BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE FRANCIS P. MC CULLOUGH JR. AND ALVIN F. BEALE JR. Appeal No. 87-0948

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 87-0948

December 17, 1987



 Application for Patent filed December 4, 1984, Serial No. 678,186, which is a Continuation of Serial No. 558,239, filed December 5, 1983. Secondary Electrical Energy Storage Device And Electrode Therefor.



Virginia Solis et al. for Appellants



Primary Examiner--Brian E. Hearn



Examiner--S.J. Kalafut



Before Winters, Goolkasian, and W. Smith














 This appeal was taken from the examiner's decision refusing to allow claims 1, 2, 4 through 14, 17 through 23 and 31 through 33. Subsequently, appellants withdrew the appeal of claims 5 and 11 through 14, leaving for our review claims 1, 2, 4, 6 through 10, 17 through 23 and 31 through 33.



 Claim 1 is representative:

   1. An electrode body for use as the positive and/or negative plate of a non-aqueous electrolyte secondary electrical energy storage device wherein the said unit comprises

 an electrically conductive carbonaceous material as the active energy storing component of said body

 said material characterized in that it has

 a Young's modulus of greater than 1 million psi (6.9 GPa) to about 55 million psi

 an aspect ratio of surface area to diameter and/or thickness of greater than 100 to 1

 a surface area of between about 0.1 and about 10 square meters per gram, and

 undergoes a physical dimensional change of less than about 5% during repeated electrical charge and discharge cycling.



 The references relied on by the examiner are:




Bennion et al. (Bennion)  3,844,837  Oct. 29, 1974

Singer                    4,005,183  Jan. 25, 1977


 The appealed claims stand rejected under 35 USC 103 as unpatentable over the teachings of Singer and Bennion.





 We shall sustain this rejection.



 At the outset, we note that appellants have chosen to argue the patentability of the claims without regard to any particular claim. Thus, all claims on appeal will stand or fall with appealed claim 1. See In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).



 Singer discloses the preparation of high modulus, high strength carbon fibers from certain suitable carbonaceous pitches. In addition to having a structure characteristic of polycrystalline graphite, the fibers of Singer are characterized by graphitic like properties associated with such structure, such as high density and low electrical resistivity. The fibers are also characterized by high modulus and high tensile strengths. With respects to practical applications, Singer discloses that the fibers of his invention are especially useful in applications where high electrical conductivity and thermal conductivity along the axis of the fibers is important. Furthermore, Singer discloses that his fibers have extremely low electrical resistivity and, therefore, can be employed as filler material in the production of graphite electrodes. See the Singer patent, particularly column 16, lines 25 through 57.



  *2 We are persuaded that a person having ordinary skill in the art, armed with that prior art disclosure, would have found it obvious to modify the non-aqueous battery of Bennion by using the 'graphitic like' carbon fibers of Singer therein. More specifically, it would have been obvious to use Singer's material in lieu of (1) the graphite negative electrode substrate of Bennion; or (2) the graphite positive electrode of Bennion. By thus modifying the non-aqueous battery of Bennion, per the teachings of Singer, the skilled artisan would have arrived at appellants' claimed electrode and would have expected same to possess the desirable properties of high density, low electrical resistivity, high modulus, and high tensile strengths.



 Appellants acknowledge that it would have been obvious, within the meaning of 35 USC 103, to use Singer's material as an anode substrate in the non-aqueous battery of Bennion. This, appellants acknowledge, 'would be in line with the suggested uses as taught by Singer'. See Appellant's Brief, page 12. Nevertheless, appellants argue that the electrically conductive carbonaceous material in their claimed electrode functions differently than what would have been expected from the combined teachings of Singer and Bennion. The argument lacks merit.



 We point out to appellants that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification, and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 218 USPQ 385 (Fed. Cir. 1983). Applying that basic rule of claim interpretation to appealed claim 1, we find that the claim defines an electrode which 'comprises' a carbonaceous material having the characteristics or properties set forth in the claim. True, the electrode is intended for use as the positive and/or negative plate of a non-aqueous battery and, when used in a battery, the carbonaceous material is intended for use 'as the active energy storing component'. But appellants are not claiming a battery or a method of using an electrode in a battery. As correctly found by the examiner, appealed claim 1 defines an electrode per se. The manner in which such electrode will function when used in a non-aqueous battery is, in our view, not germane to the issue of patentability of the electrode itself. As stated in a similar context in In re Casey, 370 F.2d 576, 152 USPQ 235, 238 (CCPA 1967), '[t]he claims in issue call for an apparatus or machine, viz. a tape dispensing machine. The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself'.



 We have carefully reviewed the Appendix to Appellants' Brief on Appeal, entitled 'RECAP OF AN INTERVIEW IN WHICH ELECTRODES AND BATTERIES OF THE PRIOR ART AND THE PRESENT INVENTION WERE DEMONSTRATED'. With respect to the discussion presented therein, we agree with the examiner that appellants, at the interview, demonstrated operating batteries or laboratory cells. Again, the claimed invention does not define a battery or a cell or a combination of an electrode in a cell. Rather, the claimed invention relates to an electrode per se. Therefore, although the demonstrated results may be germane to the patentability of a battery containing appellants' electrode, they are not germane to the patentability of the invention claimed on appeal.



  *3 Further with respect to the Appendix to Appellants' Brief, we make the following observations. First, the 'recap' of the interview conducted with the examiner on July 17, 1986, essentially summarizes the presentation of an oral argument before the examiner. We have treated the 'recap' as just that, i.e., argument. The summary of an oral argument made before the examiner and attached to Appellants' Breif on appeal is not evidence in the record. Second, the 'recap' of the interview makes it clear that appellants have not compared their claimed subject matter with the closest prior art. Specifically, the closest prior art in this case is the Reinforced Pyrolytic Graphite (RPG) electrode disclosed by Bennion. The this regard, note that Bennion's RPG electrode 'appeared to have an advantage over the nuclear reactor graphite in terms of structural stability as well as performance'. See Bennion, column 6, lines 8 through 10. It is a basic rule that comparative evidence, to be effective, must compare the claimed subject matter with the closest prior art. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).



 The examiner's decision is affirmed.






 37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.






Sherman D. Winters






John T. Goolkasian






William F. Smith





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