Robert Bosch GmbH

Patent Trials and Appeals Board

Jun 9, 2020

14468702 - (D) (P.T.A.B. Jun. 9, 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.
14/468,702 08/26/2014 John F. Christensen 1576-1460 3171
10800 7590 06/09/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
SMITH, ERIC R
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
06/09/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN F. CHRISTENSEN, BERND SCHUMANN, and
TIMM LOHMANN
Appeal 2019-004720
Application 14/468,702
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed Aug. 26, 2014 (“Spec.”),
Final Office Action dated Aug. 8, 2018 (“Final Act.”), Appeal Brief dated
Jan. 8, 2019 (“Appeal Br.”), Examiner’s Answer dated Mar. 26, 2019
(“Ans.”), and Reply Brief dated May 28, 2019 (Reply Br.).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Robert Bosch
GmbH. Appeal Br. 2.
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Application 14/468,702
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a solid state battery with a columnar solid
electrolyte separator between an anode and cathode. See Spec. ¶¶ 11, 39.
Claim 1, reproduced below with paragraphing added for readability and
italics indicating the limitations at issue, is the sole independent claim on
appeal:
1. A bipolar solid state battery, comprising:
a first cell stack including
a first solid-electrolyte separator positioned
between a first cathode and a first anode, wherein the first
solid-electrolyte separator includes
a first solid-electrolyte layer adjacent to the
first cathode,
a second solid-electrolyte layer adjacent to
the first anode,
and a plurality of solid-electrolyte columns
extending between the first solid-electrolyte layer
and the second solid-electrolyte layer,
wherein the first solid-electrolyte layer, the
second solid-electrolyte layer, and the plurality of
solid-electrolyte columns define a plurality of
microstructure cavities therebetween;
a first base layer including a first base portion positioned
directly beneath the first anode;
a second cell stack including a second solid-electrolyte
separator positioned between a second cathode and a second
anode;
a second base layer including a second base portion
positioned directly beneath the second anode; and
a thermally insulating medium surrounding the first cell
stack and the second cell stack.
Appeal Br. 20 (Claims Appendix).

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Application 14/468,702
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hama JP 2009193729 A Aug. 27, 2009
Laramie US 2015/0010804 A1 Jan. 8, 2015
Kosugi JP 2006261009 A Sep. 28, 2006
Bailey US 6,287,719 B1 Sep. 11, 2001
Fujii US 2014/0220391 A1 Aug. 7, 2014

REJECTIONS
1. Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Hama and Laramie.
Final Act. 2.
2. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Hama, Laramie and
Kosugi. Final Act. 5–6.
3. Claims 1–4 and 8–10 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Bailey, Kosugi, and
Laramie. Final Act. 6, 9.
4. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Bailey, Kosugi, Laramie
and Fuji. Final Act. 9.
OPINION

Rejections 1 and 2

As we state above, the Examiner rejects claims 1, 2, 4, and 5 under 35
U.S.C. § 103 as being unpatentable over the combination of Hama and
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Laramie (Rejection 1) and rejects claims 6 and 7 under 35 U.S.C. § 103 as
being unpatentable over the combination of Hama, Laramie and Kosugi
(Rejection 2).
Appellant’s arguments are directed to claim 1 and, although the
Appeal Brief includes separate headings relating to the rejections of claims 2
and 4–7, those sections do not present further substantive argument. Appeal
Br. 11–12. Accordingly, we focus our discussion on claim 1.
The Examiner finds that Hama teaches the limitations of the battery
recited in claim 1, except that Hama does not specifically teach a first solid–
electrolyte separator having the structure recited in claim 1. Final Act. 2–3
(citing Hama Fig. 2, ¶¶ 28, 33–39). The Examiner finds that Laramie
teaches a separator including a first ion–conducting layer, second ion–
conducting layer, and a plurality of ion–conducting columns extending
between the first and second ion–conducting layers and defining
microstructure cavities between the columns. Id. at 3–4 (citing Laramie Fig.
3, ¶¶ 32, 34, 38, 58). The Examiner further finds that Laramie’s ion–
conducting layers and columns are formed of a solid material capable of
conducting the ions used in the cathode and anode, which the Examiner
interprets as a “solid–electrolyte” material as recited in claim 1. Id. The
Examiner further finds that Laramie teaches its structure provides
mechanical strength while maintaining favorable ionic pathways, and thus
provides an evidence–based rationale for combining the teachings of Hama
and Laramie. Id. at 4, citing Laramie ¶¶ 26, 27. See also Ans. 16 (finding
that Laramie teaches applying the claimed structure “in a position between a
first cathode and first anode provides a protection function and necessarily a
separation function, along with improved mechanical strength and ionic
conductivity”).
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Appellant argues that the rejections should be reversed for several
reasons: (1) the Examiner has failed to show that Provisional Application
61/842,936 (“the ’936 Provisional”) supports the teachings of Laramie upon
which the Examiner relies; (2) Laramie does not disclose a separator as
recited in claim 1; and (3) Laramie does not disclose cavities as recited in
claim 1. We address each of these arguments below.
Provisional Application
Appellant argues that Laramie is not available as prior art because the
Examiner has failed to show that the ’936 Provisional supports Laramie’s
teachings upon which the Examiner relies, such as Laramie Figure 3.
Appeal Br. 5–6. The Examiner responds in the Answer by including
citations to relevant portions of the ’936 Provisional that support the findings
as to Laramie. Ans. 13–18. Appellant does not dispute that the cited
portions provide support. See Reply Br. Thus, Appellant has not identified
a reversible error in the Examiner’s finding that the ‘936 Provisional
provides support.”
We have also reviewed the Examiner’s and the Appellant’s arguments
on the issue raised by the Examiner in the Answer, of whether Appellant’s
Provisional Application 61/870,836 (“the ’836 Provisional”) sufficiently
supports the limitation “a thermally insulating medium surrounding the first
cell stack and the second cell stack” recited in claim 1. Compare Ans. 12,
with Reply Br. 2–3. Specifically, the Examiner finds that the ’836
Provisional “makes no mention of a thermally insulating medium.” Id. at
12. Appellant responds by arguing that the ’836 Provisional expressly
provides support for a thermally insulating medium because it discloses a
fluorinated oil, and “oils are notoriously well known thermal insulators.”
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Reply Br. 2–3 (citing ’836 Provisional ¶ 24). Having reviewed Appellant’s
argument and the disclosure of the ’836 Provisional, we find that it provides
adequate support for the thermally insulating medium limitation recited in
claim 1. Paragraph 24 of the ’836 Provisional describes halogenated oils
used between the layers of packaging of Appellant’s battery, and the
references relied upon by Appellant in the Reply Brief, U.S. Patent Nos.
9,689,631 and 5,447,389, show that a person of ordinary skill in the art
would have understood that DuPont’s Krytox fluorinated oil is thermally
insulating. See id.
Separator
Appellant argues that Laramie does not disclose a separator between
the first cathode and the first anode. Appeal Br. 6–7, 9–10. Specifically,
Appellant argues that Laramie’s Figure 3 shows a protective structure that is
part of the anode electrode, and therefore cannot be between the cathode and
anode as required by claim 1. Id. Appellant further relies on Laramie ¶ 117
as teaching that its protective structure is distinct from a separator. Id. at 10.
Appellant’s arguments do not persuasively identify reversible error.
The Examiner’s proposed modified structure of Hama would result in a
stack of layers comprising Laramie’s base layer with an active electrode
species, Laramie’s solid electrolyte protective structure formed on the base
layer, Hama’s solid electrolyte layer formed on the protective structure, and
a cathode layer above the solid electrolyte layer. Appellant’s argument that
Laramie’s protective structure is not a “separator” because it is not separate
from the anode is not persuasive because the Specification does not provide
a special definition for “separator.” See Ans. 13; In re Icon Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“we look to the
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specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.”). We determine that a person of ordinary skill
in the art would have understood that Laramie’s protective structure has the
elements of the solid–electrolyte separator recited in claim 1, and that in the
modification of Hama proposed by the Examiner, Laramie’s structure would
have been positioned between a cathode and an anode. See Ans. at 13–14
(citing Laramie, Fig. 3, ¶¶ 25, 65).
Cavity
Appellant argues that Laramie’s solid electrolyte columns do not
define cavities because Laramie’s cavities are filled and formed prior to the
formation of the solid electrolyte columns. Appeal Br. 7–9; Reply Br. 5–9.
Appellant’s arguments do not persuasively identify reversible error. Claim 1
does not require any particular process steps, and the limitation of solid
electrolyte columns defining cavities is a structural limitation, not a process
limitation. Therefore, Appellant’s arguments based on Laramie’s process
steps are unavailing. Laramie’s solid electrolyte columns surround the filled
cavities and therefore provide physical definition to the cavities. See Ans.
15.
Accordingly, we affirm Rejections 1 and 2.

Rejections 3 and 4

As we state above, the Examiner rejects claims 1–4 and 8–10 under
35 U.S.C. § 103 as being unpatentable over the combination of Bailey,
Kosugi, and Laramie (Rejection 3) and rejects claims 11 and 12 under 35
U.S.C. § 103 as being unpatentable over the combination of Bailey, Kosugi,
Laramie and Fuji (Rejection 4).
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Appellant’s arguments are directed to claim 1 and, although the
Appeal Brief includes separate headings relating to the rejections of claims
2–4 and 8–12, those sections do not present further substantive argument.
Appeal Br. 15–18. Accordingly, we focus our discussion on claim 1.
The Examiner finds that Bailey teaches the limitations of the battery
recited in claim 1, except that Bailey does not specifically teach a thermally
insulating medium surrounding the first and second cell stack or a first solid-
electrolyte separator having the structure as recited in claim 1. Final Act. 6–
9 (citing Bailey Figs. 3, 4). As discussed above, the Examiner finds that
Laramie teaches a separator including a first ion-conducting layer, second
ion-conducting layer, and a plurality of ion-conducting columns extending
between the first and second ion-conducting layers and defining
microstructure cavities between the columns, and based on Laramie’s
teaching that its structure provides mechanical strength while maintaining
favorable ionic pathways, the Examiner provides an evidence-based
rationale for combining the teachings of Bailey and Laramie. Id. at 7; see
also Ans. 16 (finding that Laramie teaches applying the claimed structure
“in a position between a first cathode and first anode provides a protection
function and necessarily a separation function, along with improved
mechanical strength and ionic conductivity”). The Examiner further finds
that Kosugi teaches thermally insulating medium 16 surrounding battery 13.
Final Act. 8 (citing Kosugi, Fig. 1). The Examiner determines that forming
a thermally insulating medium to surround the battery would have been
obvious to a person of ordinary skill in the art, in order to cool the battery.
Id.
Appellant argues, as discussed above, that Laramie does not disclose a
separator or cavities as recited in claim 1. As set forth above, we do not find
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those arguments persuasive of reversible error, and accordingly, we also do
not find them persuasive as applied to Rejections 3 and 4. Appellant also
presents two additional arguments against these rejections, which we address
below.
Elimination of Separator
Appellant argues that Bailey’s objective is to provide a polymer
electrolyte to eliminate the need for a separator, and that inclusion of
Laramie’s separator would render Bailey unsatisfactory for its intended
purpose of eliminating the non-conductive portion of a separator. Appeal
Br. 14 (citing Bailey Abs.); Reply Br. 11. Appellant further argues that
Bailey’s objective is eliminating “the structure of the separator which is not
an ion conductor” and to that end, Bailey avoids non-conductive structure
by using a polymer electrolyte; consequently only “electrolyte” is present in
Bailey’s separator. Reply Br. 10–11 (citing Bailey Abs., 1:12–32).
Appellant’s argument is not persuasive of reversible error. The
Examiner’s proposed combination of Bailey, Laramie, and Kosugi includes
Laramie’s base layer with an active electrode species, Laramie’s solid
electrolyte protective structure formed on the base layer, Bailey’s solid
polymer electrolyte layer formed on the protective structure, and a cathode
layer above the solid polymer electrolyte layer. Final Act. 6–7. In other
words, the Examiner does not propose replacing Bailey’s polymer
electrolyte layer with Laramie’s solid electrolyte protective structure, and
Appellant’s argument directed to that structure is not responsive to the
rejection. Bailey’s teaching of using a polymer electrolyte layer between the
positive and negative electrode of the cell into which liquid electrolyte is
absorbed (Bailey 1:13–33, 2:47–49) is not in conflict with Laramie’s solid-
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electrolyte separator in the Examiner’s proposed combination, and would
not render the combination inoperable.
Thermal Insulation Fluid and Cooling Plate
Appellant argues that addition of a thermal insulation fluid or a
cooling plate to Bailey would make Bailey’s cell more expensive and larger,
and render Bailey unsatisfactory for its intended purpose of providing a less
expensive and space efficient multi-cell spiral-wound electrode construction.
Appeal Br. 14–15, 17–18 (citing Bailey Abs.); Reply Br. 11–12 (citing
Bailey 2:43–46, 5:62–64).
Appellant’s argument does not persuasively identify reversible error.
The fact that Bailey saves cost or space by eliminating a certain feature does
not mean that other features cannot be included should a benefit be realized.
A person of ordinary skill would have understood tradeoffs such as cost
reduction and space efficiency, and those considerations would not
necessarily bar additional features in a cost benefit analysis. See Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course
of action often has simultaneous advantages and disadvantages, and this
does not necessarily obviate motivation to combine”).
Accordingly, we affirm Rejections 3 and 4.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5 103 Hama, Laramie 1, 2, 4, 5
6, 7 103 Hama, Laramie,
Kosugi
6, 7
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 8–10 103 Bailey, Kosugi,
Laramie
1–4, 8–10
11 and 12 103 Bailey, Kosugi,
Laramie, Fuji
11, 12
Overall
Outcome:
1–12

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