14010076 - (D) (P.T.A.B. Feb. 10, 2020)

Scott E. Solberg

Patent Trials and Appeals BoardFeb 10, 2020

14010076 - (D) (P.T.A.B. Feb. 10, 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. 14/010,076 08/26/2013 SCOTT E. SOLBERG 20121538US01-409841-0299 7220 65650 7590 02/10/2020 Miller Nash Graham & Dunn - PARC 3400 U.S. Bancorp Tower 111 SW Fifth Avenue PORTLAND, OR 97204 EXAMINER UTT, ETHAN A ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 02/10/2020 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): eofficeaction@appcoll.com patdocketing@millernash.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT E. SOLBERG Appeal 2019-002876 Application 14/010,076 Technology Center 1700 Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and JOHN G. NEW, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 22–24, 26, 28, and 29 under 35 U.S.C. § 102(a)(1) as anticipated by Chiang (US 2011/0064999 A1, pub. Mar. 17, 2011), and under 35 U.S.C. § 103 as unpatentable over Chiang in view of Sastry (US 2010/0035152 A1, pub. Feb. 11, 2010).3 We REVERSE. 1 This Decision includes citations to the following documents: Specification filed August 26, 2013 (“Spec.”); Final Office Action dated June 14, 2018 (“Final”); Appeal Brief filed November 13, 2018 (“Appeal Br.”); Examiner’s Answer dated January 22, 2019 (“Ans.”); and Reply Brief filed February 25, 2019 (“Reply Br.”). 2 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Palo Alto Research Center Incorporated. Appeal Br. 2. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2019-002876 Application 14/010,076 2 CLAIMED SUBJECT MATTER The invention relates to a near-three-dimensional (“near 3D”) structure. Spec. ¶ 14. According to the Specification, a one dimensional (“1D”) structure, i.e., a simple stripe of material, results from one circular or one rectangular slot in an extrusion head. Id. ¶ 12. Similarly, a two- dimensional (“2D”) structure results from extrusion heads having multiple slots. Id. The stripes in a near-3D structure are more complex than those in a 2D structure, e.g., the widths of the stripes vary along their lengths. Id. ¶ 14. The stripes in the inventive, near-3D structure are described as “periodically modulated stripes.” Id. Figure 5, reproduced below, illustrates an embodiment of the inventive, near-3D structure. Spec. ¶ 8. Figure 5 shows an embodiment of a near-3D structure comprising first extrudate 34 having a first pattern of varying widths, and second extrudate 36 having a complementary second pattern. Id. ¶ 15. “[T]he wide portions and narrow portions of the second pattern match up to the narrow portions and wide portions of the first pattern.” Id. Appeal 2019-002876 Application 14/010,076 3 Claim 22, reproduced below, is illustrative of the claimed subject matter: 22. A structure, comprising: a first longitudinal stripe of a first material containing at least one electrochemically active material on a surface, the first stripe having a first continuous, periodic sinusoidal pattern of wider and narrower portions about a centerline of the first stripe; and a second longitudinal stripe of a second material adjacent to, and in contact with, the first stripe, the second stripe having a second continuous, periodic sinusoidal pattern of wider and narrower portions about a centerline of the second stripe complementary to the first pattern. Appeal Br. 9 (Claims Appendix). OPINION The Examiner rejected claims 22–24, 26, 28, and 29 as anticipated by Chiang. See Final 2–4. More specifically, the Examiner found that the claim 22 first and second longitudinal stripes read on anode 12 and cathode 14 in the Chiang Figure 3D embodiment. Id. at 2–4. The Examiner’s annotated version of Chiang Figure 3D is reproduced below. See id. at 3. Appeal 2019-002876 Application 14/010,076 4 Annotated Chiang Figure 3D is a schematic (cross-section) illustration showing battery 10 comprising reticulated structures—anode 12 and cathode 14—each of which is in contact with a respective current collector 30. Chiang ¶¶ 32, 51, 52. The Examiner added a dashed line to identify a centerline of anode 12. Final 3. Chiang discloses that “[t]he reticulations form convexities 28 that are at a separation distance, d, from correspondingly-shaped concavities 26.” Chiang ¶ 51. Anode 12 and cathode 14 are separated along their mating interface by a layer or region of electrolyte 16. Id. ¶ 53. The Appellant argues that the Examiner’s dashed line in annotated Chiang Figure 3D does not meet the claim 22 limitation of “a centerline of . . . [a] stripe” of material because the dashed line is not in the center of anode 12, rather, it is to one side of anode 12’s center. Appeal Br. 5. The Examiner argues that “the distribution of the wider and narrower portions about the Appeal 2019-002876 Application 14/010,076 5 centerline is not specifically defined.” Ans. 9. The Examiner thus contends that the broadest reasonable interpretation of the term “centerline” reads on a line in which the width of the entire stripe varies along the length of the centerline as in the Examiner’s annotated Chiang Figure 3D (Ans. 9), as well as a line in which “the sinusoidal pattern is symmetric about a centerline which bisects a stripe along the longitudinal axis of the stripe” as in Specification Figures 5 and 6 (Final 8). During examination, claim terms are given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The 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) (citation and internal quotation marks omitted). The Specification does not include an explicit definition of “centerline,” and the term appears in only paragraph 19 of the written description. See Spec. ¶ 19 (“[A]ssuming sinusoidal modulation has shown that the resulting structure has approximately 21% greater periphery while having about 10% less average distance between the centerline of an extruded stripe and the nearest border, compared to a conventional linear extruded structure.”). The American Heritage Dictionary of the English Appeal 2019-002876 Application 14/010,076 6 Language defines “centerline” as “[a] line that bisects something into equal parts.” https://www.ahdictionary.com/word/search.html?q=centerline. Neither the Specification nor the dictionary supports the Examiner’s broad interpretation of the term “centerline.” Accordingly, because the Examiner’s finding that Chiang discloses “a centerline of . . . [a] stripe” of material is based on an overly–broad, unsupported interpretation of the claim 22 term “centerline,” we do not sustain the rejection of claims 22–24, 26, 28, and 29 under 35 U.S.C. § 102(a)(1). The Examiner also rejected claims 22–24, 26, 28, and 29 as unpatentable over Chiang in view of Sastry. See Final 5–7. The Examiner relied on Sastry solely for a suggestion of modifying the surface of Chiang’s convexities 28 and concavities 26 to have a smoother, sinusoidal pattern. See id. at 5–6. Because the Examiner has not identified a teaching in Sastry that cures the above-noted deficiency in the Examiner’s findings as to Chiang’s disclosure, we likewise do not sustain the rejection of claims 22–24, 26, 28, and 19 under 35 U.S.C. § 103. CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 22–24, 26, 28, 29 102(a)(1) Chiang 22–24, 26, 28, 29 22–24, 26, 28, 29 103 Chiang, Sastry 22–24, 26, 28, 29 Overall Outcome 22–24, 26, 28, 29 REVERSED