May 5, 2011
REJECTIONS
1. The Examiner rejected claims 1–9 and 15–24 under 35 U.S.C.
§ 103(a) as unpatentable over Chalasani and Atanassova. Final
Act. 2–7.
2. The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a)
as unpatentable over Chalasani, Atanassova, and Dickinson. Final
Act. 7–9.
3. The Examiner rejected claims 12–14 under 35 U.S.C. § 103(a) as
unpatentable over Chalasani, Atanassova, Dickinson, Boden, and
Wang. Final Act. 9–12.

OPINION
Rejection 1
Appellant presents separate arguments with respect to the claims 1, 7,
and 17–24 subject to this rejection. See Appeal Br. 5–11. We select claims
1, 7, and 21–24 as representative for disposition of this appeal, with the
patentability of the other claims standing or falling with claims 1, 7, and 21–
24. 37 C.F.R. § 41.37(c)(1)(iv).
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Claim 1
The Examiner’s Rejection
In rejecting claim 1 as obvious over Chalasani and Atanassova, the
Examiner found Chalasani discloses an absorbed glass matt (AGM) valve
regulated lead-acid battery (VRLA) having a positive plate, negative plate,
where the negative plate includes an AGM separator and electrolyte. Final
Act. 2. The Examiner found Chalasani discloses the electrolyte is present in
an amount over 100% by volume based on the total pore volume of the
separator, as recited in claim 1, because Chalasani discloses the VRLA
battery is in a flooded state. Id. (citing Chalasani, col. 1, ll. 55–57). The
Examiner found Chalasani does not disclose a negative plate including a
negative active material where the negative active material includes a
composition comprising a carbon additive. Id. at 3. The Examiner found
Atanassova discloses a valve regulated lead-acid battery including a negative
active material comprises carbon additive (carbon black). Id. (citing
Atanassova ¶ 12). The Examiner determined it would have been obvious to
have modified Chalasani to include a carbon additive in the negative active
material to increase electrical charge conductivity of the active material in
the discharge state, thereby improving charge acceptance and increasing
mechanical properties of the electrode. Id. (citing Atanassova ¶¶ 7, 11).

Appellant’s contentions
Appellant acknowledges that Chalasani discloses some of the
separator material is flooded, but Appellant argues Chalasani discloses an
additional separator material that provides a surface for oxygen reduction
reactions that is only moistened, which does not teach or suggest the
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electrolyte amount recited in claim 1. Appeal Br. 6. Appellant contends that
although Atanassova discloses a battery paste useful in two different types of
batteries, Atanassova does not disclose a single-flooded VRLA battery. Id.
at 7.

Issue
Did Appellant establish sufficiently that the Examiner reversibly erred
in determining the valve regulated lead-acid battery recited in claim 1 would
have been obvious over Chalasani and Atanassova?

Discussion
We are not persuaded by Appellant’s argument that Chalasani fails to
disclose a separator with an electrolyte present “in an amount that ranges
from 100 to 150% by volume based on the total pore volume of the
separator” as recited in claim 1. Appellant’s main argument is the
“additional separator material 32” disclosed in Chalasani is only
“moistened” and, as a result, Chalasani does not disclose the amount of
electrolyte recited in claim 1. Appeal Br. 6–7. However, as the Examiner
points out, the rejection does not rely on separator material 32, but rather
separators 30 as disclosed in Chalasani. Ans. 14–15. As the Examiner
further explains, Chalasani discloses separators 30 are “soaked” in
electrolyte such that the separators would contain “at least 100% by volume”
of electrolyte and overlap the range recited in claim 1. Id. (citing Chalasani,
col. 1, ll. 55–57; Spec. 4). The Examiner also points out that claim 1 does
not exclude additional separators, such as separator 32 in Chalasani, from
being present. Id. at 14.
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We agree with the Examiner that Chalasani discloses separators with
electrolyte present in amounts overlapping claim 1. That is, Chalasani
discloses a VRLA battery that has “electrolyte in a flooded state” where the
“separators [are] fully submerged in the electrolyte.” Chalasani, col. 1, ll.
55–57. Chalasani discloses separators 30 are fully submerged in electrolyte
and separator material 32 is in contact with the electrolyte and is “always
moistened with electrolyte.” Id. at col. 2, ll. 37–41; Fig. 1. The
Specification describes that “saturated” AGM batteries means that “the
AGM system is flooded and that there is excess electrolyte within the cell.”
Spec. 2. The Specification also defines “saturated” as “an amount of
electrolyte that is 100% by volume based on the total pore volume of the
separator.” Id. at 4. Thus, Chalasani discloses separators having electrolyte
present in amounts overlapping claim 1. In addition, because Chalasani
discloses that electrolyte is present in a “flooded state” and the Specification
describes “flooded” as including “excess” electrolyte within the cell,
Chalasani discloses separators having electrolyte present in amounts
overlapping the amounts of “greater than 100” % by volume recited in
claims 17–20. See Ans. 16.
As to the presence of separator material 32 in Chalasani, we agree
with the Examiner that claim 1, which recites a “valve regulated lead-acid
(VRLA) battery, comprising” and “the negative active material comprising,”
both of which utilize the open-ended transitional phrase “comprising” that
does not exclude the presence of additional separator materials with
electrolyte presence in amounts less than those recited in claim 1.
We are also not persuaded by Appellant’s argument that, because
Atanassova discloses “[t]he present battery paste may be used in both
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flooded cell and valve regulated lead-acid batteries” (Atanassova ¶ 64),
Atanassova “in no way indicates a teaching for a single flooded, VRLA
battery.” Appeal Br. 7. The Examiner interpreted Appellant’s argument to
be that Atanassova is non-analogous art. Ans. 15. To the extent Appellant’s
argument is that Atanassova is non-analogous art, we agree with the
Examiner that Atanassova is analogous art to the instant invention because
Atanassova discloses valve regulated lead-acid batteries (Atanassova ¶¶ 5,
64). Id.
However, we understand Appellant to be arguing that Atanassova
discloses a paste for either a flooded cell battery or a valve regulated lead-
acid battery, but not a single battery that is a valve regulated lead-acid
battery in a flooded state. We are not persuaded by this argument because it
does not address the Examiner’s rationale for combining Chalasani with
Atanassova, which as discussed above, is to obtain the advantages of the
carbon additive disclosed in Atanassova, namely increasing electrical
conductivity of the active material in the discharge state in order to improve
charge acceptance and increased mechanical properties of the electrode.
Final Act. 3 (citing Atanassova ¶¶ 7, 11). Appellant does not provide a
sufficient argument that a battery that is both a valve regulated lead-acid
battery and in a flooded state would not also benefit from the carbon additive
in Atanassova.
Indeed, in KSR, the Supreme Court explained, “[w]hen a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, §103 likely
bars its patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
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(2007). “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421. Moreover, the Supreme Court stated “[a]s
our precedents make clear, however, the analysis [under 35 U.S.C. § 103]
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. Accordingly, Appellant has not demonstrated the Examiner’s reliance
on Atanassova constitutes reversible error.

Claim 7
Claim 7 depends from claim 1 and further recites “wherein the carbon
additive has a specific surface area that ranges from 5 m2/g to 50 m2/g.”
The Examiner found that Chalasani, as modified by Atanassova,
includes a carbon additive with a surface area of about 80 m2/g to about
2100 m2/g, which does not explicitly disclose the claimed range of 5 m2/g to
50 m2/g, but that it would have been obvious to select a surface area close
enough to the upper portion of the claimed range such that one of ordinary
skill in the art would have expected the same results, because the specific
area of the carbon additive in the prior art is close to the claimed range. Id.
at 4–5; Ans. 17–18.
Regarding claim 7, Appellant argues Atanassova does not teach or
suggest a carbon additive having a specific surface area of 5 m2/g to 50 m2/g.
because the lower range of “about 80 m2/g” is more than a 50% increase
over the upper end value in Atanassova, which does not overlap claim 7. Id.
at 10.
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We are not persuaded by Appellant’s argument. As the Examiner
further explained in the Answer, the rejection does not rely on overlapping
ranges, but rather that the range disclosed in Atanassova is sufficiently close
to the claimed range to support a prima facie case of obviousness. Ans. 17–
18. The Examiner explained that although the 30 m2/g difference between
the lower end of the range disclosed in Atanassova and the upper end of the
range recited in claim 7 may not seem close, in view of the broad range of
surface areas disclosed both in Atanassova (2020 m2/g) and in the
Specification (1995 m2/g), a minor difference of 30 m2/g of the total range is
within the scope of the art in the absence of evidence of criticality.3 Id.
Appellant does not provide a response to the Examiner’s position,4 which
appears to be reasonable in the absence of sufficient arguments to the
contrary.

Claims 21–24
Regarding claims 21–24, which depend from claim 1, the Examiner
determined that because the lead-acid battery of Chalasani, as modified by
Atanassova, is an AGM VRLA having carbon additive in the negative active
material and the electrolyte is present greater than 100% by volume, it
necessarily has the discharge capacity recited in claim 21, the charge
acceptance recited in claim 22, amount of electrolyte recited in claim 23, and
the durability recited in claim 24. Id. at 6–7.

3 We observe that the Examiner’s calculation that the difference in surface
areas amounts to a 0.01% difference does not appear to be accurate
(30/2020=0.0148 (1.5%); 30/1995=0.0150 (1.5%)). In view of the above
discussion, we view the Examiner’s apparent error to be harmless.
4 Appellant did not file a reply brief to the Examiner’s Answer.
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Regarding claim 23, Appellant argues because Chalasani utilizes a
non-starved separator material it does not follow that Chalasani would
necessarily and inherently satisfy the same water consumption tests as the
claimed, differently constructed battery. Id. at 9–10. Similarly, for the
recitation of discharge capacity in claim 21, the charge acceptance in claim
22, and durability in claim 24, Appellant contends it does not follow from
the teachings in Chalasani that such properties would be met. Id. at 10–11.
We are not persuaded by Appellant’s arguments, largely for similar
reasons as discussed above with respect to claim 1, namely, Chalasani
discloses separators including amounts of electrolyte overlapping the
amounts recited in claim 1. In addition, as explained by the Examiner,
Appellant has not provided sufficient arguments that the presence of
additional separator material 32 in Chalasani would mean that the water
consumption test in claim 23, the discharge capacity in claim 21, the charge
acceptance in claim 22, or durability in claim 24 would not be satisfied.
Ans. 16–17.
That is, the Examiner has provided sufficient support for the position
that the properties recited in claims 21–24 would be met due to the structure
resulting from the combination of Chalasani and Atanassova and Appellant
has not provided sufficient evidence that such properties would not have
been met. “‘[T]he PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. s [sic] 102, on ‘prima facie obviousness’ under 35 U.S.C. s [sic] 103,
jointly or alternatively, the burden of proof is the same . . . (footnote
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omitted).’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting In re
Best, 562 F.2d 1252, 1255 (CCPA 1977)).
In sum, we affirm the Examiner’s rejection of claims 1–9 and 15–24.

Rejection 2
For claims 10 and 11, which depend from claim 1 and recite pore
sizes for the carbon additive, Appellant does not present separate argument
regarding these claims, but rather relies on the dependency of claims 10 and
11 as a basis for patentability. Appeal Br. 11. Accordingly, we affirm the
Examiner’s rejection of claims 10 and 11 for similar reasons discussed
above for claim 1.

Rejection 3
Claims 12 and 13 depend from claim 1, and further recite “wherein
the carbon additive has a degradation onset temperature that ranges from
500 °C to 750 °C” and “wherein the carbon additive has a degradation onset
temperature that ranges from 100 °C to 350 °C,” respectively.
Claim 14 depends from claim 1, and further recites “wherein the
carbon additive has a microporosity-to-mesoporosity ratio that ranges from
99: 1 to 1:99.”
In rejecting claims 12–14, which depend from claim 1, the Examiner
found Chalasani in view of Atanassova renders obvious the limitations of
independent claim 1, as discussed above. Final Act. 9. The Examiner found
Dickinson discloses enhanced negative plates with a carbon additive such as
activated carbon having a meso-pore volume of greater than about 0.1 cm3/g
and a meso-pore size of about 20 Angstroms to about 320 Angstroms. Id.
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The Examiner found Dickinson does not explicitly disclose the claimed
range of less than 20 Angstroms (corresponding to pore sizes that are
microporous, Spec. 4), but found the upper limit of pore sizes that are
microporous disclosed in Dickinson is close enough to the upper portion of
the claimed range such that the skilled artisan would have expected the same
results. Id.; Ans. 20.
The Examiner found Boden discloses expanders for lead-acid batteries
where carbon additive such as carbon black and/or graphite is added to the
negative plate. Id. at 10. The Examiner determined it would have been
obvious to modify Chalasani, as modified by Atanassova, by using carbon
black to lessen or minimize the accumulation of lead sulfate on the surface
of the negative plate during high rate PSOC battery operation and/or to
increase the electrochemical efficiency, the reserve capacity, the cold
cranking performance and the life cycle life of lead-acid batteries. Id.
The Examiner found Wang discloses a current collector for lead acid
battery, wherein carbon additive such as carbon nanotube is added to the
negative plate. Id. at 11. The Examiner determined it would have been
obvious to have modified Chalasani in view of Atanassova by using carbon
nanotubes as a carbon additive for the advantage of providing a stable
negative electrode. Id. The Examiner also determined that the Specification
does not disclose any specific method to make the carbon additive leading to
the claim limitations in claims 12–14 such that the carbon additives
disclosed in the prior art necessarily have the claim limitations in claims 12–
14. Id. at 12.
Regarding claims 12–14, Appellant contends the Examiner never
mentions the terms “degradation temperature” or “microporosity-to-
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mesoporosity ratio” in the rejection nor does the Examiner assert that the
cited art teaches or suggests the claimed ranges. Appeal Br. 12.
Although we appreciate Appellant’s position as to the clarity of the
Examiner’s rejection, we are not persuaded by Appellant’s arguments. The
Examiner explained that one of ordinary skill in the art would appreciate that
the degradation onset temperatures are properties of the carbon material, and
that micro/mesoporosity is a structure of the carbon material that imparts
properties on the carbon material. Ans. 19. The Examiner found Dickinson
discloses carbon additives having meso-pores in a range of about 20
Angstroms to 500 Angstroms, and further noted that at 20 Angstroms,
Dickinson discloses a microporosity-to-mesoporosity ratio of 50:50 because
the porosity can be considered microporous or mesoporous at 20 Angstroms.
Id. at 19–20; Dickinson ¶ 22; Spec. 8. The Examiner also points out that the
cited prior art discloses active carbon materials as disclosed in the
Specification include graphite disclosed in Atanassova and Boden, activated
carbon disclosed in Dickinson, carbon black disclosed in Boden, or carbon
nanotubes disclosed in Wang. Id. at 19; Spec. 5–6. The Examiner also
stated that Appellant has not provided any particular evidence of criticality,
nor has Appellant challenged the Examiner’s position that it would have
been obvious to optimize the recited ratio. Id. at 20. Thus, the Examiner’s
position appears to be that it would have been obvious to have selected
carbon additives having the structures disclosed in the prior art, which would
result in the particular “degradation temperatures” or “microporosity-to-
mesoporosity ratios” recited in claims 12–14.
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Appellant does not provide any particular response to the Examiner’s
positions and, in particular, the Examiner’s further explanations in the
Answer. As a result, we affirm the Examiner’s rejection of claim 12–14.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9, 15–24 103(a) Chalasani,
Atanassova
1–9, 15–24
10, 11 103(a) Chalasani,
Atanassova,
Dickinson
10, 11
12–14 103(a) Chalasani,
Atanassova,
Dickinson, Boden,
Wang
12–14
Overall
Outcome
1–24
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED