IN THE UNITED STATES PATENT AND TRADEMARK OFFICE. Ashish Shah, Christina Scheuer, Lauren Miller, and Barry Muffoletto

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In Re: U.S. Patent No. 6,219,222 Filed: August 27, 1999 Issued: April 17, 2001 Inventor(s): Assignee: Title: Trial No: Panel: Attorney Docket No.: Ashish Shah, Christina Scheuer, Lauren Miller, and Barry Muffoletto Greatbatch, Ltd. ELECTROLYTE FOR USE IN A CAPACITOR To Be Assigned To Be Assigned AVX-616-IPR Mail Stop PATENT BOARD Patent Trial and Appeal Board United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,219,222

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1)... 2 A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1)... 2 B. Identification of Related Proceedings Under 37 C.F.R. 42.8(b)(2)... 2 C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3)... 2 D. Service Information Under 37 C.F.R. 42.8(b)(4)... 3 III. PAYMENT OF FEES UNDER 37 C.F.R IV. GROUNDS FOR STANDING UNDER 37 C.F.R (a)... 3 V. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b) AND RELIEF REQUESTED... 4 A. Claims for Which Inter Partes Review Is Requested Under 37 C.F.R (b)(1)... 4 B. The Specific Art and Statutory Grounds on Which the Challenge Is Based Under 37 C.F.R (b)(2)... 4 VI. SUMMARY OF THE 222 PATENT... 7 A. Specification of the 222 patent... 7 B. Claims 1-14, 25-36, and of the 222 patent... 8 C. Prosecution History of the 222 patent... 9 VII. CLAIM CONSTRUCTION UNDER 37 C.F.R (b)(3) VIII. APPLICATION OF CITED PRIOR ART TO EVERY CLAIM FOR WHICH INTER PARTES REVIEW IS REQUESTED UNDER 37 C.F.R. i

3 42.104(b)(4)-(5) Ground 1: Ground 2: Ground 3: Ground 4: Ground 5: Ground 6: Ground 7: Ground 8: Ground 9: Claims 1-4 and are anticipated by Burger, or in the alternative, obvious in view of Burger Claims 1 and 25 are anticipated by Ross, or in the alternative, obvious in view of Ross Claims 5-9 and are anticipated by Hildegard, or in the alternative, obvious in view of Hildegard Claims 5-9 and are obvious over Burger in view of Alwitt or Bernard Claims 8-9 are obvious over Evans I in view of Hildegard or Burger further in view of Alwitt or Bernard Claims 10-14, 28-32, 35-36, and are obvious over Evans I in view of Burger, and optionally further in view of Alwitt or Bernard Claims 10-14, 28-32, 35-36, and are obvious over Evans I in view of Hildegard Claims 10, 13-14, 28, and are obvious over Evans I in view of Ross Claims 10-13, 28-31, 35-36, and are obvious over Evans II in view of Burger, Hildegard, or Ross, and optionally further in view of Alwitt or Bernard IX. CONCLUSION ii

4 TABLE OF AUTHORITIES Cases In re Herz 537 F.2d 549, (CCPA 1976) In re ICON Health and Fitness Inc. 496 F.3d 1374, 1379 (Fed. Cir. 2007) In re Mochel 470 F.2d 638 (C.C.P.A. 1974) In re NTP, Inc. 654 F.3d 1268 (Fed. Cir. 2011) In re Translogic Tech., Inc. 504 F.3d 1249, 1257 (Fed. Cir. 2007) KSR Int l Co. v. Teleflex Inc. 550 U.S. 398, 401 (2007)... 31, 32, 33, 34, 37, 39, 40, 42, 43, 46, 47, 51, 53, 54 Pitney Bowes, Inc. v. Hewlett-Packard Co. 182 F.3d 1298, 1305 (Fed. Cir. 1999) Ormco Corp. v. Align Tech., Inc. 463 F.3d, 1299, (Fed. Cir. 2006) United States v. Adams 383 U.S. 39, 40 (1966) Statutes 35 U.S.C. 102(b)... 4, 5, 9, 18, 20, 22, 23, U.S.C. 102(e)... 5, U.S.C. 103(a)... 30, 35, 37, 43, 47, U.S.C U.S.C U.S.C. 315(e)(1)... 4 iii

5 Regulations 37 C.F.R C.F.R. 42.6(c) C.F.R. 42.8(a)(1) C.F.R. 42.8(b)(1) C.F.R. 42.8(b)(2) C.F.R. 42.8(b)(3) C.F.R. 42.8(b)(4) C.F.R (a) C.F.R (b) C.F.R (a) C.F.R C.F.R (b) C.F.R C.F.R (a) C.F.R (b) C.F.R (b)(1) C.F.R (b)(2) C.F.R (b)(3) C.F.R (b)(4)-(5) C.F.R iv

6 EXHIBIT LIST EXHIBIT NO. DESCRIPTION 1001 U.S. Patent No. 6,219,222 to Shah et al. ( 222 patent ) 1002 U.S. Patent No. 3,138,746 to Burger, et al. ( Burger ) 1003 U.S. Patent No. 4,110,817 to Ross, et al. ( Ross ) 1004 U.S. Patent No. 3,580,845 to Hildegard, et al. ( Hildegard ) 1005 U.S. Patent No. 3,346,782 to Alwitt, et al. ( Alwitt ) 1006 U.S. Patent No. 4,692,224 to Bernard, et al. ( Bernard ) 1007 U.S. Patent No. 5,369,547 to Evans ( Evans I ) 1008 U.S. Patent No. 6,094,339 to Evans ( Evans II ) 1009 Prosecution History of U.S. Appl. No. 09/384, U.S. Provisional Application No. 60/098, Declaration of Jan Petržílek, Ph.D Curriculum Vitae of Jan Petržílek, Ph.D. v

7 I. INTRODUCTION Pursuant to 35 U.S.C and 37 C.F.R. 42, AVX Corporation ( Petitioner or AVX ) respectfully petitions for Inter Partes Review ( IPR ) of claims 1-14, 25-36, and of U.S. Patent No. 6,219,222 ( the 222 patent ) (Ex. 1001). As demonstrated in this Petition, there is a reasonable likelihood that Petitioner will prevail in establishing that at least one of the claims challenged in this Petition is unpatentable based on the prior art patents and printed publications discussed below. Accordingly, institution of an IPR and initiation of trial by the Board based on this Petition is respectfully requested. The 222 patent generally relates to an electrolyte suitable for activating an electrolytic or electrochemical capacitor. (Ex. 1001: Col. 1, ll ). The specific features of the electrolyte, as well as the method for providing an electrolyte, are recited in claims 1-9, 25-27, and The alleged novelty of these claims is an electrolyte that contains a mixed solvent of water and a second solvent (e.g., ethylene glycol), an ammonium salt, and an acid. However, electrolytes with these essential components were well known at least as early as June 30, 1964, such as referenced in Burger (Ex. 1002), Ross (Ex. 1003), or Hildegard (Ex. 1004). Claims 10-14, 28-32, 35-36, and cover the use of the electrolyte described above in a ruthenium oxide capacitor. However, as taught by Evans I (Ex. 1007) and Evans II (Ex. 1008), and even acknowledged in the 222 patent by 1

8 the Patent Owner (Ex. 1001: Col. 2, ll. 1-2), a ruthenium oxide capacitor was conventional and, in fact, already employed ammonium salt-based ethylene glycol electrolytes. It would therefore have been obvious to employ well-known ammonium-salt based ethylene glycol electrolytes, such as taught by Burger, Ross, or Hildegard, in a conventional ruthenium oxide capacitor. For the foregoing reasons, which are discussed in more detail below, Petitioner respectfully requests Inter Partes Review of claims 1-14, 25-36, and of the 222 patent. In accordance with 37 C.F.R. 42.6(c) and 42.63, a copy of the 222 patent is submitted as Exhibit The publicly available records in the U.S. Patent and Trademark Office ( the Office ) indicate that the 222 patent is currently assigned to Greatbatch, Ltd. ( Greatbatch or Patent Owner ). II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(1) A. Real Party-In-Interest Under 37 C.F.R. 42.8(b)(1) Petitioner, AVX Corporation, is the real party-in-interest. B. Identification of Related Proceedings Under 37 C.F.R. 42.8(b)(2) Pursuant to 37 C.F.R. 42.8(b)(2), Petitioner notes that IPR (concerning U.S. Patent No. 6,687,117) relates to subject matter potentially similar to the present Petition. Petitioner is unaware of any other proceeding that would affect, or be affected by, a decision in this proceeding. C. Lead and Back-Up Counsel Under 37 C.F.R. 42.8(b)(3) Pursuant to 37 C.F.R. 42.8(b)(3) and 42.10(a), Petitioner provides the 2

9 following designation of lead and back-up counsel, as well as their respective service information. Lead Counsel Tim F. Williams 75 Beattie Place, Suite 1100 Greenville, SC Telephone: (864) Facsimile: (864) Back-Up Counsel Jason W. Johnston 75 Beattie Place, Suite 1100 Greenville, SC Telephone: (864) Facsimile: (864) s: Pursuant to 37 C.F.R (b), a Power of Attorney accompanies this Petition. D. Service Information Under 37 C.F.R. 42.8(b)(4) Service information (by , postal mailing, or hand-delivery) for lead and back-up counsel is provided in the above designation of lead and back-up counsel. III. PAYMENT OF FEES UNDER 37 C.F.R The undersigned hereby provides payment of the fee of $ 29,800 for this Petition by credit card, as specified in 37 C.F.R (a). If this amount is insufficient or excessive, the Commissioner is authorized to deduct any underpayment from, or credit any overpayment to, Deposit Account No IV. GROUNDS FOR STANDING UNDER 37 C.F.R (a) Petitioner certifies that: (1) the 222 patent is available for Inter Partes 3

10 Review and (2) the estoppel provisions of 35 U.S.C. 315(e)(1) do not bar or estop Petitioner from requesting Inter Partes Review of any claim of the 222 patent on the grounds raised herein. V. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R (b) AND RELIEF REQUESTED Petitioner requests Inter Partes Review and initiation of trial under 37 C.F.R and cancellation of claims 1-14, 25-36, and of the 222 patent as unpatentable based on the following statutory grounds. A. Claims for Which Inter Partes Review Is Requested Under 37 C.F.R (b)(1) Petitioner requests Inter Partes Review of claims 1-14, 25-36, and of the 222 patent. B. The Specific Art and Statutory Grounds on Which the Challenge Is Based Under 37 C.F.R (b)(2) This Petition for Inter Partes Review is based on the following prior art: (1) U.S. Patent No. 3,138,746 to Burger, et al. ( Burger, Ex. 1002), which published on June 23, 1964 and is thus prior art to the 222 patent under 35 U.S.C. 102(b); (2) U.S. Patent No. 4,110,817 to Ross, et al. ( Ross, Ex. 1003), which published on August 29, 1978 and is thus prior art to the 222 patent under 35 U.S.C. 102(b); (3) U.S. Patent No. 3,580,845 to Hildegard, et al. ( Hildegard, Ex. 1004), 4

11 which published on May 25, 1971 and is thus prior art to the 222 patent under 35 U.S.C. 102(b); (4) U.S. Patent No. 3,346,782 to Alwitt, et al. ( Alwitt, Ex. 1005), which published on July 1, 1964 and is thus prior art to the 222 patent under 35 U.S.C. 102(b); (5) U.S. Patent No. 4,692,224 to Bernard, et al. ( Bernard, Ex. 1006), which published on September 8, 1987 and is thus prior art to the 222 patent under 35 U.S.C. 102(b); (6) U.S. Patent No. 5,369,547 to Evans ( Evans I, Ex. 1007), which published on November 29, 1994 and is thus prior art to the 222 patent under 35 U.S.C. 102(b); and (7) U.S. Patent No. 6,094,339 to Evans ( Evans II, Ex. 1008), which was filed on December 4, 1998 and is thus prior art to the 222 patent under 35 U.S.C. 102(e). Petitioner requests cancellation of claims 1-14, 25-36, and on the following specific grounds: Ground 1: Claims 1-4 and are anticipated by, or in the alternative, obvious in view of Burger; Ground 2: Claims 1 and 25 are anticipated, or in the alternative, obvious in view of Ross; 5

12 Ground 3: Claims 5-9 and are anticipated, or in the alternative, obvious in view of Hildegard; Ground 4: Claims 5-9 and are obvious over Burger in view of Alwitt or Bernard; Ground 5: Claims 8-9 are obvious over Evans I in view of Hildegard or Burger further in view of Alwitt or Bernard; Ground 6: Claims 10-14, 28-32, 35-36, and are obvious over Evans I in view of Burger and optionally further in view of Alwitt or Bernard; Ground 7: Claims 10-14, 28-32, 35-36, and are obvious over Evans I in view of Hildegard; Ground 8: Claims 10, 13-14, 28, and are obvious over Evans I in view of Ross; and Ground 9: Claims 10-13, 28-31, 35-36, and are obvious over Evans II in view of Burger, Hildegard, or Ross, and optionally further in view of Alwitt or Bernard. For the reasons set forth above in the Introduction and below in the Grounds for Unpatentability, there is a reasonable likelihood that Petitioner will prevail in establishing that at least one of claims 1-14, 25-36, and is unpatentable based on Grounds

13 VI. SUMMARY OF THE 222 PATENT The 222 patent is entitled Electrolyte for Use in a Capacitor and issued on April 17, 2001 from U.S. Patent Application No. 09/384,099 ( the 099 Application ), filed August 27, The 099 application claims priority to Provisional Application No. 60/098,330 (the 330 application), filed on August 28, A. Specification of the 222 patent The 222 patent generally relates to an electrolyte suitable for activating an electrolytic or electrochemical capacitor. (Ex. 1001: Col. 1, ll-17-18). The electrolyte contains water, ethylene glycol, and an ammonium salt. (Ex. 1001: Col. 1, ll ). The ammonium salt is preferably ammonium acetate, although the 222 patent indicates that it can be substituted by other salts, such as ammonium formate, ammonium hydrogen maleate and ammonium hydrogen phosphate. (Ex. 1001: Col. 1, ll ). An acid or acids are also used to achieve the appropriate ph, conductivity, and breakdown voltage for a particular application. (Ex. 1001: Col. 1, ll ). For example, phosphoric acid, acetic acid, citric acid, oxalic acid, formic acid, maleic acid, malonic acid, malic acid, sulfuric acid, adipic acid, succinic acid, and nitric acid are said to be suitable. (Ex. 1001: Col. 1, ll ). According to the 222 patent, the electrolyte is compatible with components 7

14 and materials used in many known electrical storage devices, including electrolytic and electrochemical capacitors. (Ex. 1001: Col. 1, ll ). An example of one known device is a capacitor that includes an anode of a valve metal (e.g., tantalum) and a cathode of a conductive metal, such as titanium or tantalum, which is provided with a pseudocapacitor coating. (Ex. 1001: Col. 1, ll ). A preferred coating is ruthenium oxide. (Ex. 1001: Col. 1, ll ). The capacitor notes that such capacitors are described in U.S. Patent Nos. 5,894,403; 5,920,455; and 5,926,362. (Ex. 1001: Col. 2, ll. 1-2). B. Claims 1-14, 25-36, and of the 222 patent Claims 1, 5, 33, and 34 are independent claims directed to an electrolyte, with claims 2-4 depending from claim 1 and claims 6-9 depending from claim 5. The electrolyte of these claims requires, inter alia, (a) a mixed solvent of water and a second solvent (e.g., ethylene glycol); (b) an ammonium salt (e.g., ammonium acetate) dissolved therein; and (c) an acid (e.g., phosphoric acid). Independent claims 25 is directed to a method for providing an electrolyte, with claims depending therefrom. The method consists essentially of the steps of (a) mixing water and ethylene glycol to provide a solvent mixture; (b) dissolving an ammonium salt in the solvent mixture; and (c) providing an acid in the solvent mixture. 8

15 Independent claims 10, 35, and 36 are independent claims directed to a capacitor, with claims depending from claim 10. The capacitor of these claims requires an anode of a valve metal, a cathode of ruthenium oxide, and an electrolyte activating the anode and cathode. The electrolyte likewise requires, inter alia, (a) a mixed solvent of water and ethylene glycol; (b) an ammonium salt dissolved in the solvent (e.g., ammonium acetate); and (c) an acid (e.g., phosphoric acid). Finally, independent claims 28, 47, and 48 are independent claims directed to a method for providing a capacitor, with claims depending from claim 28. The method of these claims requires providing an anode of tantalum, providing a cathode of ruthenium oxide, and activating the anode and cathode with an electrolyte. The electrolyte likewise requires, inter alia, (a) a mixed solvent of water and ethylene glycol; (b) an ammonium salt dissolved in the solvent (e.g., ammonium acetate); and (c) an acid (e.g., phosphoric acid). C. Prosecution History of the 222 patent During prosecution of the 099 Application, the Examiner issued an Office Action in which claims 1, 3-5, 27, and 29 were rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. 5,338,472 to Yokoyama, et al. (Ex. 1009: Office Action of 9/26/00). More specifically, the Examiner noted that Yokoyama, et al. disclosed an electrolyte that contained a mixture of water and a solvent selected from the 9

16 group consisting of ethylene glycol, polyethylene glycol, formamide, dimethyl formamide, and γ-butyrolactone; an ammonium salt; and an acid. (Id.). In response, the Patent Owner amended claim 1 and 27 (issued as claim 25 of the 222 patent) as follows: 1. (Amended) An electrolyte for [activating] an electrochemical energy storage device, the electrolyte [comprising] consisting essentially of: a) a mixed solvent of water and at least one second solvent selected from the group consisting of ethylene glycol, polyethylene glycol, formamide, dimethyl formamide, [and] γ-butyrolactone, and mixtures thereof, wherein the water is present, by weight, up to about 85% and the solvent is present, by weight, up to about 95%; b) an ammonium salt dissolved in the mixed solvent; and c) an acid. 25. (Amended) A method for providing an electrolyte [comprising] consisting essentially of the steps of: a) mixing water and ethylene glycol to provide a solvent mixture, wherein the water is present, by weight, up to about 85% and the solvent is present, by weight, up to about 95%; b) dissolving an ammonium salt in the solvent mixture; and c) providing an acid in the solvent mixture. (Ex. 1009: Amdt. Filed on 10/31/00). Based on these amendments, the Patent Owner argued that the focus of Yokoyama, et al. was to provide an improved dielectric strength, which was accomplished by adding a combination of colloidal silica and a specific phosphorous- 10

17 compound. (Id.). In contrast, the Patent Owner argued that the amended claims consist essentially of a mixed solvent of water and at least one second solvent, and an acid. (Id.). On this basis, the Patent Owner argued that the Applicants' electrolyte is devoid of a colloidal silica and thus was not anticipated by Yokoyama. (Id.). In response, the Office issued a Notice of Allowance. VII. CLAIM CONSTRUCTION UNDER 37 C.F.R (b)(3) A claim in inter partes review is given the broadest reasonable construction in light of the specification. See 37 C.F.R (b). Under this standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this proceeding, claim terms are presumed to take on their broadest reasonable ordinary meaning. As stated in the case In re ICON Health and Fitness, Inc. at 496 F.3d 1374, 1379 (Fed. Cir. 2007): the PTO must give claims their broadest reasonable construction consistent with the specification... [t]herefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation. In addition to this presumption, Petitioner provides a more detailed explanation of the broadest reasonable meaning of certain claim terms. 11

18 i. For an Electrochemical Energy Storage Device, For a Capacitor, and For Activating a Capacitor (Claims 1, 5, 8-9, and 33-34) When the body of a claim sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, it is well established that the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett- Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In claims 1, 5, 8-9, and 33-34, the terms electrochemical energy storage device and capacitor are simply intended uses for the claimed electrolyte. Therefore, consistent with well-established law, these terms should not be construed as a limitation of the claims. ii. Consisting Essentially Of (Claims 1, 25, and 33-34) The proper construction of consisting essentially of limits the scope of a claim to the specified materials or process steps and those that do not materially affect the basic and novel characteristic(s) of the claimed invention. In re Herz, 537 F.2d 549, (CCPA 1976) (emphasis in original). iii. Up To (Claims 1, 5-7, 10-12, 25, 28-30, 33-36, and 47-48) The claims recite the presence of (i) water in an amount up to about 85%; (ii) ethylene glycol in an amount up to about 95%; (iii) acetic acid in an amount up to about 80%; (iv) phosphoric acid in an amount up to about 6%, and (v) 12

19 ammonium acetate in an amount up to about 50%. Nowhere does the specification of the 222 patent employ the term up to for any of the recited ranges. Instead, the specification only describes ranges that have 0% as a lower limit i.e., (i) 0-85% water; (ii) 0-95% ethylene glycol; (iii) 0-80% acetic acid; (iv) 0-6% phosphoric acid, and (v) 0-50% ammonium acetate. (Ex. 1001: Col. 1, ll ). Thus, consistent with the specification of the 222 patent, the proper construction for the term up to must encompass 0% as a lower limit. This also comports with case law interpreting the phrase up to to include zero. See e.g., In re Mochel, 470 F.2d 638 (C.C.P.A. 1974). iv. Ammonium Salt or Ammonium Acetate (Claims 1-14, 25-36, and 47-48) Petitioner proposes that the phrase ammonium salt (e.g., ammonium acetate) means a salt resulting from a neutralization reaction of an ammonium base and an acid (e.g., acetic acid). This construction is the ordinary and customary meaning as would be understood by one of ordinary skill in the art from the specification of the 222 patent. v. Dissolved or Dissolving (Claims 1, 10, 25, 28, 35-36, and 47-48) Petitioner proposes that the phrase dissolved (or dissolving ) should be interpreted to mean incorporated (or incorporating) in a solution. This 13

20 construction is the ordinary and customary meaning as would be understood by one of ordinary skill in the art from the specification of the 222 patent. vi. Solute (Claims 5 and 33-34) Petitioner proposes that the phrase solute should be interpreted to mean a substance that is incorporated in a solution. This construction is the ordinary and customary meaning as would be understood by one of ordinary skill in the art from the specification of the 222 patent. vii. Cathode (Claims 10, 13, 28, 31, 35-36, and 47-48) Petitioner proposes that the phrase cathode should be interpreted to mean a conductive metal that contains a coating of an oxide, nitride, or carbide - as set forth in the specification of the 222 patent. (Ex. 1001: Col. 1, ll ). Notably, the only example of a cathode that is provided in the 222 patent is a porous ruthenium oxide film provided on a titanium substrate. (Ex. 1001: Col. 1, ll ). viii. Anode (Claims 10, 13, 28, 31, 35-36, and 47-48) Petitioner proposes that the phrase anode should be interpreted to mean an electrode formed from a valve metal as set forth in the specification of the 222 patent. (Ex. 1001: Col. 1, ll ). ix. Valve Metal (Claims 10 and 35-36) Petitioner proposes that the phrase valve metal should be interpreted to 14

21 mean a film-forming metal, such as vanadium, niobium, and tantalum. (Ex. 1001: Col. 1, ll ). This construction is the ordinary and customary meaning as would be understood by one of ordinary skill in the art from the specification of the 222 patent. x. Activating (Claims 28 and 47-48) Petitioner proposes that the phrase activating should be interpreted to mean electrochemically associating the anode with the cathode. (Ex. 1001: Col. 1, ll ). This construction is the ordinary and customary meaning as would be understood by one of ordinary skill in the art from the specification of the 222 patent. VIII. APPLICATION OF CITED PRIOR ART TO EVERY CLAIM FOR WHICH INTER PARTES REVIEW IS REQUESTED UNDER 37 C.F.R (b)(4)-(5) Before turning to these Grounds for unpatentability, Petitioner addresses two issues that are relevant to the obviousness analysis for Grounds 1-9, namely the level of ordinary skill in the art and secondary considerations of non-obviousness. Specifically, Petitioner submits that a person of ordinary skill in the art would have had an undergraduate degree in engineering or science such as materials science, physics, electrochemistry, chemistry, chemical engineering, or equivalent work experience, and would have had at least five (5) years of experience in the field of electrolytic capacitors. A person of ordinary skill in the art would have understood 15

22 electrochemistry in general, and particularly, chemical reactions in electrolyte systems. In addition, Petitioner is not aware of any secondary considerations that would render the claims non-obvious. In any event, it is well settled that there must be a nexus between the alleged secondary consideration and the novel features of claims 1-14, 25-36, and See, e.g., Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, (Fed. Cir. 2006) (commercial success is not relevant if feature that drives success was in prior art). But, as discussed in detail below, all of the claimed elements were well known in the prior art. Thus, to the extent the Patent Owner alleges any secondary considerations (e.g., commercial success), there would be no nexus between the alleged secondary consideration and any allegedly novel feature of claims 1-14, 25-36, and Ground 1: Claims 1-4 and are anticipated by Burger, or in the alternative, obvious in view of Burger Claims 1-4 and are anticipated by U.S. Patent No. 3,138,746 to Burger, et al. ( Burger, Ex. 1002), or in the alternative, rendered obvious in view of Burger. i. Claims 1-4 Independent claim 1 is directed to an electrolyte for an electrochemical energy storage device that consists essentially of a mixed solvent of water in an amount up to about 85% by weight and a second solvent in an amount up to about 16

23 95% by weight, which is selected from the group consisting of ethylene glycol, polyethylene glycol, formamide, dimethyl formamide, and γ-butyrolactone; an ammonium salt dissolved in the mixed solvent; and an acid. Burger is directed to an electrolyte suitable for use in an electrolytic capacitor. (Ex. 1002: Col. 1, ll ). The electrolyte contains an ionogen (e.g., formic acid), which is neutralized or partially neutralized with ammonia or an amine, and dissolved in a suitable solvent to provide ammonium formate i.e. an ammonium salt. (Ex. 1002: Col. 1, ll ). According to Burger, the use of ammonium formate as a conducting ionogen permits the solvent to be selected from a large range of compounds since formates are widely soluble. (Ex. 1002: Col. 2, ll ). The choice of solvent is determined by the specific electrical characteristics required in the capacitor for which the electrolyte is designed. (Ex. 1002: Col. 3, ll. 5-7). For example, in a capacitor that uses a tantalum block as the anode, a suitable solvent system is ethylene glycol and water. (Ex. 1002: Col. 3, ll ). One specific electrolyte for a sintered porous tantalum block is described in Example 6 of Burger. (Ex. 1002: Col. 5, ll ). The table below summarizes the components and relative weight percentage of each component of the electrolyte of Example 6. 17

24 Electrolyte of Example VI Component Wt.% Ammonium Formate 24.6 Phosphoric Acid 1.6 Ethylene Glycol 41 Deionized Water 32.8 Thus, Burger discloses an electrolyte having each of the components of independent claim 1 i.e., a mixed solvent of deionized water and ethylene glycol, an ammonium salt (ammonium formate) dissolved in the solvent mixture, and phosphoric acid. The amounts of the water and ethylene glycol in Burger are also below the claimed upper limits of claim 1. For at least these reasons, independent claim 1 is anticipated under 35 U.S.C. 102(b) by Burger, or in the alternative rendered obvious in view of Burger. Dependent claim 2 requires that the ammonium salt is selected from the group consisting of ammonium acetate, ammonium formate, ammonium hydrogen maleate, ammonium hydrogen phosphate, and mixtures thereof. Burger discloses the use of ammonium formate in the electrolyte. (Ex. 1002: Col. 2, ll ; Col. 5, lines 23-33). Dependent claim 3 requires that the acid is selected from the group consisting of citric acid, oxalic acid, formic acid, maleic acid, phosphoric acid, malonic acid, maltic acid, sulfuric acid, adipic acid, succinic acid, nitric acid, acetic acid, and mixtures thereof. Burger discloses the use of phosphoric acid in the 18

25 electrolyte. (Ex. 1002: Col. 5, ll ). Dependent claim 4 requires that the electrolyte has a ph between about 1 to about 7. Burger discloses one embodiment of an electrolyte in which the ph is about 7. (Ex. 1002: Col. 2, ll ). Burger also indicates that all of the compositions described in the Example section have a ph value between about 5 and 8, which overlaps the range of claim 4. (Ex. 1002: 5, ll ). Still further, Burger indicates that lower ph values can be used with equal success for electrolytes employed in combination with tantalum electrodes. (Ex. 1002: Col. 5, ll ). ii. Claims Independent claim 25 is directed a method for providing an electrolyte that consists essentially of the steps of mixing water and ethylene glycol to provide a solvent mixture in which water is present in an amount up to about 85% by weight and ethylene glycol is present in an amount up to about 95% by weight; dissolving the ammonium salt in the solvent mixture; and providing an acid in the solvent mixture. As discussed above, Burger describes ionogens (e.g., ammonium formate) dissolved in the solvent system. (Ex. 1002: Col. 2, ll ). In Example 6 of Burger, for instance, ammonium formate and phosphoric acid were mixed in a solvent mixture of ethylene glycol and water to provide the electrolyte. (Ex. 1002: Col. 5, ll ). Thus, for at least these reasons, independent claim 25 is 19

26 anticipated under 35 U.S.C. 102(b) by Burger, or in the alternative rendered obvious in view of Burger. Dependent claim 26 requires selecting the ammonium salt from the group consisting of ammonium acetate, ammonium formate, ammonium hydrogen maleate, ammonium hydrogen phosphate, and mixtures thereof. Burger discloses the use of ammonium formate in the electrolyte. (Ex. 1002: Col. 2, ll ). Dependent claim 27 requires selecting the acid from the group consisting of citric acid, oxalic acid, formic acid, maleic acid, phosphoric acid, malonic acid, maltic acid, sulfuric acid, adipic acid, succinic acid, nitric acid, acetic acid, and mixtures thereof. Burger discloses the use of phosphoric acid in the electrolyte. (Ex. 1002: Col. 5, ll ). Ground 2: Claims 1 and 25 are anticipated by Ross, or in the alternative, obvious in view of Ross Claims 1 and 25 are anticipated by U.S. Patent No. 4,110,817 to Ross, et al. ( Ross, Ex. 1003), or in the alternative, rendered obvious in view of Ross. i. Claim 1 As indicated above, independent claim 1 is directed to an electrolyte that consists essentially of a mixed solvent of water in an amount up to about 85% by weight and a second solvent in an amount up to about 95% by weight; an ammonium salt dissolved in the mixed solvent; and an acid. Ross is directed to an electrolytic capacitor having an oxide-coated 20

27 aluminum electrode contacted by an electrolyte solution. (Ex. 1003: Col. 1, ll. 8-9). The electrolyte solution contains solutes of succinic or adipic acid compounds, such as a solute of ammonium succinate or ammonium adipate combined with succinamic acid. (Ex. 1003: Col. 1, ll ). Glycol solutions of such compounds are said to make excellent working electrolytes for capacitors. (Ex. 1003: Col. 2, ll ). According to Ross, such an electrolyte can exhibit a stable resistivity over the operating temperature range of the capacitor. (Ex. 1003: Col. 1, ll ). The electrolytes of Examples III and IV of Ross, for instance, are formed from a combination of ammonium succinate, succinamic acid, ethylene glycol, and water. (Ex. 1003: Col. 2, ll ). The tables below summarize the components and relative weight percentage of each component of electrolytes F and H of Examples III and IV, respectively. (Ex. 1003: Col. 3, ll ). Electrolyte F of Example III Component Amount (grams) Calculated Wt.% Ammonium Succinate Succinamic Acid Ethylene Glycol Water Total

28 Electrolyte H of Example IV Component Amount (grams) Calculated Wt.% Ammonium Adipate Succinamic Acid Ethylene Glycol Water Total Thus, as indicated above, Ross discloses an electrolyte having each of the components of claim 1. For example, Ross discloses an electrolyte having a mixed solvent of water and ethylene glycol, an ammonium salt (ammonium succinate or adipate) dissolved in the solvent mixture, and succinamic acid. The amounts of the water and ethylene glycol in Ross are also within the ranges of claim 1. For example, in Example IV, the Electrolyte H contains water in an amount of 4.0% by weight and ethylene glycol in an amount of 79.5% by weight, both of which are below the claimed upper limits of claim 1. (Ex. 1003: Col. 3, ll ). For at least these reasons, independent claim 1 is anticipated under 35 U.S.C. 102(b) by Ross, or in the alternative rendered obvious in view of Ross. ii. Claim 25 As indicated above, independent Claim 25 is directed a method for providing an electrolyte that consists essentially of the steps of mixing water and ethylene glycol to provide a solvent mixture in which water is present in an amount up to about 85% by weight and ethylene glycol is present in an amount up to about 95% by weight; dissolving the ammonium salt in the solvent mixture; and providing an 22

29 acid in the solvent mixture. In Example III and IV of Ross, the ammonium salt (e.g., ammonium succinate or adipate) and the succinamic acid were mixed in the solvent mixture of ethylene glycol and water to provide the electrolyte. (Ex. 1003: Col. 3, ll ). The amounts of the water and ethylene glycol in Ross are also within the ranges of claim 25. (Ex. 1003: Col. 3, ll ). For at least these reasons, independent claim 25 is anticipated under 35 U.S.C. 102(b) by Ross, or in the alternative rendered obvious in view of Ross. Ground 3: Claims 5-9 and are anticipated by Hildegard, or in the alternative, obvious in view of Hildegard Claims 5-9 and are anticipated by U.S. Patent No. 3,580,845 to Hildegard et al. ( Hildegard, Ex. 1004), or in the alternative, rendered obvious in view of Hildegard. i. Claims 5-9 Independent claim 5 is directed to an electrolyte for a capacitor that comprises a mixed solvent of water in an amount up to about 85% by weight and ethylene glycol in an amount up to about 95% by weight; a solute of ammonium acetate; and a mixed acid of acetic acid and phosphoric acid. Hildegard is directed to a low-resistive liquid electrolyte suitable for use in an electrolytic capacitor. (Ex. 1004: Col. 1, ll ). The electrolyte contains a mixture of a multivalent alcohol as a solvent, a basic nitrogen compound, two 23

30 inorganic acids, and one organic acid and/or reaction products of these acids or the nitrogen compound. (Ex. 1004: Col. 1, ll ). The basic nitrogen compound (e.g., ammonia) may be added to the electrolyte in the form an aqueous solution, such as at least 25% in water. (Ex. 1004: Col. 1, ll ). For example, Hildegard indicates that particularly satisfactory results are obtained with electrolytes of the following composition: Component Glycol Boric Acid Ammonia (25% in water) Phosphoric Acid Acetic Acid Ammonium Pentaborate Chromic Acid or Ammonium Chromate Amount parts by weight parts by weight parts by weight 7-12 parts by weight parts by weight 0-20 parts by weight % by weight (Ex. 1004: Col. 2, ll ; Ex. 1011: 17). In Example 2 of Hildegard, for instance, Electrolyte B contains 410 grams of ethylene glycol, 93 grams of boric acid, 230 grams of ammonia (25% in water), 35 grams of phosphoric acid, and 231 grams of acetic acid. (Ex. 1004: Col. 3, ll. 5-25; Ex. 1011: 18). Thus, in these examples, Hildegard employs acetic acid as an organic acid in combination with ammonia (25% in water) as the basic nitrogen compound. As readily understood by those of ordinary skill in the art, the acetic acid in Electrolyte B will undergo a neutralization reaction with the ammonia (25% in water) to form 24

31 an ammonium acetate salt. (Ex. 1011: 19). Because the molar amount of the added ammonia is lower than the molar amount of phosphoric and acetic acids, some portion of the acetic acid and phosphoric acid would not react with the ammonia (25% in water). (Ex. 1011: 19). Thus, the final mixture of Electrolyte B would necessarily include ammonium acetate, acetic acid, and phosphoric acid. (Ex. 1011: 19). Of course, as an alternative to using ammonia, Hildegard also indicates that the basic nitrogen compound could be provided completely or partly in the form of its salt with the organic acid. (Ex. 1004: Col. 1, ll ). In light of these teachings, Hildegard clearly directs a person of ordinary skill in the art to use an ammonium salt of acetic acid (ammonium acetate) as a substitute for ammonia in its preferred electrolyte system. (Ex. 1011: 20). Such an electrolyte would necessarily contain ammonium acetate, acetic acid, and phosphoric acid. (Ex. 1011: 20). Hildegard thus discloses an electrolyte having each of the components of claim 5. For example, Hildegard discloses an electrolyte containing water, a multivalent alcohol (e.g., ethylene glycol), an ammonium salt (e.g., ammonium acetate), and a mixed acid of acetic acid and phosphoric acid. For at least these reasons, independent claim 5 is anticipated under 35 U.S.C. 102(b) by Hildegard, or in the alternative rendered obvious in view of Hildegard. 25

32 Dependent claim 6 requires that the ammonium acetate is present, by weight, up to about 50%. In Example 2 of Hildegard, ammonia (25% in water) is initially employed in an amount of 23% by weight. 1 (Ex. 1004: Cols. 2-3). After undergoing a neutralization reaction with acetic acid, an ammonium acetate salt would be formed that necessarily constitutes less than about 50 wt.% of Electrolyte B. (Ex. 1011: 19). Further, Hildegard also directs a person of ordinary skill in the art to use an ammonium salt of acetic acid (ammonium acetate) as a substitute for ammonia in its preferred electrolyte system. (Ex. 1004: Col. 1, ll ; Ex. 1011: 20). Such an electrolyte would necessarily contain ammonium acetate in an amount of less than 50% by weight in the initial electrolyte. (Ex. 1011: 20). Dependent claim 7 requires that the acetic acid is present in an amount of up to about 80% by weight and the phosphoric acid is present in an amount of up to about 6% by weight. In Example 2 of Hildegard, acetic acid is employed in the initial electrolyte in an amount of 23% by weight and phosphoric acid is employed in an amount of 3.5% by weight. 2 (Ex. 1004: Cols. 2-3). After undergoing a partial neutralization with ammonia, acetic acid would remain present but necessarily constitute less than about 80% by weight of Electrolyte B. (Ex. 1011: 19). 1 The weight percentage of ammonia (25% in water) was calculated by dividing 230 grams of ammonia by 999 grams of the total weight of Electrolyte B. 2 The weight percentage of acetic acid was calculated by dividing 231 grams of acetic acid by 999 grams of the total weight of Electrolyte B, and the weight percentage of phosphoric acid was calculated by dividing 35 grams of phosphoric acid by 999 grams of the total weight of Electrolyte B. 26

33 Likewise, phosphoric acid would remain present but necessarily constitute less than about 6% by weight of Electrolyte B. (Ex. 1011: 19). Further, Hildegard also directs a person of ordinary skill in the art to use an ammonium salt of acetic acid (ammonium acetate) as a substitute for ammonia in its preferred electrolyte system. (Ex. 1004: Col. 1, ll ; Ex. 1011: 20). Such an electrolyte would necessarily contain acetic acid in an amount of less than about 80% by weight and phosphoric acid in an amount of less than about 6% by weight. (Ex. 1011: 20). Claims 8-9 directly depend from the electrolyte of independent claim 5, but nevertheless attempt to recite specific features of a capacitor. Because the capacitor is simply an intended use for the electrolyte of independent claim 5, it is not a limitation and no patentable weight should be given to the capacitor limitations recited in claims 8-9. Therefore, claims 8-9 are anticipated by, or at the very least obvious in view of Hildegard for the same reasons noted above in the discussion of independent claim 5. ii. Claim 33 Independent Claim 33 is directed to an electrolyte for activating a capacitor that consists essentially of a mixed solvent of water and ethylene glycol, a solute of ammonium acetate up to about 50% by weight, and a mixed acid of acetic acid and phosphoric acid. As noted above, the electrolyte of Hildegard contains water, ethylene glycol, 27

34 and a mixed acid of acetic acid and phosphoric acid. (Ex. 1004: Col. 2, ll ; Col. 3, ll. 5-25). As readily understood by those of ordinary skill in the art, the acetic acid in Electrolyte B will undergo a neutralization reaction with the ammonia (25% in water) to form an ammonium acetate salt. (Ex. 1011: 19). Because the molar amount of the added ammonia is lower than the molar amount of phosphoric and acetic acids, some portion of the acetic acid and phosphoric acid would not react with the ammonia (25% in water). (Ex. 1011: 19). Thus, the final mixture of Electrolyte B would necessarily include ammonium acetate, acetic acid, and phosphoric acid. (Ex. 1011: 19). Further, the ammonium acetate salt would be necessarily present in an amount less than about 50 wt.% of Electrolyte B. (Ex. 1011: 19). Of course, as an alternative to using ammonia, Hildegard also indicates that the basic nitrogen compound could be provided completely or partly in the form of its salt with the organic acid. (Ex. 1004: Col. 1, ll ). In light of these teachings, Hildegard clearly directs a person of ordinary skill in the art to use an ammonium salt of acetic acid (ammonium acetate) as a substitute for ammonia in its preferred electrolyte system. (Ex. 1011: 20). Such an electrolyte would necessarily contain ammonium acetate in an amount of less than about 50% by weight, acetic acid, and phosphoric acid. (Ex. 1011: 20). 28

35 iii. Claim 34 Independent Claim 34 is directed to an electrolyte for activating a capacitor that consists essentially of a mixed solvent of water and ethylene glycol, a solute of ammonium acetate, and a mixed acid of acetic acid in an amount up to about 80% by weight and phosphoric acid in an amount up to about 6% by weight. As noted above, the electrolyte of Hildegard contains water, ethylene glycol, and a mixed acid of acetic acid and phosphoric acid. (Ex. 1004: Col. 2, ll ; Col. 3, ll. 5-25). In Example 2 of Hildegard, for instance, the acetic acid in Electrolyte B will undergo a neutralization reaction with the ammonia (25% in water) to form an ammonium acetate salt. (Ex. 1011: 19). Because the molar amount of the added ammonia is lower than the molar amount of phosphoric and acetic acids, some portion of the acetic acid and phosphoric acid would not react with the ammonia (25% in water). (Ex. 1011: 19). Thus, the final mixture of Electrolyte B would necessarily include ammonium acetate, acetic acid, and phosphoric acid. (Ex. 1011: 19). The acetic acid would necessarily constitute less than about 80% by weight of Electrolyte B and the phosphoric acid would necessarily constitute less than about 6% by weight of Electrolyte B. (Ex. 1011: 19). Of course, as an alternative to using ammonia, Hildegard also indicates that the basic nitrogen compound could be provided completely or partly in the form 29

36 of its salt with the organic acid. (Ex. 1004: Col. 1, ll ). In light of these teachings, Hildegard clearly directs a person of ordinary skill in the art to use an ammonium salt of acetic acid (ammonium acetate) as a substitute for ammonia in its preferred electrolyte system. (Ex. 1011: 20). Such an electrolyte would necessarily contain ammonium acetate, acetic acid in an amount of less than about 80% by weight, and phosphoric acid in an amount of less than about 6% by weight. (Ex. 1011: 20). Ground 4: Claims 5-9 and are obvious over Burger in view of Alwitt or Bernard Claims 5-9 and are obvious under 35 U.S.C. 103(a) over Burger in view of U.S. Patent No. 3,346,782 to Alwitt, et al. ( Alwitt, Ex. 1005) or U.S. Patent No. 4,692,224 to Bernard, et al. ( Bernard, Ex. 1006). i. Claims 5-9 As discussed above, independent claim 5 is directed to an electrolyte for a capacitor that comprises a mixed solvent of water in an amount up to about 85% by weight and ethylene glycol in an amount up to about 95% by weight; a solute of ammonium acetate; and a mixed acid of acetic acid and phosphoric acid. Burger discloses a mixed solvent of deionized water and ethylene glycol, an ammonium formate dissolved in the solvent mixture, and phosphoric acid. (Ex. 1002: Col. 5, ll ; Ex. 1011: 21). In Example 6, the water is present in an amount of 32.8% and the ethylene glycol is present in an amount of 41%. (Ex. 30

37 1002: Col. 5, ll ; Ex. 1011: 21). Burger also teaches that acetic acid may be employed in the electrolyte. (Ex. 1002: Col. 5, ll ; Col. 6, ll ; Ex. 1011: 21). Thus, Burger discloses an electrolyte having each of the components of claim 5 except that the ammonium salt is ammonium acetate. Alwitt and Bernard, however, teach that ammonium acetate is a well-known substitute for ammonium formate in electrolytes that contains ethylene glycol and water. (Ex. 1011: 23). For example, Alwitt is directed to an electrolytic capacitor that contains an electrolyte in which an ionogen compound is dissolved having the formula R 1 COONH 2 R 2 R 3, wherein R 1, R 2, and R 3 are selected from the group consisting of hydrogen, a C 1 -C 7 alkyl group, and mixtures thereof. (Ex. 1005: Col. 1, ll ). Specific ionogens of this formula are said to include ammonium formate (R 1 is H) and ammonium acetate (R 1 is CH 3 ). (Ex. 1005: Col. 1, ll.70-71). Likewise, Bernard is directed to an electrolyte for use with a tantalum capacitor that contains an organic carboxylic acid (e.g., acetic acid), or its ammonia or amine salt in a water/ethylene glycol solution. (Ex. 1006: Col. 2, ll ). A suitable ammonium salt is said to include, for instance, ammonium acetate. (Ex. 1006: Col. 4, ll ; Col. 3, ll. 1-7). When considering obviousness of a combination of known elements, the operative question is whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int l Co. v. 31

38 Teleflex Inc., 550 U.S. 398, 401 (2007). Indeed, when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. Id. (discussing the holding in United States v. Adams, 383 U.S. 39, 40 (1966). The modification of Burger to include ammonium acetate is simply a mere substitution of prior art elements according to their established functions. (Ex. 1011: 23). Thus, under KSR, a person of ordinary skill in the art would have found it obvious to employ ammonium acetate in the electrolyte of Burger. Dependent claim 6 requires that the ammonium acetate is present, by weight, up to about 50%. In one example of Burger, ammonium formate is employed in an amount of 24.6%. (Ex. 1002: Col. 5, ll ). As discussed above, it would have been obvious under KSR to substitute ammonium acetate for ammonium formate based on the teachings of Alwitt or Bernard. (Ex. 1011: 23). Dependent claim 7 requires that the acetic acid is present in an amount of up to about 80% by weight and the phosphoric acid is present in an amount of up to about 6% by weight. In one example of Burger, acetic acid is employed in an amount of 18.4% by weight and phosphoric acid is employed in an amount of 0.3% by weight. (Ex. 1002: Col. 5, ll ). Claims 8-9 directly depend from the electrolyte of independent claim 5, 32

39 but nevertheless attempt to recite specific features of a capacitor. Because the capacitor is simply an intended use for the electrolyte of independent claim 5, it is not a limitation and no patentable weight should be given to the capacitor limitations recited in claims 8-9. Therefore, claims 8-9 are anticipated by, or at the very least obvious over Burger in view of Alwitt or Bernard for the same reasons noted above in the discussion of independent claim 5. ii. Claim 33 Independent claim 33 is directed to an electrolyte for activating a capacitor that consists essentially of a mixed solvent of water and ethylene glycol, a solute of ammonium acetate up to about 50% by weight, and a mixed acid of acetic acid and phosphoric acid. As noted above, Burger discloses the use of ethylene glycol, acetic acid in an amount of 18.4% by weight, and phosphoric acid in combination with ammonium formate. (Ex. 1002: Col. 5, ll ). Alwitt and Bernard likewise teach that ammonium acetate is a known substitute for ammonium formate. (Ex. 1005: Col. 1, ll ; Ex. 1006: Col. 4, ll and Col. 3, ll. 1-7; Ex. 1011: 23). The modification of Burger to include ammonium acetate is simply a mere substitution of prior art elements according to their established functions. (Ex. 1011: 23). Thus, under KSR, a person of ordinary skill in the art would have found it obvious to employ ammonium acetate in the electrolyte of Burger. 33