Ex Parte LI et al

Patent Trial and Appeal Board

Apr 29, 2016

13012832 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/012,832 01125/2011
7609 7590 04/29/2016
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
FIRST NAMED INVENTOR
Wentao Li
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NOV-19836 7602
EXAMINER
NEDIALKOV A, LILIA V
ART UNIT PAPER NUMBER
1724
MAILDATE DELIVERY MODE
04/29/2016 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 WENTAO LI and MARTIN W. PAYNE
Appeal2014-008408
Application 13/012,832
Technology Center 1700
Before MICHAEL P. COLAIANNI, MICHELLE N. ANKENBRAND, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal the Examiner's final rejection of claims 1-10.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Appellants identify BASF Corporation as the Real Party in Interest.
App. Br. 3.
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Application 13/012,832
The Claimed Invention
Appellants' disclosure relates to a secondary battery comprising: (a)
an anode, (b) a cathode, and, ( c) an electrolytic solution, comprising (i) a
lithium salt, (ii) ethylene carbonate, (iii) ethyl methyl carbonate, (iv) a third
carbonate different from the others, (v) propane sultone, and (vi) a
phosphazene compound. Spec. i-f 8; App. Br. 5. Claim 1 is representative of
the claims on appeal and is reproduced below from the Claims Appendix to
the Appeal Brief (App. Br. 10):
1. A secondary battery comprising:
a. an anode,
b. a cathode, and,
c. an electrolytic solution, comprising
i. a lithium salt
ii. ethylene carbonate,
iii. ethyl methyl carbonate,
iv. a third carbonate,
v. propane sultone, and
vi. a phosphazene compound.
The References
The Examiner relies on the following references in rejecting the
claims on appeal:
Amine et al., US 2006/0134527 Al June 22, 2006
(hereinafter "Amine")
Suzuki et al., US 2008/0314482 Al Dec. 25, 2008
(hereinafter "Suzuki")
Nakura US 2009/0081547 Al Mar. 26, 2009
CRC Handbook of Chemistry and Physics (W. M. Haynes et al. eds.,
93rd ed. Internet Version 2013) (hereinafter "CRC Handbook").
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Application 13/012,832
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4, 5, and 8-10 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Nakura.
2. Claims 1-5 and 8-10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Amine in view of Suzuki.
3. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Amine in view of Suzuki as applied to claim 1, and as
evidenced by the CRC Handbook.
OPINION2
Rejection 1
Appellants argue claims 1, 4, 5, and 8-10 as a group. We, therefore,
select claim 1 as representative of this group, and the remaining claims stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
The Examiner finds that N akura discloses the claimed invention,
including all the limitations of claim 1. Ans. 2. The Examiner finds that
Nakura teaches a secondary battery comprising a negative electrode (i.e.,
anode), a positive electrode (i.e., cathode), and an electrolytic solution.
Id. (citing Nakura i-fi-f 12-15). The Examiner further finds that Nakura
teaches that the electrolytic solution comprises: (a) a lithium salt, (b)
ethylene carbonate, ( c) ethyl methyl carbonate, ( d) a third carbonate selected
2 We affirm the Examiner's rejections for the reasons set forth in the
Answer, which we adopt as our own. Nevertheless, we highlight and
address specific findings and arguments for emphasis as follows.
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Application 13/012,832
from a variety of carbonates (e.g., vinylene carbonate), ( e) propane sultone,
and (t) a phosphazene compound, as claimed. Id. (citing Nakura i-fi-177-80).
The Examiner finds that N akura further teaches that the compounds that
makeup the electrolytic solution are preferably used in combinations of two
of more. Id. (citing N akura i1 7 8).
Appellants argue that N akura does not anticipate the claimed
invention because "Nakura discloses a laundry list of electrolyte
components" and because the reference discloses "only three of the six
components" specifically combined as recited in claim 1. App. Br. 7.
We are not persuaded by Appellants' arguments. To serve as an
anticipatory reference, "the reference must disclose each and every element
of the claimed invention, whether it does so explicitly or inherently." In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Based on the record before
us, the Examiner's finding that Nakura explicitly discloses all the limitations
of Appellants' claimed invention is well-supported by the evidence. Nakura
i-fi-f 12-15, 78-80. In particular, as the Examiner finds (Ans. 2, 7), and
contrary to Appellants' argument, Nakura "positively recites each one of the
instantly claimed electrolyte solution components," as recited in the claim.
Nakura i-fi-178-80. We discern no reversible error in the Examiner's
conclusion and factual findings in this regard.
Moreover, Appellants' argument that Nakura discloses a "laundry
list" is unpersuasive because the fact that a reference discloses all the
limitations of a claimed invention in a list, without more, is insufficient to
establish that the reference is non-anticipatory. Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (rejecting "the notion that [a
compound] cannot anticipate because it appears without special emphasis in
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Application 13/012,832
a longer list"); see also Gleave, 560 F.3d at 1338 (affirming rejection under
§ 102(b) where reference "expressly lists every possible [compound]" of
applicants' claimed invention). Appellants' argument that Nakura discloses
"only three of the six components ... are specifically combined" is equally
unpersuasive because Appellants do not identify sufficient evidence or
provide an adequate technical explanation to support it. In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). To the contrary, Nakura's disclosure is
broader and includes each of the components of the electrolytic solution
required by claim 1 (Nakura i-fi-177-80). Nakura's disclosure is not limited to
the example argued by Appellants.
Accordingly, we affirm the Examiner's rejection of claims 1, 4, 5, and
8-10 under 35 U.S.C. § 103(a) as being anticipated by Nakura.
Rejection 2
Because Appellants argue claims 1-5 and 8-10 as a group, we select
claim 1 as representative of this group. Claims 2-5 and 8-10 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2014). For this rejection, the
Examiner finds that the combination of Amine and Suzuki teaches all the
limitations of claim 1. Ans. 4.
The Examiner finds that Amine teaches nearly all of claim 1 's
limitations, except that it does not teach that the electrolytic solution
comprises "propane sultone," as recited in the claim. Ans. 4 (citing Amine
i-fi-148, 49, 54, 57). The Examiner, however, relies on Suzuki for teaching
that limitation. Id. In particular, the Examiner finds that Suzuki teaches a
secondary battery and an electrolyte solution, which comprises a lithium
salt, ethyl carbonate, and ethyl methyl carbonate, and that adding propane
sultone to the electrolyte solution is advantageous because the propane
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Application 13/012,832
sultone assists in forming a stable film on the negative electrode which
prevents the electrolyte from reacting with the negative electrode during
high-temperature storage. Id. (citing Suzuki i-fi-f 128, 132, 135-139).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to add propane sultone to
Amine' s electrolyte solution "for the purpose of enhancing battery stability
during high-temperature storage." Id.
Appellants argue that one of ordinary skill in the art would not have
been led to combine the teachings of Amine and Suzuki as found by the
Examiner because "the teachings of the two references are incompatible and
cannot be combined even though they both relate to Li ion batteries." App.
Br. 8, 9.
We are not persuaded by this argument because Appellants do not
provide an adequate explanation or direct us to sufficient evidence in the
record to support it, and attorney argument cannot take the place of
evidence. De Blauwe, 736 F.2d at 705. Appellants' conclusory assertions
that the references are "incompatible," "cannot be combined," and solve
"two very different problems" (App. Br. 8-9), without more, are insufficient
to establish reversible error in the Examiner's rationale for why one of
ordinary skill would have combined Amine' s and Suzuki's teachings to
arrive at Appellants' claimed invention-which, in contrast, is well-
supported by the evidence and based on sound technical reasoning. Amine
i-fi-148, 49, 54, 57; Suzuki i-fi-f 128, 132, 135-139.
Moreover, even ifthe references did solve "two very different
problems," as Appellants argue, that fact alone does not make the references
incompatible/non-combinable or otherwise establish reversible error in the
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Application 13/012,832
Examiner's findings and reasoning for combining them. KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Appellants argue that the Examiner's rejection should be reversed
because the Specification provides evidence of unexpected results. App. Br.
9 (citing Spec. i-fi-149-52, Tables 3, 4, Examples 1---6, and Comparative
Examples 1--4).
We do not find Appellants' argument persuasive. In attempting to
overcome a prima facie case of obviousness by showing unexpected results,
the burden rests with Appellants to establish: (1) that there actually is a
difference between the results obtained through the claimed invention and
those of the prior art and (2) that the difference actually obtained would not
have been expected by one skilled in the art at the time of the invention. See
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re
Klosak, 455 F .2d 1077, 1080 (CCP A 1972) ("the burden of showing
unexpected results rests on he who asserts them").
Appellants have failed to meet their burden. Appellants do not
identify sufficient evidence to show that there actually is a difference
between the results obtained through the claimed invention and those of the
prior art. The examples Appellants rely upon for showing unexpected
results are neither representative of the teachings of the prior art, nor
commensurate with the scope of the claims. In the examples disclosed at
Table 2 of the Specification, Appellants varied the concentration ranges of
certain claimed components of the electrolytic solution from "O to 2 wt%."
Spec. 37, 38, Table 2. The claims, however, do not limit the claimed
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concentration ranges to 0 to 2 wt.% and actually recite much broader ranges
for those components. See claims 1 and 6 (App. Br. 10).
Appellants also do not identify sufficient evidence that the difference
actually obtained would not have been expected by one skilled in the art at
the time of the invention. We do not find Appellants' proffered
experimental evidence persuasive. Moreover, as the Examiner points out
(Ans. 9), because the prior art teaches all of claim 1 's structural limitations,
one of ordinary skill in the art at the time of the invention would have
expected that the prior art batteries would demonstrate the same
improvement in properties as disclosed by the claimed invention (i.e.,
reduced swelling after storage at high temperatures). In re Best, 562 F.2d
1252, 1255 (CCPA 1977) (where the claimed and prior art products are
identical or substantially identical in structure, a prima facie case of
obviousness has been established). Appellants have not directed us to
sufficient evidence in the record to rebut the Examiner's analysis and
findings in this regard.
Accordingly, we affirm the Examiner's rejection of claims 1-5 and 8-
10 under 35 U.S.C. § 103(a) as being unpatentable over Amine in view of
Suzuki.
Rejection 3
Appellants argue claims 6 and 7 as a group. Accordingly, we select
claim 6 as representative of this group, and claim 7 stands or falls with claim
6. 37 C.F.R. § 41.37(c)(l)(iv) (2014). The Examiner finds that the
combination of Amine and Suzuki as applied to claim 1 and as evidenced by
the CRC Handbook teaches all the limitations of claim 6. Ans. 6, 7.
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Application 13/012,832
Appellants do not present any specific or additional arguments for the
patentability of claim 6. Instead, Appellants rely on the same arguments
presented above for claim 1 in response to Rejection 2. App. Br. 7-9.
Based on the findings and technical reasoning provided by the Examiner,
and for the reasons discussed above for claim 1, we find that Appellants fail
to establish reversible error in the Examiner's factual findings and legal
conclusions with respect to claim 6.
Accordingly, we affirm the Examiner's rejection of claims 6 and 7
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Amine in
view of Suzuki as applied to claim 1, and as evidenced by the CRC
Handbook.
DECISION/ORDER
The Examiner's rejection of claims 1, 4, 5, and 8-10 under
35 U.S.C. § 102(b) as being anticipated by Nakura is affirmed.
The Examiner's rejection of claims 1-5 and 8-10 under
35 U.S.C. § 103(a) as being unpatentable over Amine in view of Suzuki is
affirmed.
The Examiner's rejection of claims 6 and 7 under 35 U.S.C. § 103(a)
as being unpatentable over Amine in view of Suzuki as applied to claim 1,
and as evidenced by the CRC Handbook is affirmed.
It is ordered that the Examiner's decision is affirmed.
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
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