Ex Parte Liu et al

Patent Trial and Appeal BoardAug 14, 2017

13561701 (P.T.A.B. Aug. 14, 2017)

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. 13/561,701 07/30/2012 Jun Liu 23-93303-01 3558 32215 7590 08/16/2017 KLARQUIST SPARKMAN, LLP 121 SW SALMON STREET, SUITE 1600 ONE WORLD TRADE CENTER PORTLAND, OR 97204 EXAMINER NEDIALKOVA, LILIA V ART UNIT PAPER NUMBER 1724 NOTIFICATION DATE DELIVERY MODE 08/16/2017 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): erin. vaughn @ klarquist. com docketing @klarquist.com AS CChair @klarquist. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN LIU, YULIANG CAO, LIFEN XIAO, JIE XIAO, GREGORY J. EXARHOS, BIRGIT SCHWENZER, and ZIMIN NIE Appeal 2016-006046 Application 13/561,7011 Technology Center 1700 Before KAREN M. HASTINGS, AVELYN M. ROSS, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—3, 6—15, 19 and 26. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM-IN-PART. 1 Appellants identify the real party in interest as Battelle Memorial Institute, the assignee of the above-captioned application. Appeal Br. 3. Appeal 2016-006046 Application 13/561,701 BACKGROUND The present application generally relates to composite materials that can be used in forming a positive electrode for use in lithium-sulfur energy storage devices. Spec. 1 5. The composite comprises a sulfurized polymer having chains that are cross-linked through sulfur bonds. The polymer provides a matrix in which sulfide and/or polysulfide particles can be confined. Id. Claim 1 is representative of the pending claims and is reproduced below with certain limitations in bold text for emphasis: 1. A lithium-sulfur energy storage device having a positive electrode comprising a composite material, the composite material comprising a sulfurized polymer having cross-linked chains through sulfur bonds and further comprising sulfide particles, polysulfide particles, or both, the sulfide particles, polysulfide particles, or both, are not bonded to the sulfurized polymer but are confined in the composite material by the polymer crosslinked chains. Appeal Br. 17 (Claims App.) (emphasis added). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 3, 6—8, 12, 15, 19, and 26 are rejected under 35 U.S.C. § 102(b) as anticipated by Kawase et al. (US 6,072,026; iss. June 6, 2000) (hereinafter “Kawase”). Final Act. 2-4. 2. Claim 2 is rejected under 35 U.S.C. § 103(a) as obvious over Kawase in view of Sotomura (US 6,245,458 Bl; iss. June 12, 2001). Id. at 5. 2 Appeal 2016-006046 Application 13/561,701 3. Claim 9 is rejected under 35 U.S.C. § 103(a) as obvious over Kawase in view of Choi et al. (US 7,029,796 B2; iss. April 18, 2006) (hereinafter “Choi”). Id. at 5—6. 4. Claims 10, 11, and 14 are rejected under 35 U.S.C. § 103(a) as obvious over Kawase in view of Xu et al. (US 6,302,928 Bl; iss. Oct. 16, 2001) (hereinafter “Xu”). Id. at 6—8. 5. Claim 13 is rejected under 35 U.S.C. § 103(a) as obvious over Kawase in view of Vu et al. (US 2009/0226809 Al; pub. Sept. 10. 2009) (hereinafter “Vu”). Id. at 8—9. DISCUSSION Rejection 1. The Examiner rejected claims 1, 3, 6—8, 12, 15, 19, and 26 as anticipated by Kawase. Id. at 2-4. Appellants present argument in support of the patentability of claim 1. Appeal Br. 5—12. Appellants do not present separate argument for the patentability of claims 3, 6—8, 12, and 15 (which depend from claim 1), id. at 12, accordingly, such claims will stand or fall with claim 1. Appellants argue that claim 19 is patentable for the same reasons applicable to claim 1, and additionally present unique argument regarding the “reversible capacity” limitation of claim 19. Id. at 12—13. Accordingly, claim 19 will be considered separately. Claim 1 requires a “composite material comprising a sulfurized polymer having cross-linked chains through sulfur bonds and further comprising sulfide particles, polysulfide particles, or both, the sulfide particles, polysulfide particles, or both, are not bonded to the sulfurized polymer but are confined in the composite material by the polymer cross- linked chains.” Appeal Br. 17 (Claims App.) 3 Appeal 2016-006046 Application 13/561,701 The Examiner finds that Kawase teaches all the limitations of claim 1. Final Act. 2—3. In support thereof, the Examiner finds that Kawase teaches to form a positive electrode of a composite of aniline polymer and several other materials. Answer 9—10 (citing Kawase 6:34—38). The Examiner further finds that Kawase teaches a polyaniline polymer cross-linked through sulfur bonds for use in a cathode. Id. at 2 (citing Kawase col. 2:32-45 (Formula II)). For ease of reference, the structure of Formula II of Kawase is reproduced below: Kawase, 2:33 44. Formula II depicts an aniline polymer with sulfur cross links. The Examiner additionally finds that, during discharge, some, but not all, of the sulfur cross-link bonds of Kawase are broken so as to form sulfide anions. Id. at 3; see also Answer 12. Thus, the Examiner finds that “there will be instances in time when both sulfur cross-links between polyaniline chains and sulfides will exist at the same time.” Answer 12. The Examiner further determines that the sulfides formed by the breaking of the sulfur cross-links will be “captured” by, but not chemically bonded to, imine groups on the polymer. Id. at 10—11. Accordingly, the Examiner finds that Kawase teaches the claimed composite material. Appellant asserts that the Examiner is in error 1) because Kawase does not teach the claimed composite, and 2) because Kawase does not teach 4 Appeal 2016-006046 Application 13/561,701 sulfide particles that are not bonded to the polymer but rather are confined in the composite by the polymer cross-linked chains. Appeal Br. 5. Composite The Examiner determines that the materials used in fabricating the positive electrode of Kawase (sulfurized polymer, acetylene black, lithium perchlorate, and acetonitrile) satisfy the “composite” limitation of claim 1. Answer 9—10. The Examiner further finds that such composite would include both sulfur cross-links and sulfides because, “during discharging of the battery, not all the cross-links will be broken and certainly not all of them will break at the same exact time. As such, there will be instances in time when both sulfur cross-links between polyaniline chains and sulfides will exist at the same time.” Id. at 12. Appellants argue that Kawase teaches a single polyaniline polymer with sulfur bonded either through bonds to the imino group or the aryl group that is a single compound rather than a composite. Appeal Br. 7. They argue that the Examiner is inconsistent in finding that Kawase teaches a composite of sulfurized polymer with sulfur cross-links and other components (acetylene black, lithium perchlorate, and acetonitrile) while also finding that Kawase teaches sulfide ions which arise from the breaking of the sulfur cross-links upon discharge (thereby disrupting the sulfurized polymer structure). Id. That is, Appellants argue that the polymer of Kawase may have sulfur cross-links or may have sulfide ions, but not both. They additionally argue that the term “composite,” as used in claim 1, is properly construed to include only “the combination of Appellants’ cross- 5 Appeal 2016-006046 Application 13/561,701 linked sulfurized polymer and sulfide particles and/or polysulfide particles.” Reply Br. 2—3. As an initial matter, we construe the term “composite.” In their Appeal Brief, Appellants put forward a definition of “composite” as “a material made from two or more constituent materials with different physical and chemical properties that, when combined in the composite material, produce a material with characteristics different from the individual components.” Appeal Br. 6 (underscoring removed). In their Reply Brief, Appellants acknowledge this definition but advocate for a more limited construction. Reply Br. 2. There, they argue that the Specification and claims “further clarif[y] that the constituent materials are the recited sulfurized polymer and sulfide particles and/or polysulfide particles.” Id. In support, they assert that the Specification and dependent claim 10 depict conductive carbons (such as the acetylene black of Kawase) as separate and distinct from the composite, suggesting a more limited scope. Id. at 3. During examination, claim terms must be given their broadest reasonable construction consistent with the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Here, the Appellants offered a broader, reasonable interpretation in their opening brief. Moreover, the applicants chose to frame the “composite” limitation using the transitional word “comprising.” Appeal Br. 17, (Claims App.) (“the composite material comprising”). The word “comprising” is “generally understood to signify that the claims do not exclude the presence in the accused apparatus or method of factors in addition to those explicitly recited.” In re Affinity Labs of Texas, LLC, 856 F.3d 902, 907 (Fed. Cir. 2017) (quoting citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 6 Appeal 2016-006046 Application 13/561,701 795, 811 (Fed. Cir. 1999)). Accordingly, we adopt the construction substantially as first offered by the Appellants — a material made from two or more constituent materials with different physical and chemical properties where the individual components remain separate and distinct within the finished structure. See Appeal Br. 6—7. Having adopted such definition, we determine that the materials listed in Kawase (6:33—43) fall within the ambit of the term “composite” as used in claim 1. Appellants additionally argue that the material of Kawase may not be both a sulfiirized polymer and have sulfide anions (originating from the polymer upon electric discharge) at the same time. The Examiner, however, finds that during discharge of the battery, “there will be instances in time when both sulfur cross-links between polyaniline chains and sulfides will exist at the same time.” Answer 12. Appellants did not attempt to rebut this finding. Moreover, this is consistent with the Specification, which provides that “a fraction of disulfide bonds connected on the SPANI polymer split into dithiolate form during discharge.” Spec. 1 52 (emphasis added). Accordingly, Appellants have not shown error in the Examiner’s finding that Kawase teaches a “composite material comprising a sulfiirized polymer having cross-linked chains through sulfur bonds and further comprising sulfide particles, polysulfide particles, or both” as required by claim 1. 7 Appeal 2016-006046 Application 13/561,701 Sulfide Particles Not Bonded to the Sulfurized Polymer Appellants additionally argue that Kawase fails to teach sulfide particles “not bonded to the sulfurized polymer.” Appeal Br. 8—12. The Examiner finds that Kawase teaches a sulfurized polyaniline with sulfur cross-links that break upon discharge of electricity. The Examiner further finds that such sulfide anions interact with the imine groups of the polyaniline polymer but that some or all are not bonded thereto. The Examiner determines that the Specification teaches that sulfide/imine interactions do not amount to a chemical bond as follows: Applicant’s own specification is unclear on the nature of the interaction between the sulfides and the amine/imine groups on the polymer, describing them as “attract’’-ive (paragraph [0030]) and “more akin to chemical bonding than mere physical absorption” (paragraph [0054]). The latter statement is understood to mean that something similar to a chemical bond is in place, but is not a chemical bond. Advisory Action 3. Similarly, the Examiner cites to a statement in the Specification that imine groups “are electropositive and grafting the negative polysulfide ions in the vicinity of the polymer framework in a way more akin to chemical bonding than mere physical absorption.” Answer 11 (citing Spec. | 54). The Examiner infers that, “[b]y making this statement, appellant's specification confirms that the sulfides are held by an interaction that is stronger than mere physical absorption, but does not rise to the level of a chemical bond.” Answer 11. The Examiner additionally finds that even if Kawase were found to teach that it is possible for an ionic bond to form between one or more sulfide anions and one or more imine groups on the polymer, it would still teach that some sulfides are unbonded. Advisory Action 3 (filed Sept. 21, 8 Appeal 2016-006046 Application 13/561,701 2015). This finding is predicated on the notion that “without explicit evidence to the contrary, it is impossible to conclude that every single released sulfide anion is ionically bonded to an imine group and that no sulfide anions are merely attracted without forming an ionic bond.” Id. That is, even if some sulfide anions form ionic bonds with the imine groups, others likely do not. Accordingly, the Examiner finds, Kawase teaches sulfide anions that are “not bonded” to the sulfurized polymer. Appellants assert that Kawase’s sulfide anions, produced by the scission of sulfur cross-links, form bonds with imine groups on the polymer chain. Appeal Br. 8. Appellants cite to Kawase’s teaching that “sulfur(II) ions emitted after the breakage of the sulfide linkage of the aniline polymer during discharging operation are captured by the ‘=N+H2’ group ... in the vicinity of the sulfur(II) ion.” Id. (citing Kawase 3:19-26). Appellants state that “[i]t is fundamental chemistry that negatively charged sulfide ions and positively charged iminium ions are either ionically or electrostatically bonded to one another.” Appeal Br. 8. Appellants also argue that there is no evidence in support of the Examiner’s finding that some of the sulfide anions of Kawase would form ionic bonds with imine groups while some would not. Appeal Br. 9—10 (responding to Advisory Action 3). In this regard, Appellants assert that Kawase teaches that there should not be any free sulfide ions. Appeal Br. 10 (citing Kawase 3:18—27, 3:46—50). Much of the foregoing depends upon the construction of the term “not bonded to the sulfurized polymer but. . . confined” as used in claim 1. The Specification includes several references to sulfide and or polysulfide particles confined by chemical bonds. See, e.g., Spec. 1 8 (“In some 9 Appeal 2016-006046 Application 13/561,701 embodiments, the chemical bonds confining the sulfide and/or polysulfide particles occur between the particles and the functional groups.”) (emphasis added). The Specification additionally describes an embodiment where “[a] portion of the sulfur is not bonded to the polymer chains but is confined as sulfur, sulfide, and/or polysulfide particles.” Spec. 1 8 (emphasis added). Further, the Specification teaches, as noted above, that the amine and imine groups on the polymer chain “are electropositive and grafting the negative polysulfide ions in the vicinity of the polymer framework in a way more akin to chemical bonding than mere physical absorption.” Spec. 1 54. Thus, the Specification contemplates the confinement of sulfides both by chemical bonds and otherwise, but gives little direction as to how “not bonded” should be construed. As previously noted, during examination claim terms must be given their broadest reasonable construction consistent with the Specification. See In re ICON Health, 496 F.3d at 1379. Here, it is apparent that the Specification contemplates that there may be some electrochemical interactions arising from the polar nature of the species at issue. Affording the term “not bonded but. . . confined” its broadest reasonable interpretation, we determine that it may encompass interactions having some degree of electrochemical attraction. Here, Appellants have not provided evidence showing that the sulfide anion’s interaction with the polyaniline’s imine group (“capture” as described by Kawase) goes beyond such interactions. Accordingly, we determine that Appellants have not shown reversible error in the Examiner’s finding that Kawase teaches a sulfide anion not bonded to the sulfurized polyaniline but confined among the polymer chains. 10 Appeal 2016-006046 Application 13/561,701 Claim 19 Claim 19 is similar to claim 1 but additionally requires that the device be “configured to have a reversible capacity of at least 600 mAh g-1 when operated.” Appeal Br. 18 (Claims App.). The Examiner finds that “[t]he compound of Kawase is structurally the same as the instantly claimed one. As such, it is expected that it will possess the instantly claimed reversible capacity.” Final Act. 4. Appellants argue that the Examiner relies upon the doctrine of inherency yet has failed to satisfy the requirements thereof. Appeal Br. 12— 13. Specifically, Appellants argue that inherency is applicable where the claim at issue will “necessarily” exhibit the same property as the prior art. Id. at 12. Appellants further assert that the claimed composite and the material of Kawase do not necessarily have the same structure. The law of anticipation “requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” SynQor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). This presence must be found as fact, and when missing elements are stated to be “‘necessarily present, or inherent, in the single anticipating reference, ’ ‘the mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency.’” In re Morsa, 803 F.3d 1374, 1380 (Fed. Cir. 2015) (citations omitted). The Examiner finds that “SPAN! (Figure 2B) is the material structurally closest to Kawase’s material.” Answer 12. The Specification describes tests of the capacity of SPANI (sulfurized polyaniline) as well as SPANI/S (described in the Specification as sulfurized polyaniline/ sulfur composite). Spec. Tflf 47^48. The Specification provides that “[a] stable 11 Appeal 2016-006046 Application 13/561,701 capacity of 230 mAh g'1 was obtained from the SPANI backbone.” Id. 147; see also Figs. 8A and 8B. The Specification further provides that “The first discharge capacities are about 1077, 1121, 845 mAh g'1 for SPANI/S-28, SPANI/S-35 and SPANI/S-55, respectively. Id. 148; see also Figs. 9A and 9B. That is, all SPANI/S composites have greater capacities than SPANI and the capacity of a given SPANI/S capacity will vary with sulfur content. As the Examiner has found SPANI to be structurally close to Kawase, it follows that this portion of the Specification suggests that Kawase may have a capacity less than 600 mAh g'1. In any event, it is clear that a composite falling within the ambit of claim 1 may or may not have a capacity above 600 mAh g'1 as required by claim 19. In view of the foregoing, the Examiner has failed to show that the composite of Kawase anticipates claim 19. Rejections 2 — 5. The Examiner rejected claims 2, 9-11, 13, and 14 as obvious over Kawase and various secondary references. Final Act. 5—9. Appellants do not offer unique argument in support of the patentability of these claims. Appeal Br. 13—16. Rather, they rely upon the arguments set forth with regard to claim 1. Id. Accordingly, we affirm these rejections for the reasons set forth with regard to the rejection of claim 1. 12 Appeal 2016-006046 Application 13/561,701 CONCLUSION The rejections of claims 1—3, 6—15, and 26 are affirmed. The rejection of claim 19 is reversed. 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 13