Ex Parte Jambunathan et al

Patent Trial and Appeal Board

May 6, 2016

12031256 (P.T.A.B. May. 6, 2016)

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.
12/031,256 02/14/2008 Krishnakumar Jambunathan 06690ZP3 USA 2226
23543 7590 05/09/2016
AIR PRODUCTS AND CHEMICALS, INC.
PATENT DEPARTMENT
7201 HAMILTON BOULEVARD
ALLENTOWN, PA 18195-1501
EXAMINER
ARCIERO, ADAM A
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
05/09/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KRISHNAKUMAR JAMBUNATHAN, GENNADY DANTSIN,
WILLIAM JACK CASTEEL JR., SERGEI VLADIMIROVICH IVANOV,
and ZHONG SHI1
____________

Appeal 2014-009715
Application 12/031,256
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 5, 6, 9–11, 13, 16, 17, and 19–24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, the real parties in interest are the named
inventors and the assignee, Air Products and Chemicals, Inc. App. Br. 1.
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BACKGROUND
The subject matter on appeal relates to electrolytes and battery cells
having improved leakage current characteristics, increased charge capacity
retention, and other desirable properties. Spec. ¶ 14; Claim 1. Claim 1 is
reproduced below from page 13 (Claims Appendix) of the Appeal Brief:
1. An electrolyte comprising: ethylene carbonate, Li2B12FxZ12-x
wherein Z represents H and x is greater than or equal to 10 and
less than or equal to 12, and at least two additives wherein one
of said additives comprises lithium bis-oxalatoborate (LiBOB)
and the second additive comprises at least one member selected
from the group consisting of lithium hexafluorophosphate
(LiPF6) lithium perchlorate (LiClO4), lithium hexafluoroarsenate
(LiAsF6), lithium trifluoromethanesulfonate (LiCF3SO3), lithium
trifluoromethanesulfonimide (Li(CF3SO2)2N, lithium
tetrafluoroborate (LiBF4), lithium tetrachloroaluminate (LiClO4)
[sic], lithium hexafluoroantimonate (LiSbF6), and CO2.

REJECTIONS ON APPEAL
1. Claims 1, 5, 6, 9–11, 13, 16, 17, and 19–24 are rejected under
35 U.S.C. § 103(a) as unpatentable over Schlaikjer (US 4,139,680, issued
Feb. 13, 1979) in view of Iwamoto et al. (US 2002/0039677 A1, published
Apr. 4, 2002) and Amine et al. (US 2005/0019670 A1, published Jan. 27,
2005).
2. Claims 1, 5-6, 9–11,2 13, 16, 17, and 19–24 are provisionally
rejected on the ground of nonstatutory obviousness-type double patenting as

2 In the Answer, the Examiner lists claims 9–10 rather than claims 9–11.
Ans. 6, ¶ 5. However, the Examiner also indicates that claim 11 has
previously been rejected on the same ground, and that the previous rejection
“is maintained.” Id. ¶ 4. We see no reason that claim 11 would not be
subject to the provisional obviousness-type double patenting rejection set
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unpatentable over claims 2, 8, 10, 29, 31, 34-35, and 37-39 of copending
Application No. 11/300,287.

ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections. Accordingly, we sustain the rejections for reasons set forth by
the Examiner in the Answer. See generally Ans. 2–11. We add the
following for emphasis and completeness.

I. Rejection 1
The Appellants present arguments concerning limitations that appear
in claims 1 and 5. We limit our discussion to those claims, and the claims
for which separate arguments are not presented will stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
A. Claim 1
The Examiner finds that Schlaikjer concerns non-aqueous lithium
secondary batteries, and that it teaches an electrolyte comprising
Li2B12FxZ12-x, but that Schlaikjer’s electrolyte does not include (1) ethylene
carbonate, (2) LiBOB, or (3) the claimed “second additive.” Ans. 2, 10.
Concerning the ethylene carbonate, the Examiner finds that Iwamoto
likewise concerns non-aqueous lithium secondary batteries, and that it
teaches the use of solvents including tetrahydrofuran (“THF”) or ethylene

forth by the Examiner. Accordingly, we consider claim 11 to be subject to
Rejection 2.
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carbonate. Id. at 2–3. The Examiner explains that, because Iwamoto
teaches that THF and ethylene carbonate are “recognized equivalents,” and
Schlaikjer teaches the use of THF as a solvent, it would have been obvious
simply to substitute the ethylene carbonate of Iwamoto for the THF of
Schlaikjer. Id. The Examiner further explains that a person of ordinary skill
in the art would have been motivated to substitute ethylene carbonate for
THF because Iwamoto teaches that ethylene carbonate “has high
permittivity.” Id. at 3.
Concerning the LiBOB, the Examiner finds that Amine teaches a
lithium battery comprising an electrolyte that includes LiBOB, and that
Amine further teaches that “LiBOB is a suitable stabilization additive which
enhances calendar and cycle life of lithium base cells.” Id. The Examiner
concludes that it would have been obvious to add LiBOB to the electrolyte
of Schlaikjer as modified by Iwamoto for enhanced stability, calendar, and
cycle life. Id.
Concerning the claimed “second additive,” the Examiner finds that
Iwamoto teaches that many of the additives recited by claim 1 are typical
additives to lithium electrolyte solutions. Id. The Examiner concludes that
it would have been obvious to use a known salt additive for an established
purpose in a similar lithium battery. Id.
The Appellants present several arguments opposing the Examiner’s
rejection, which we address in turn below:
1. The Appellants argue that “the Examiner erred in finding that
Schlaikjer discloses the claimed salt of Li2B12FxZ12-x wherein Z represents H
and x is greater than or equal to 10 and less than or equal to 12,” and that the
disclosure of Schlaikjer is “incredibly broad.” App. Br. 5; see also Reply
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Br. 2. We are not persuaded by those arguments. As the Examiner explains,
Schlaikjer teaches a clovoborate salt of the formula (BmXn)-k that
encompasses species that meet the claim limitation when combined with
lithium to form a lithium clovoborate salt. Ans. 8; Schlaikjer at 2:10–62. As
example lithium clovoborate salts, Schlaikjer expressly teaches Li2B12Cl12,
Li2B12Br12, and Li2B12I12. Schlaikjer at 2:51–62. While Schlaikjer does not
expressly list Li2B12F12, which unquestionably would fall within the scope of
claim 1, Schlaikjer reasonably suggests to a person of ordinary skill that F is
interchangeable with Cl, Br, and I. Id. at 2:19–20 (“X in the above formula
is preferably selected from the halogens (F, Cl, Br and I)”). The Appellants
present no persuasive argument that lithium clovoborate salts falling within
the scope of claim 1, including Li2B12F12, do not likewise fall within the
scope of the formula taught by Schlaikjer. On this record, the Appellants’
arguments do not persuade us that Schlaikjer does not teach or otherwise
render obvious the use of “Li2B12FxZ12-x wherein Z represents H and x is
greater than or equal to 10 and less than or equal to 12,” as recited by
claim 1.
2. The Appellants present various arguments that the prior art
references “teach away” from the other references due to differences in the
batteries taught by the references. E.g., App. Br. 6–9. For example, they
argue that Iwamoto teaches a carbon anode while Schlaikjer teaches metallic
anodes, id. at 6, that Schlaikjer uses soluble cathode material while Iwamoto
teaches insoluble cathode materials, id. at 7, and that Amine teaches a
“different battery system,” id. at 9.
As an initial matter, we note that the disclosures of Iwamoto and
Schlaikjer are not as limited as the Appellants suggest. Contrary to the
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Appellants’ arguments, Iwamoto teaches both “metallic lithium” anodes and
carbon anodes, e.g., Iwamoto ¶ 75, and Schlaikjer teaches both soluble and
insoluble cathode materials, Schlaikjer at 3:11–15. A preponderance of the
evidence supports the Examiner’s finding that “Iwamoto and Schlaikjer
teach of using similar electrode and electrolyte materials.” E.g., Ans. 10.
In any event, the Appeal Brief generally consists of attorney argument
that is not supported by evidence or persuasive technical reasoning. See,
e.g., App. Br. 6–9; see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney’s arguments in a brief cannot take the place of evidence.”).
The Appellants do not persuasively explain why any of the identified
differences among the prior art references would have dissuaded a person of
ordinary skill in the art from modifying Schlaikjer as proposed by the
Examiner. All three of the prior art references relate to improving lithium
secondary batteries and battery electrolytes. E.g., Schlaikjer at Title, 1:8–14;
Iwamoto ¶ 1; Amine at Title, ¶ 14. Moreover, all three references seek to
solve similar problems. E.g., Schlaikjer at 1:27–32 (loss of capacity), 2:67–
3:3 (cycling efficiency); Iwamoto ¶ 169 (noting batteries of the invention are
“high in energy density, less in deterioration of discharge capacity caused by
repeated use of the batteries, and excellent in high rate charge and discharge
characteristics”); Amine at Abstract (“the new electrolytes provide batteries
with improved calendar and cycle life”).
The Examiner’s obviousness rationale relies on the well-established
principle that, for an improvement to be patentable, it must be more than the
predictable use of prior art elements according to their established functions.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); Ans. 2–3. None of
the Appellants’ arguments provides a persuasive reason to doubt that a
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person of ordinary skill in the art reasonably would have expected the
modifications proposed by the Examiner to result in the improvements
taught by the prior art. The Appellants’ arguments appear to suggest that the
cited prior art must provide certainty that the proposed modifications will be
successful, and, because the battery systems of the prior art are not identical,
there is no certainty. See App. Br. 6–9. However, “[o]bviousness does not
require absolute predictability of success. . . . all that is required is a
reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 903-904
(Fed. Cir. 1988). As set forth by the Examiner, the cited prior art in this case
provides that, and the Appellants’ explanation of the differences between the
battery systems of the prior art does not provide a persuasive basis to reject
the Examiner’s findings.
3. The Appellants argue that “[t]here is no suggestion or reasoning in
the reference or provided by the Examiner why [THF and ethylene
carbonate] are interchangeable.” App. Br. 8. We disagree. While
Schlaikjer does not expressly teach ethylene carbonate as a solvent, it does
teach THF and propylene carbonate as appropriate solvents. Schlaikjer at
3:16–18. Propylene carbonate has a structure similar to that of ethylene
carbonate, differing by one methyl group.
Iwamoto teaches THF, propylene carbonate, and ethylene carbonate
as appropriate solvents. Iwamoto ¶ 50. Given that Schlaikjer and Iwamoto
are from the same field of endeavor, seek to solve similar problems, and
disclose overlapping solvents of similar structure, we agree with the
Examiner that a person of ordinary skill in the art reasonably would have
expected THF and ethylene carbonate to be interchangeable solvents for
lithium battery applications such as those of Iwamoto and Schlaikjer.
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The Appellants’ arguments provide no persuasive basis to doubt the
Examiner’s findings on that point. E.g., App. Br. 8. While the Appellants
make general assertions, for example, that “solvents would act differently in
different systems” and that “solvents would have distinct interactions with
the electrodes,” id., they do not explain why a person of ordinary skill in the
art would not have expected ethylene carbonate to successfully function as a
solvent in the battery system of Schlaikjer.
4. The Appellants repeatedly state that the proposed combination
“would render the battery of Schlaikjer unsatisfactory for its intended
purpose and, at a minimum, alter the principle operation of Schlaikjer’s
battery system.” E.g., App. Br. 7, 8, 9; Reply Br. 4. Similar to the
arguments above, however, the Appellants provide no persuasive
explanation or evidence as to why the modifications proposed by the
Examiner would render the battery of Schlaikjer unsatisfactory for its
intended purpose and/or alter its principle of operation in a way that supports
their arguments.
The Appellants’ arguments appear to focus on whether Iwamoto could
be bodily incorporated into Schlaikjer. E.g., App. Br. 6–7 (“The use of the
carbon electrodes and the addition of the other additives [of Iwamoto], such
as the surface active agents, would reasonably be expected to detrimentally
affect or destroy the operation of the battery of Schlaikjer.”). However, the
Examiner has not proposed the use of Iwamoto’s carbon electrodes or
surface active agents, and “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). “Rather, the test is what the combined teachings of the references
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would have suggested to those of ordinary skill in the art.” Id.; see also In
re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.”). In any event, claim 1 does not exclude the
use of surface active agents or carbon electrodes, and the Appellants do not
persuasively argue that Schlaikjer’s electrodes would not benefit from
inhibition of the evolution of gases by the inclusion of an additive such as
vinylene carbonate as taught by Iwamoto. See Iwamoto ¶¶ 42–43.
The arguments presented by the Appellants do not persuasively
address the obviousness rationale set forth by the Examiner, and they do not
persuade us that the proposed combination is anything more than the
predictable use of known prior art elements according to their established
functions. See KSR, 550 U.S. at 417.
5. The Appellants argue that unexpected results support a conclusion
of nonobviousness. App. Br. 9–10. “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). The Appellants do not identify the closest prior
art or otherwise explain how their results relate to the closest prior art. See
App. Br. 9–10. Nor do the Appellants show that their results are, in fact,
unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[I]t is
not enough to show that results are obtained which differ from those
obtained in the prior art: that difference must be shown to be an unexpected
difference.”).
Moreover, where the Appellants are relying on unexpected results to
rebut a prima facie case of obviousness, the Appellants must show results
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that are commensurate in scope with the claims. See In re Peterson, 315
F.3d 1325, 1329–31 (Fed. Cir. 2003). The Appellants have not presented
any argument or evidence that would meet that burden. The data on which
the Appellants rely was obtained from, at most, a few electrolytes that fall
within the scope of claim 1. But claim 1 is broad and encompasses many
electrolytes, and the Appellants make no effort to explain how the relied-
upon data is commensurate to the full scope of claim 1. See In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a
small number of) species gives unexpected results is inadequate proof, for it
is the view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.” (internal quotation marks omitted)).
Accordingly, we are not persuaded that unexpected results overcome
the prima facie case of obviousness set forth by the Examiner.
* * *
For those reasons, we affirm the Examiner’s rejection of claim 1.
B. Claim 5
Claim 5 depends from claim 1 and is reproduced below from page 13
(Claims Appendix) of the Appeal Brief:
5. The electrolyte of claim 1 further comprising at least one member
selected from the group consisting of carbonates, chloroethylene
carbonate, vinylene carbonate, vinylethylenecarbonate, sulfites,
ethylene sulfite, propane sultone, propylene sulfite,
butyrolactones, phenylethylene carbonate, phenylvinylene
carbonate, catechol carbonate, vinyl acetate, vinylethylene
carbonate, dimethyl sulfite, fluoroethylene carbonate,
trifluoropropylene carbonate, bromo gamma-butyrolactone, and
fluoro gamma-butyrolactone.
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The Examiner concludes that “it would have been obvious . . . to modify the
electrolyte of Schlaikjer with an additive such as vinylene carbonate,
because Iwamoto . . . teaches that . . . adding such a component to the
electrolyte . . . diminish[es] gases evolved at the surface of the negative
electrode.” Ans. 3–4 (citing Iwamoto ¶¶ 40, 42). As noted above, the
Appellants do not persuasively argue that the electrodes of Schlaikjer would
not benefit from inhibition of the evolution of gases.
While the Appellants never clearly identify claim 5 as being argued,
they appear to present arguments concerning claim 5 in their discussion of
vinylene carbonate and the carbon anodes of Iwamoto. App. Br. 6–7.
Similar to arguments discussed above, the Appellants appear to assert that a
person of ordinary skill in the art would not have used vinylene carbonate in
the electrolyte of Schlaikjer because Schlaikjer’s battery system is different
from Iwamoto’s. Id. As set forth above, however, a preponderance of the
evidence supports the Examiner’s finding that “Iwamoto and Schlaikjer
teach of using similar electrode and electrolyte materials.” Ans. 10. And, as
above, the Appellants fail to persuasively explain why the identified
differences between the battery systems would have dissuaded a person of
ordinary skill in the art from making the proposed modification.
Moreover, the Appellants appear to focus on the reduction of gases at
the cathode. See App. Br. 7; Reply Br. 4. Iwamoto, however, teaches the
use of additives to inhibit the evolution of gases at both the positive and
negative electrodes. Iwamoto ¶¶ 42, 43. Additionally, claim 5 recites
propane sultone, and, as the Examiner explains, Ans. 4, Iwamoto teaches the
use of propane sultone as an “especially preferred” additive “to inhibit
evolution of gases at the surface of the positive electrodes,” ¶ 43. The
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Appellants do not address the Examiner’s findings concerning propane
sultone and therefore provide no basis to reject them. Therefore, even if we
were to agree with the Appellants’ arguments concerning vinylene carbonate
(which we do not), those arguments would not establish reversible error in
the Examiner’s rejection of claim 5. We affirm the rejection.

II. Rejection 2
The Appellants recognize that the pending claims have been rejected
due to provisional obviousness-type double patenting, but the Appellants do
not include any arguments concerning that rejection. See App. Br. 2, 11.
We summarily affirm the provisional obviousness-type double patenting
rejection because no terminal disclaimer has been filed and the Appellants
present no argument asserting error by the Examiner.

CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1, 5, 6, 9–11, 13, 16,
17, and 19–24.
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