Envia Systems, Inc.

Patent Trials and Appeals Board

Feb 2, 2022

2021000343 (P.T.A.B. Feb. 2, 2022)

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. 14/460,482 08/15/2014 Shabab Amiruddin 5024.46US02 6827 62274 7590 02/02/2022 CHRISTENSEN, FONDER, DARDI & HERBERT PLLC 11322 86th Ave. N. Maple Grove, MN 55369 EXAMINER ZEMUI, NATHANAEL T ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): docket@cfd-ip.com patents@cfd-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHABAB AMIRUDDIN, BING LI, SWAPNIL J. DALAVI, and SUJEET KUMAR ____________ Appeal 2021-000343 Application 14/460,482 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and LILAN REN, 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 13-36, 38, and 39 of Application 14/460,482. Final Act. (October 29, 2019). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm in part. I. BACKGROUND The ’482 Application describes lithium ion batteries for use in consumer electronic products. Spec. 1. In particular, these batteries have a 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Zenlabs Energy, Inc. as the real party in interest. Appeal Br. 3. Appeal 2021-000343 Application 14/460,482 2 high capacity anode comprising a silicon-based active material. Id. Such electrodes can be designed to accommodate significant morphological changes without suffering material degradation. Id. at 4-5. Claim 13 is representative of the ’482 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 13. A lithium ion battery having a volume from 500mm3 to 100,000mm3 and comprising a positive electrode comprising a lithium metal oxide, a negative electrode comprising a silicon based active material, a separator between the positive electrode and the negative electrode, supplemental lithium, and an electrolyte comprising lithium ions, wherein the supplemental lithium is present in an amount to compensate for 110% to 170% of the negative electrode first cycle irreversible capacity loss, wherein the electrodes are wound or in a stack of electrodes, wherein the silicon based active material generally has a specific capacity from 800mAh/g to 2500mAh/g at a rate of C/3 when cycled from 1.5V to 0.005V against lithium, wherein the negative electrode has an active material loading from l.5mg/cm2 to 8mg/cm2 and a density from 0.5g/cc to 2.0g/cc, wherein the lithium ion battery has a balance of negative electrode capacity relative to the sum of positive electrode capacity and supplemental lithium from 0.8 to 1.5 and Appeal 2021-000343 Application 14/460,482 3 wherein the battery exhibits a volumetric energy density at least 550 Wh/l at a rate of C/10 discharged from 4.35V to 2.75V and wherein the lithium ion battery has a 150th cycle discharge capacity at a discharge rate of C/3 discharged from 4.35V to 2.75V that is at least 70% of the 5th cycle discharge capacity at a discharge rate of C/3 discharged from 4.35V to 2.75V. Appeal Br. 32 (paragraphing and indentation supplied). II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 13-21 and 35 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Kumar2 and Takezawa.3 Final Act. 2. 2. Claims 22-30 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Kumar, Lopez,4 and Takezawa. Final Act. 7. 3. Claims 31-34, 36, 38, and 39 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Kumar, Takezawa, Kawasaki,5 and Oh.6 Final Act. 11. 2 US 2012/0028105 A1, published February 2, 2012. 3 US 2013/0302688 A1, published November 14, 2013. 4 US 2011/0111294 A1, published May 12, 2011 5 US 2013/0122353 A1, published May 16, 2013. 6 US 2013/0224585 A1, published August 29, 2013. Appeal 2021-000343 Application 14/460,482 4 III. DISCUSSION A. Rejection of claims 13-21 and 35 over the combination of Kumar and Takezawa Claim 13 is an independent claim, and claims 14-21 and 35 depend from it. Appellant argues that the rejection of claims 13-21 and 35 should be reversed based on limitations of claim 13. See Appeal Br. 10-19. Appellant also presents additional arguments for reversal of the rejection of dependent claims 14 and 21. See id. at 19-21. 1. Claims 13, 15-20, and 35 Claim 13 specifies, inter alia, that the claimed lithium ion battery has “a volume from 500 mm³ to 100,000 mm³.” In rejecting claim 13, the Examiner finds that Kumar describes lithium ion batteries having a range of volumes that overlaps the claimed range. Final Act. 4 (citing Kumar ¶ 35). Appellant argues that this finding is erroneous. Appeal Br. 13-15 Appellant argues Kumar’s paragraph 35 is correctly read as describing batteries having volumes which greatly exceed the claimed range. Id. According to Appellant, Kumar describes batteries which are sized for use in vehicles because this is the focus of Kumar’s application. See Kumar Abstract (“High-performance battery packs are described especially for use in electric vehicles and plug-in hybrid electric vehicles.”). For the following reasons, we agree with Appellant. Paragraph 35 of Kumar reads: The design of the individual batteries around the high energy positive electrode active material can provide for batteries with a high capacity within a practical format. Pouch batteries are generally approximate rectangular parallelepipeds, excluding the connection tabs and other potential features Appeal 2021-000343 Application 14/460,482 5 around the edges, characterized by a thickness (t) and a planar area with a width (w) and a height (h) in which the thickness is generally significantly less than the linear dimensions (width and height) defining the planar area (w·h), as shown schematically in FIG. 2. In particular, the batteries can have a thickness between about 7 mm and about 18 mm. The area of the pouch battery can range from about 25,000 mm2 to about 50,000 mm2, in which the linear dimensions of width and height defining the area generally range from about 50 mm to about 750 mm. Kumar ¶ 35. Appellant argues that this portion of Kumar describes batteries with volumes-calculated as area × thickness-between 175,000 mm³ (25,000 mm² × 7 mm) and 900,000 mm³ (50,000 mm² × 18 mm). Appeal Br. 14. This is a volume range that does not overlap the claimed range of 500 mm³ to 100,000 mm³. The Examiner, on the other hand, argues that a person having ordinary skill in the art would interpret Kumar’s paragraph 35 as describing batteries having a much broader range of volumes. Answer 4. The Examiner makes this determination by calculating the volume using Kumar’s disclosed maximum and minimum heights, widths, and thicknesses. Id. Based on these dimensions, the Examiner finds that Kumar describes batteries with areas between 2500 mm2 and 562,500 mm2 and volumes between 17,500 mm³ and 10,125,000 mm³. Based on these calculations, the Examiner found that Kumar describes batteries having a range of sizes that overlaps the claimed range. We believe that a person having ordinary skill in the art would interpret Kumar’s description of the size of its battery packs in a manner consistent with Appellant’s reading of paragraph 35. In other words, we interpret Kumar’s statement that “[t]he area of the pouch battery can range Appeal 2021-000343 Application 14/460,482 6 from about 25,000 mm² to about 50,000 mm²” as stating the permitted minimum and maximum values for the area. Kumar ¶ 35. The Examiner, therefore, erred by finding that Kumar describes batteries having volumes in a range that overlaps the claimed range. Thus, the Examiner has not established a prima facie case of obviousness of claim 13. We, therefore, reverse the rejection of claim 13 and its dependent claims 15-20 and 35. 2. Claim 14 For the reasons set forth above, we have reversed the rejection of claim 13. Because claim 14 depends from claim 13, we also reverse the rejection of claim 14 we express no opinion on Appellant’s separate arguments for reversal of the rejection of claim 14. 3. Claim 21 For the reasons set forth above, we have reversed the rejection of claim 13. Because claim 21 depends from claim 13, we also reverse the rejection of claim 21. We express no opinion regarding Appellant’s separate arguments for reversal of the rejection of claim 21. B. Rejection of claims 22-30 over the combination of Kumar, Lopez, and Takezawa Claim 22 is an independent claim, and claims 23-30 depend from it. Appellant argues that the rejection of claims 22-30 should be reversed based upon the limitations of independent claim 22. See Appeal Br. 21-24. Appellant also presents separate arguments for reversal of the rejection of dependent claim 25. See id. at 24-25. Appeal 2021-000343 Application 14/460,482 7 1. Claims 22-24 and 26-30 For ease of reference, we reproduce claim 22 below. 22. A lithium ion battery comprising a positive electrode comprising lithium cobalt oxide, a negative electrode comprising a silicon based active material, a separator between the positive electrode and the negative electrode, supplemental lithium and an electrolyte comprising lithium ions, wherein the supplemental lithium is present in an amount to compensate for 110% to 170% of the negative electrode first cycle irreversible capacity loss, wherein the silicon based active material generally has a specific capacity from 800mAh/g to 2500mAh/g at a rate of C/3 when cycled from 1.5V to 0.005V against lithium, wherein the lithium ion battery has a balance of negative electrode capacity relative to the sum of positive electrode capacity and supplemental lithium from 1.1 to 1.7 and wherein the lithium ion battery has a 150th cycle discharge capacity at a discharge rate of C/3 discharged from 4.35V to 2.75V that is at least 80% of the 5th cycle discharge capacity at a discharge rate of C/3 discharged from 4.35V to 2.75V, and wherein the negative electrode has an active material loading from 1.5mg/cm2 to 8mg/cm2 wherein the battery exhibits a volumetric energy density at least 550 Wh/l. Appeal Br. 33-34 (paragraphing and indentation added). Appellant argues for reversal the rejection of claim 22 for any of three reasons: (1) the combined references do not describe or suggest the use of a positive electrode comprising lithium cobalt oxide, (2) the Examiner erred by finding that the claimed energy densities and cycling properties are inherent in the combination of prior art, or (3) the cited references’ Appeal 2021-000343 Application 14/460,482 8 combined teachings do not provide a reasonable expectation of success in achieving either the volumetric energy density or the claimed cycling stability. Reply Br. 4. We address these arguments in turn below. First, in rejecting claim 22, the Examiner found that the use of a positive electrode comprising lithium cobalt oxide is described or suggested both by Lopez, see Final Act. 8-9 (citing Lopez ¶¶ 31, 52, 61, 77), and by Kumar, see Answer 6 (citing Kumar ¶ 85). Appellant argues that this finding is not supported by substantial evidence. Appeal Br. 23. We disagree. As Appellant recognizes, Lopez describes both lithium cobalt oxide and manganese-rich complex metal oxide as “reasonable positive electrode active materials.” See id. at 22. Appellant asserts that this is not a teaching of equivalents, without giving a basis for this assertion. Id. at 23-24. Appellant is apparently relying upon Lopez’s failure to use the word “equivalent” in its description. We are not persuaded by Appellant’s argument. In our view, Lopez’s statement that both lithium cobalt oxide and manganese-rich complex metal oxides are reasonable positive electrode materials is a sufficient teaching of equivalents. Therefore, the Examiner did not err by finding that the combination of prior art describes or suggests using lithium cobalt oxide as a positive electrode active material. Second, Appellant argues that the Examiner erred by finding that the claimed energy densities and cycling properties would be inherent in the combined prior art. Appeal Br. 16-17, 23-24. This argument is not persuasive. As the Examiner explained, the combination of Kumar, Lopez, and Takezawa describes or suggests a battery that has all of the physical features Appeal 2021-000343 Application 14/460,482 9 of the battery recited in claim 22. See Final Act. 7-10. The Examiner then applied well-established case law to shift the burden of showing that the prior art battery does not have the remaining claimed properties. Id. at 8. The Federal Circuit and its predecessor have both held that once the Examiner has demonstrated that “the claimed and prior art products are identical or substantially identical, . . . 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 (CCPA 1997); see also In re Schreiber, 120 F.3d 1473, 1478 (Fed. Cir. 1997); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). This rule exists because the PTO does not have the ability to manufacture products or to obtain and compare prior art products. Best, 562 F.2d at 1255. Confronted with an examiner’s reliance on Best, an applicant has two options: (1) showing that the predicate for the shifting of the burden of proof has not been met-i.e., that the prior art product is not substantially identical to the claimed product-or (2) meeting the evidentiary burden imposed by the application of the Best rule. In this case, Appellant has not successfully pursued either option. First, as discussed above, the Examiner did not err by finding that Lopez describes lithium cobalt oxide as a recognized as equivalent to manganese- rich complex metal oxides for use as a positive electrode active material. Second, Appellant has not presented any evidence that the battery described or suggested by the combination of prior art would not have the properties recited in claim 22. Appellant, therefore, has not persuaded us that the Examiner erred by applying the presumption afforded by Best. Appeal 2021-000343 Application 14/460,482 10 Third, Appellant argues that the relied-upon combination of references does not provide a reasonable expectation of success in achieving the claimed volumetric energy densities. Appeal Br. 24. This argument is not persuasive. As discussed above, the Examiner did not err by finding that the combination of Kumar, Lopez, and Takezawa describes or suggests a battery that has the same physical construction as the battery recited in claim 22. Based on this finding, the Examiner may assume that the prior art battery would have had the volumetric energy density recited in claim 22. See Best, 562 F.2d at 1255. The presumption afforded by Best is sufficient to meet the Examiner’s burden of showing that there would have been a reasonable expectation of success at the time of the invention. In view of the foregoing, we affirm the rejection of claims 22-24 and 26-30 as unpatentable over the combination of Kumar, Lopez, and Takezawa. 2. Claim 25 For ease of reference, we reproduce claim 25 below from the Appeal Brief’s Claims Appendix. 25. The lithium ion battery of claim 22 wherein the lithium ion battery has a balance of negative electrode capacity relative to the sum of positive electrode capacity and supplemental lithium from 0.95 to 1.4, wherein the battery has a volume from 500mm3 to 100,000mm3, and wherein the battery exhibits a volumetric energy density at least 525 Wh/l at a rate of C/10 discharged from 4.35V to 2.75V. Appeal Br. 34 (emphasis added). In rejecting claim 25, the Examiner found that Kumar describes batteries with a range of volumes that overlaps the claimed range. Final Act. Appeal 2021-000343 Application 14/460,482 11 8 (citing Kumar ¶ 35). For the reasons discussed above, we have determined that this finding is erroneous. See § III.A.1. In view of the foregoing, we reverse the rejection of claim 25 as unpatentable over the combination of Kumar, Lopez, and Takezawa. C. Rejection of claims 31-34, 36, 38, and 39 over the combination of Kumar, Takezawa, Kawasaki, and Oh Claim 31 is an independent claim, and claims 32-34, 36, 38, and 39 depend from it. Appellant argues for reversal of this rejection based upon the limitations of independent claim 31. See Appeal Br. 25-29. Appellant also present separate arguments for reversal of the rejection of dependent claims 33 and 39. See id. at 29-31. 1. Claims 31, 32, 34, 36, and 38 For ease of reference, we reproduce claim 31 below. 31. A lithium ion battery comprising a positive electrode comprising a lithium metal oxide, a negative electrode, a separator between the positive electrode and the negative electrode, and an electrolyte comprising lithium ions, wherein supplemental lithium is in an amount to compensate for 110% to 170% of the negative electrode first cycle irreversible capacity loss, wherein the negative electrode comprises a physical blend of a silicon based active material, from 1 wt% to 15wt% of a conductive additive, and a distinct graphitic carbon active material with graphitic carbon being 30wt% to 60wt% of the active material of the negative electrode, Appeal 2021-000343 Application 14/460,482 12 wherein the conductive additive comprises carbon nanotubes, carbon nanofibers, nanostructured carbon, graphene, carbon black or combinations thereof. Appeal Br. 35 (paragraphing and indentation added). Appellant argues that the rejection of claim 31 should be reversed for either of two reasons: (1) the Examiner erred by finding that Kawasaki describes or suggests both a carbon silicon-based composite and the distinct electrically conductive carbon material mixed into the electrode or the range of graphitic carbon claimed that is distinct from the composite material, or (2) the Examiner erred by finding that Oh describes or suggests a negative electrode composition with the claimed active material composition and the distinct conductive agent in the specified ranges of amounts. See Appeal Br. 25-29; Reply Br. 5. We address these arguments in turn below. First, Appellant argues that, considered as a whole, Kawasaki does not support this rejection. Appeal Br. 26. In particular, Appellant argues that the Examiner found that Kawasaki describes the use of a negative electrode comprising both a composite electrode comprising a physical blend of a silicon-based active material with a conductive additive and a distinct graphitic carbon active material. Id. at 27. Appellant argues that this finding is erroneous. Id. In rejecting claim 32, the Examiner found that Kawasaki describes a negative electrode comprising a blend a silicon-based active material and a distinct graphitic carbon active material. Final Act. 13. The Examiner, however, did not find that Kawasaki describes or suggests a physical blend of a silicon based active material and a carbon-based conductive additive. Id. at 13-14. The Examiner found that Oh describes the use of a conductive carbon additive in the negative electrode. Id. at 14-15. Appeal 2021-000343 Application 14/460,482 13 Appellant’s argument, therefore, is based on an incorrect interpretation of the rejection and is not persuasive. Second, Appellant argues that “Oh does not teach or suggest a negative electrode composition with the presently claimed active material composition and the distinct conductive agent with the specified ranges of amounts.” Appeal Br. 28. Once again, Appellant’s argument appears to be based on a misunderstanding of the rejection. In rejecting claim 32, the Examiner found that Oh describes the use of a negative electrode with a conductive carbon additive in a range of 1 wt % to 30 wt %, which overlaps the range recited in the claim. Final Act. 14 (citing Oh ¶ 86). The Examiner relied upon the combination of Kumar and Kawasaki as describing a negative electrode with the claimed active material composition. Id. at 13-14. The Examiner further found that Oh describes the use of a conductive carbon additive. The Examiner then explained why a person having ordinary skill in the art would have combined Oh’s conductive carbon additive with the negative electrode active material described by the combination of Kumar and Kawasaki. Id. at 14-15. As demonstrated above, Appellant’s arguments for reversal of the rejection of claim 32 are based on the alleged failure of the references individually to teach a specific claim limitation. The Examiner, however, did not rely upon a single reference to teach this limitation. Thus, Appellant’s arguments are not persuasive of reversible error. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). Appeal 2021-000343 Application 14/460,482 14 In view of the foregoing, we affirm the rejection of claims 32, 34, and 38. 2. Claim 33 Appellant presents additional arguments for reversal of the rejection of claim 33. For ease of reference, we reproduce claim 33 from the Appeal Brief’s Claims Appendix. 33. The lithium ion battery of claim 31 wherein the lithium ion battery has a 150th cycle discharge capacity at a discharge rate of C/3 discharged from 4.35V to 2.75V that is at least 80% of the 5th cycle discharge capacity at a discharge rate of C/3 discharged from 4.35V to 2.75V. Appeal Br. 35-36. Appellant argues that the rejection of claim 33 should be reversed for either of two additional reasons: (1) the Examiner erred by finding that the battery described or suggested by the combination of Kumar, Takezawa, Kawasaki, and Oh would inherently have the properties recited in claim 33 or (2) a person having ordinary skill in the art would not have had a reasonable expectation of success in combining the prior art to create a battery with the properties recited in claim 33. Appeal Br. 29-30. This argument is not persuasive. Appellant’s arguments echo arguments Appellant made in seeking reversal the rejection of claims 22-30. See § III.B.1 above. Appellant’s arguments for reversal the rejection of claim 33 are not persuasive for the same reasons we set forth when we addressed them previously. Id. We, therefore, affirm the rejection of claim 33. Appeal 2021-000343 Application 14/460,482 15 3. Claim 39 Appellant presents an additional argument for reversal of the rejection of claim 39. For ease of reference, we reproduce claim 39 from the Appeal Brief’s Claims Appendix. 39. The lithium ion battery of claim 31 wherein lithium metal oxide comprises lithium cobalt oxide. Appeal Br. 36. In particular, Appellant argues that the rejection of claim 39 should be reversed because the relied-upon prior art does not teach that lithium cobalt oxide is a suitable active material for batteries. Appeal Br. 30. We have already addressed claims limited to the use of lithium cobalt oxide as the positive electrode material. See § III.B.1 above. In that discussion, we determine that Lopez describes lithium cobalt oxide and manganese-rich complex metal oxides as equivalent materials for use as positive electrode material. Here, however, the Examiner does not rely upon Lopez to support the finding that lithium cobalt oxide can be used as a positive electrode material. See Final Act. 16. Rather, the Examiner finds that Kumar describes lithium cobalt oxide with the metal floor a coating as a possible cathode active material. Id. (citing Kumar ¶ 85); Answer 8-9. Appellant argues that this finding is not supported by Kumar’s disclosure. Appeal Br. 30. In particular, Appellant argues that Kumar actually states that lithium cobalt oxide is used in a variety of batteries and can be coated with the metal fluoride. Id. Appellant emphasizes that Kumar does not use lithium cobalt oxide as a positive electrode material in its batteries as exemplified in the rest of Kumar’s disclosure. Id. Appeal 2021-000343 Application 14/460,482 16 We determine that a person having ordinary skill in the art, reading Kumar’s discussion of lithium cobalt oxide, would have understood Kumar to be teaching that lithium cobalt oxide could be used as a positive electrode material in its batteries. We make this determination because Kumar does not set forth any reason not to use lithium cobalt oxide as a positive electrode material. Moreover, Kumar notes that metal fluoride coated lithium cobalt oxide had been demonstrated to be a useful material in a patent application filed by Sun et al. Kumar ¶ 85. A person having ordinary skill in the art, therefore, would infer that it could be a suitable positive electrode material based on Kumar’s discussion of lithium cobalt oxide. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Thus, we affirm the rejection of claim 39. IV. CONCLUSION The Examiner’s decision is affirmed in part. Appeal 2021-000343 Application 14/460,482 17 V. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13-21, 35 103 Kumar, Takezawa 13-21, 35 22-30 103 Kumar, Lopez, Takezawa 22-24, 26-30 25 31-34, 36, 38, 39 103 Kumar, Takezawa, Kawasaki, Oh 31-34, 36, 38, 39 Overall Outcome 22-24, 26-34, 36, 38, 39 13-21, 25, 35 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). AFFIRMED IN PART