Ito, Yasumasa et al.

Patent Trials and Appeals Board

Jun 1, 2020

14129865 - (D) (P.T.A.B. Jun. 1, 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.
14/129,865 04/02/2014 Yasumasa Ito 11A0056 US (4382-00302) 4632
30652 7590 06/01/2020
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE 500
PLANO, TX 75024
EXAMINER
LEONG, JONATHAN G
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
DallasPatents@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YASUMASA ITO and SANJOY BANERJEE
____________

Appeal 2019-004141
Application 14/129,865
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16 of Application 14/129,865. Final
Act. (May 17, 2018).2 We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm in part.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Research Foundation of the City
University of New York as the real party in interest. Appeal Br. 3.
2 Claims 17–19 are withdrawn from consideration and, thus, are not subject
to the appealed rejections. Final Act. 1; Appeal Br. 5.
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I. BACKGROUND
The ’865 Application describes designs for a rechargeable zinc-based
battery. See Spec. ¶¶ 3, 4. As a zinc-based battery is cycled, zinc is typically
stripped from an anode current collector during discharge and
electrodeposited back onto the current collector during charge. Id. ¶ 5.
Battery recharge cycles can result in uneven zinc electrodeposition, which
leads to dendritic zinc deposits. Id. These deposits can eventually contact the
cathode and undesirably short circuit the battery before its useful capacity is
exhausted. Id.
The ’865 Application describes the use of reduced area anode current
collectors in Zn-Ni batteries to enable compact zinc depositing. Id. ¶ 33; Fig.
3B. The ’865 Application describes that zinc is predominately
electrodeposited on the reduced area anode current collector’s surface that
faces the cathode. Id. ¶ 39; Fig. 3B. According to the Specification, the
reduced area for zinc electrodeposition makes it less likely that dendritic
zinc deposits reach the cathode, thereby avoiding short circuits. Id. ¶ 39.
Claim 1 is representative of the ’865 Application’s claims and is
reproduced below from the Claims Appendix of the Brief.
1. A rechargeable battery, comprising:
a cathode, the cathode having a first overall surface area and a
first effective surface area;
an anode current collector, the anode current collector having
a second overall surface area and a second effective
surface area; and
an electrolyte in ionic communication with both the cathode
and the anode current collector;
wherein the second effective surface area is between 10 and
90% of the first effective surface area.
Appeal Br. 26 (Claims App.) (emphasis added).
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–13, 15, and 16 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mashima.3 Final Act. 2–4.
2. Claims 1–16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Banerjee.4 Final Act. 4–5.
III. DISCUSSION
A. Rejection of claims 1–13, 15, and 16 as anticipated by
Mashima.
Appellant argues for the reversal of the anticipation rejection of
claims 1–9, 12, 13, 15, and 16 on the basis of limitations present in
independent claim 1. Appeal Br. 9–16. We select claim 1 as representative.
37 C.F.R. § 41.37(c)(1)(iv). Appellant also presents separate arguments for
the patentability of claims 10 and 11. Id. at 16–19. Accordingly, claims 2–9,
12, 13, 15, and 16 will stand or fall with claim 1. We will address claims 10
and 11 separately.
a. Claim 1.
The Examiner rejected claim 1 as anticipated by Mashima. Final Act.
2–4.
The Examiner must establish a prima facie case of anticipation under
35 U.S.C. § 102 by showing that the elements found to be inherently present
must necessarily be present in or result from the prior art. In re Montgomery,

3 JP 02-184409 A, published June 28, 2002. We shall follow the Examiner
and Appellant by referring to a machine translation that was made of record
in this appeal on July 7, 2017.
4 WO 2011/047105 A1, published April 21, 2011.
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677 F.3d 1375, 1379‒80 (Fed. Cir. 2012) (“A reference may anticipate
inherently if a claim limitation that is not expressly disclosed ‘is necessarily
present, or inherent, in the single anticipating reference.’”) (citing Verizon
Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir.
2010). “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA
1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
The Examiner found Mashima describes all of the rechargeable
battery’s elements and limitations recited in claim 1, including the
requirement that the anode current collector’s effective surface area is
between 10 and 90% of the cathode’s effective surface area. Final Act. 2
(citing Mashima ¶¶ 2, 20, 21, 47).
Appellant argues for reversal of this rejection because the Examiner
erred in relying on Mashima’s following disclosures: (1) overall surface
areas of the cathode and anode only, but not these electrodes’ respective
effective surface areas, Appeal Br. 9; (2) paragraph 20, which only discloses
an anode current collector’s open area, but not the claimed cathode’s “[first]
effective surface area,” id. at 10; (3) paragraph 44, which merely refers to an
anode’s plating tank without any disclosure regarding a cathode, id.; and (4)
paragraphs 47 and 48, which fail to disclose that a cathode current
collector’s through holes are completely filled. Id. at 11–16. Appellant
essentially argues that the Examiner’s relied upon disclosures do not
describe that “the second effective surface area is between 10 and 90% of
the first effective surface area.” Id. at 9, 14.
For the reasons set forth below, we are not persuaded by Appellant
that Mashima does not describe the disputed limitation of claim 1.
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First, the Examiner’s findings are based not only on Mashima’s
overall surface areas of the cathode and anode, but also each electrode’s
respective effective surface area. Answer 9–10. The Examiner’s findings,
furthermore, are based on the definitions of the claimed surface areas from
the Specification. Id. at 7.
For example, the ’865 Application’s Specification makes it clear that
the term “overall surface area” refers to the area enclosed by the outer edges
of the electrode. Spec. ¶ 25. In accordance with this definition, the Examiner
found Mashima’s Figure 3 illustrates the claimed “overall surface area[s]”
for both a negative electrode current collector and a positive electrode.
Answer 7.
Mashima’s Figure 3, reproduced below, depicts the forming of a
battery:

Figure 3 of Mashima illustrates the winding of superimposed
components, including a negative electrode, i.e., an anode, current collector
1 and a positive electrode, i.e., a cathode 3, to form a battery. Mashima ¶ 31.
The Examiner found that Mashima’s cathode was prepared from a
manufactured anode current collector. Answer 8 (citing Mashima ¶ 47).
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Mashima thus provides that the cathode and the anode current collector
possess substantially similar overall surface areas. Answer 7; see Mashima
¶ 47; Fig. 3.
The ’865 Application’s Specification, furthermore, makes it clear that
the term “effective surface area” refers to an electrode’s electrochemically
active surface area. Spec. ¶ 25. In particular, the Specification describes that
an electrode’s electrochemically active area may be an electrode’s “‘overall
surface area’ minus any areas contained within the overall surface area onto
which metal cannot deposit.” Id. (emphasis added).
Based on the Specification’s definition, the Examiner found that
Mashima also describes the claimed effective surface area of each electrode.
Answer 7–9. The Examiner found that Mashima’s anode current collector,
with holes where zinc cannot deposit, possesses a preferred aperture ratio of
40–50%. Id. at 12 (citing Mashima ¶ 21; Fig. 3) (explaining that the
disclosed aperture ratio “corresponds to the second effective surface area of
approximately 50–60% of the second overall surface area, the first overall
surface area ( . . . all electrodes having [the] same overall surface area), and
the first effective surface area . . . thus reading on the claimed range of
between 10 and 90%”) (emphasis added).
We, therefore, are not persuaded that the Examiner’s rejection failed
to make findings showing that Mashima describes each electrode’s claimed
effective surface areas.
Second, Mashima’s paragraph 20 is not limited to disclosing an anode
current collector’s open area because, the cathode was prepared from an
anode current collector having holes. Mashima ¶¶ 20, 21, 43, 47. We,
therefore, agree with the Examiner that the overall surface area of
Mashima’s anode current collector describes the claimed cathode’s “first
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overall surface area.” Answer 9 (citing Mashima ¶ 47; Fig. 3). For the
reasons set forth below addressing Appellant’s argument (4), Mashima also
describes the claimed cathode’s “first effective surface area.”
Third, Appellant’s argument that Mashima’s paragraph 44 fails to
describe the claimed cathode’s requisite features is based on a
misunderstanding of the Examiner’s findings. Appeal Br. 10 (citing Final
Act. 6); Answer 10. The Examiner did not rely on Mashima’s paragraph 44.
Id. Rather, the Examiner relied on the Specification’s paragraph 44, which
provides “evidence that Mashima utilizes a similar cathode to the instant
invention.” Answer 8. As the Examiner found, the Specification describes
that “[a] sintered nickel electrode was used as the cathode.” Spec. ¶ 44;
compare with Mashima ¶¶ 47, 48.
Fourth, there is no dispute that Mashima can only describe the
effective surface area ratio limitation recited in claim 1 if nickel hydroxide
fills the holes in the cathode’s current collector. Appeal Br. 5; Answer 12.
For the reasons set forth below, the Examiner has made reasoned findings
that Mashima’s paragraphs 47 and 48 describe that the current collector’s
holes in the cathode are necessarily filled completely with pressed nickel
hydroxide. Answer 8–12.
The Examiner correctly found Mashima’s cathode is formed by
sintering a nickel fine powder on both sides of the anode current collector.
Id. at 10. Mashima explicitly discloses that the anode current collector, and a
cathode produced therefrom, can possess holes with diameters of 500 µm,
spacing between the holes of 200 µm, and a thickness of 20 µm. Mashima
¶ 43. Mashima describes that the nickel substrate sintered onto the current
collector is subsequently processed to produce an active nickel hydroxide
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material, which is compressed to a 250 μm thickness. Id. ¶¶ 47, 48. As
explained by the Examiner,
[t]he [sintered nickel] material necessarily fills the holes of the
current collector, implicitly, due to the relatively high thickness
that such active material has (250 μm after pressing – meaning
that prior to pressing, the thickness of the active material is
higher and that during pressing, the active material densifies to
fill pores/holes) compared to the 20 μm current collector.
Answer 8 (emphasis added). In other words, the cathode active material’s
thickness is pressed to 250 μm, but the active material condenses to fill holes
in the comparatively thinner 20 μm current collector post-pressing. See
Mashima ¶¶ 47, 48. We, thus, agree with the Examiner that because the
holes in the cathode’s current collector are filled completely with pressed
nickel hydroxide, Mashima’s cathode necessarily has an overall surface area
that is substantially the same as its effective surface area. Montgomery, 677
F.3d at 1379‒80.
Appellant argues that pressing for electrode formation is generally
used to obtain a uniformly thick electrode, but not to displace any active
material to fill any holes. Reply Br. 6.
Appellant, however, does not point to any evidence supporting the
position that pressing is not generally used to completely fill a current
collector’s holes. Without such evidence, this assertion is not persuasive. See
Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(“[A]rguments of counsel cannot take the place of evidence lacking in the
record.”). As the Examiner found, Mashima discloses that the holes in the
current collector are used to firmly fix material to the current collector.
Mashima ¶ 18.
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Appellant argues that Mashima “indicates that the holes can have a
diameter up to 5000 μm” and, thus, “the 250 μm thickness of the cathode
can be insignificant compared to the opening diameter.” Reply Br. 7 (citing
Mashima ¶ 18).
We are not persuaded by this argument because Mashima explicitly
describes that the hole diameter in a current collector embodiment is 500
μm. Mashima ¶ 43. Mashima also indicates that the hole diameter can be as
small as 10 μm. Id. ¶ 18. We, thus, are not convinced that the cathode’s 250
μm thickness is insignificant compared to a current collector’s 10–30 μm
thickness and holes with diameters of 10–500 μm. Id. ¶¶ 18, 43.
Appellant argues that Mashima’s paragraph 48 indicates that the
cathode has through holes. Appeal Br. 12; Reply Br. 8.
The Examiner, however, has explained that Appellant’s relied upon
portion of Mashima’s paragraph 48 follows the header “Comparative
Example 1” in the original copy of Mashima. See Answer 11. We, therefore,
discern no reversible error in the Examiner’s findings and conclusions with
regard to Mashima’s specific inventive cathode.
Appellant has not demonstrated error in the Examiner’s finding that
Mashima describes a rechargeable battery that is the same as that set forth in
claim 1. Appellant, therefore, has the burden of showing that a rechargeable
battery produced by Mashima’s method does not, in fact, meet the effective
surface area ratio limitation. It is well established that when claimed and
prior art products are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. In re Best, 562 F.2d 1252, 1255–56 (CCPA 1977); see also
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“However, when the PTO
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shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.”). Appellant has not met this burden. The evidence of record is silent as
to any persuasive evidence demonstrating that the holes in Mashima’s
cathode current collector are not necessarily filled completely with pressed
nickel hydroxide.
We, therefore, determine that the Examiner did not reversibly err in
rejecting claim 1 as anticipated by Mashima. Accordingly, we also affirm
the rejection of claims 2–9, 12, 13, 15, and 16, which depend from claim 1.
b. Claim 10 and 11.
Claim 10 is reproduced below from the Claims Appendix of the Brief.
10. The rechargeable battery of Claim 1[,] wherein the anode
current collector has one or more regions that are coated to
prevent electrodeposition of metals.
Appeal Br. 27 (Claims App.) (emphasis added).
The Examiner found that Mashima teaches forming a paste
comprising an aluminum, copper, or graphite powder; hydrogen absorbing
alloy; and water-soluble polyvinyl alcohol or carboxymethyl cellulose. Final
Act. 3 (citing Mashima ¶ 39); Answer 13–14. Mashima describes that the
paste is applied to an anode current collector and subsequently dried.
Mashima ¶ 39. According to the Examiner, Mashima’s coated regions “are
fully capable of preventing electrodeposition of metals.” Final Act. 3.
Appellant argues, inter alia, that Mashima’s “coating would need to
serve as an electrical insulator or otherwise prevent the electrodeposition of
any metal onto the current collector” to anticipate claim 10. Appeal Br. 17.
Appellant argues that “nothing about the inclusion of a [polyvinyl alcohol or
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carboxymethyl cellulose] binder in a metal powder discloses any coatings
that prevent electrodeposition on the anode current collector itself.” Id.
In addressing Appellant’s arguments, the Examiner explains “that the
claim does not provide any requirement regarding the size of the claimed
region” and “at a particle level, the binder would indeed separate the paste
anode current collector at a tiny region.” Answer 13.
Appellant responds by arguing that Mashima “does not expressly or
inherently disclose that the anode current collector has one or more regions
that are coated to prevent electrodeposition of metals as recited in claim 10.”
Reply Br. 11.
We turn to the Specification for guidance as to the meaning of
“regions.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (explaining that the words used in a claim must be read in light of
the specification, as it would have been interpreted by one of ordinary skill
in the art at the time of the invention). We are mindful that
[t]he correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is consistent with the
specification.
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal
quotation marks omitted); see also In re Baker Hughes, Inc., 215 F.3d 1297,
1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that is “beyond
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that which was reasonable in light of the totality of the written description”
in the Specification).
In this case, the ’865 Application’s Specification makes it clear that
the term “regions” refers to coated areas contained within the overall surface
area onto which zinc cannot deposit. See, e.g., Spec. ¶¶ 34, 35; Fig. 3B
(depicting coated regions 322). These coated regions must be large enough
to provide a reduced area for zinc electrodeposition. Id. ¶¶ 35, 39. In light of
the Specification, the Examiner’s construction of the term “regions,” as
encompassing Mashima’s polymer binder contact with an anode current
collector at a particle level, is inconsistent with the Specification. See Smith,
871 F.3d at 1382–83. We, furthermore, agree with Appellant that the
limitation at issue is directed to a structural limitation with respect to the
claimed placement and composition of the coating. Appeal Br. 16.
We, therefore, determine that the Examiner reversibly erred in
rejecting claim 10 as anticipated by Mashima. Accordingly, we also reverse
the rejection of claim 11, which depends from claim 10.
B. Rejection of claims 1–16 as unpatentable over Banerjee.
Appellant argues for the reversal of the obviousness rejection of
claims 1–9 and 12–16 on the basis of limitations present in independent
claim 1. Appeal Br. 19–21. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant also presents separate arguments for the
patentability of claims 10 and 11. Id. at 21–24. Accordingly, claims 2–9 and
12–16 will stand or fall with claim 1. We will address claims 10 and 11
separately.
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a. Claim 1.
The Examiner rejected claim 1 as unpatentable over Banerjee. Final
Act. 4–5.
The patent examiner bears the initial burden of establishing a prima
facie case that an application’s claims are obvious based upon what was
known in the prior art. See In re Dillon, 919 F.2d 688, 701 (Fed. Cir. 1990).
Here, the Examiner found, inter alia, that Banerjee
discloses the spacer structures . . . can take on a multitude of
shapes and sizes in order to provide adequate spacing between
the electrodes while also forming various designs of flow
channels . . . . The spacers are placed onto the anode current
collector and thus decrease the second effective surface area
(the area available for [z]inc deposition) significantly.
Final Act. 5 (citing Banerjee 9, 11; Figs. 2–10). Based on these findings, the
Examiner determined that “it would have been obvious to one having
ordinary skill in the art to have arrived at [the second effective surface area
between 10 and 90% of the first effective surface area] based on the amount
of spacers utilized in order to achieve a desired flow pattern while also
ensuring adequate spacing between the anode and cathode.” Final Act. 5.
According to the Examiner, “the skilled artisan would have had a reasonable
expectation of success in doing so.” Id.
There is no dispute that Banerjee is silent with respect to any teaching
or suggestion that the second effective surface area is between 10 and 90%
of the first effective surface area. Appeal Br. 20; Final Act. 7.
Appellant argues, inter alia, that “the relationship between the two
surface areas recited in claim 1 cannot be obvious based on routine
experimentation” because Banerjee does not recognize the ratio of the
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second effective surface area to the first effective surface area as a result-
effective variable. Appeal Br. 21.
Appellant’s arguments are persuasive.
Our reviewing court’s predecessor has held that a variable must be
art-recognized as result-effective before it can be deemed to be subject to
routine optimization. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
In this instance, Banerjee merely suggests that the design of the
spacing structure will determine an electrolyte’s flow pattern, which can be
serpentine, linear, or series/parallel. See Banerjee 11:17–20; Figs. 11–13. On
the record before us, we do not see where, or how, the prior art establishes
that the modifying of spacer designs to provide alternative electrolyte flow
patterns is a property which one skilled in the art would have recognized as a
result-effective variable in the context of the claimed invention.
We, therefore, determine that the Examiner reversibly erred in
rejecting claim 1 as unpatentable over Banerjee. Accordingly, we also
reverse the rejection of claims 2–9 and 12–16, which depend from claim 1.
b. Claims 10 and 11.
As discussed above, we have reversed the rejection of claim 1 as
unpatentable over Banerjee. In view of the foregoing, we likewise determine
that the Examiner reversibly erred in rejecting claims 10 and 11 as
unpatentable over Banerjee. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) (explaining that “dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).
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IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13, 15, 16 102(b) Mashima 1–9, 12, 13, 15, 16 10, 11
1–16 103(a) Bannerjee 1–16
Overall
Outcome
1–9, 12,
13, 15, 16 10, 11, 14
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART