Ex Parte Lopez et al

Patent Trial and Appeal Board

Jan 26, 2017

12616226 (P.T.A.B. Jan. 26, 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.
12/616,226 11/11/2009 Herman A. Lopez 5024.10US01 2122
62274 7590 01/27/2017
DARDI & HERBERT, PLLC
Moore Lake Plaza, Suite 205
1250 East Moore Lake Drive
Fridley, MN 55432
EXAMINER
CONLEY, OI K
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
01/27/2017 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 HERMAN A. LOPEZ, SUBRAMANIAN VENKATACHALAM,
DEEPAK KUMAAR KANDASAMY KARTHIKEYAN,
SHABAB AMIRUDDIN, and SUJEET KUMAR
Appeal 2015-003794
Application 12/616,226
Technology Center 1700
Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
March 21, 2014 decision finally rejecting claims 1—9 and 26—34 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Envia Systems, Inc.
(Appeal Br. 3).
Appeal 2015-003794
Application 12/616,226
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to lithium ion battery positive
electrode materials which include an active composition coated with an
inorganic coating composition (Abstract). It is said that the claimed
materials exhibit an increased specific capacity, as well as improved cycling
(id.). Details of the claimed invention may be seen in independent claim 1,
which is reproduced below from the Claims Appendix of the Appeal Brief
(emphasis added):
1. A lithium ion battery positive electrode material
comprising an active composition coated with an inorganic
coating composition,
wherein the coating composition comprises a
metal/metalloid fluoride and has an average thickness from about
0.5 nanometers (nm) to about 12 nm,
wherein the active composition can be approximately
represented by a formula Lii+xNiaMnpCoTA502, where x ranges
from about 0.05 to about 0.25, a ranges from about 0.1 to about
0.4, p ranges from about 0.4 to about 0.65, y ranges from about 0
to about 0.3, and 8 ranges from about 0 to about 0.1, and where A
is Mg, Zn, Al, Ga, B, Zr, Ti, Ca, Ce, Y, Nb, Cr, Fe, V, Li or
combinations, and
wherein the material exhibits an average voltage that is
no more than about 2 percent less than the average voltage of the
same active composition without the coating, when cycled from
2V to 4.6V against lithium at a rate of C/10.
2
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Application 12/616,226
REJECTIONS
I. Claims 1,3,4, 7—9, and 26—32 are rejected under 35 U.S.C. § 102(b)
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Kensuke.2
II. Claims 1—8, 26, and 28—34 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sun3 in view of Zheng.4
DISCUSSION
Appellants argue the claims in 4 groups: (1) claims 1—9, 29, 30, 32,
and 33, (2) claims 26—28, (3) claim 31, and (4) claim 34. We address each
group in turn (Appeal Br. 5).
Claims 1, 3, 4, 7—9, 29, 30, 32, and 33 over Kensuke. The Examiner
finds that Kensuke discloses a battery comprising a nonaqueous electrolyte
comprising lithium ions and positive electrode material which contains an
active composition coated with an inorganic coating composition, where the
coating composition comprises a metalloid fluoride with an average
thickness of 2—5 nm, and the active composition is represented by the
formula LiaNibMncCod02, where 0 < a < 2, 0.25 < b < 0.99, 0.01 < c < 0.65,
and 0.1 < d < 0.65 (Final Act. 4, citing Kensuke 130). The ranges for the
2 Kensuke et al., JP 2008-251480, published October 16, 2008. Both
Appellants and the Examiner make reference to a machine translation of
record and we, therefore, do the same.
3 Sun et al., AIF3-Coating to Improve High Voltage Cycling Performance of
Li[Nii/3Coi/3Mni/3] O2 Cathode Materials for Lithium Secondary Batteries,
154 Journal of The Electrochemical Society 168—172 (2007).
4 Zheng et al., The Effects of AIF3 Coating on the Performance of
LitLio.2Mno.54Nio.13Coo.13] O2 Positive Electrode Material for Lithium-Ion
Battery, 155 Journal of The Electrochemical Society 775—782 (2008).
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Application 12/616,226
amounts of the components in the active composition overlap with the
amounts recited in the claim, as shown in the table below:
Component Claim 1 Kensuke
Li 1.05-1.25 0-2
Ni © o 4̂ 0.25-0.99
Mn 0.4 - 0.65 0.01-0.65
Co 0-0.3 0.01-0.65
A 0 1 © None
0 2 2
The Examiner further finds that Kensuke is silent with regards to
whether the material exhibits an average voltage that is no more than about 2
percent less than the average voltage of the same active composition without
the coating, when cycled from 2V to 4.6V against lithium at a rate of C/10
(Final Act. 4). The Examiner finds, however, that these characteristics are
an intrinsic property of the thickness of the coating layer (id.). The
Examiner further finds that because Kensuke’s material has the same
composition as the claimed active material (i.e., the amounts of the
components overlap), it would be expected to have the same properties
(Final Act. 5).
With regards to the anticipation rejection, the Examiner finds that
Kensuke’s composition inherently has the recited average voltage (Final
Act. 4). However, “[ijnherency . . . may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient” to establish inherency. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). In this
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Application 12/616,226
instance, the Examiner has not made sufficient factual findings to support an
inherency finding for this limitation (see Ans. 19—20). In particular, the
Examiner has simply stated the limitation “appears to be [an] inherent
characteristic of the composition” and points to Examples 1 and 6 of the
Specification of the application of Appeal as showing the recited property
(Ans. 19). This is insufficient to support a finding that average voltage
recitation is inherent in the coating of Kensuke. Accordingly, we reverse the
anticipation rejection over Kensuke.
With regards to the obviousness rejection over Kensuke, the Examiner
implicitly finds that the overlapping ranges for the amounts of the various
components of the active composition makes that composition prima facie
obvious (Final Act. 4). With regards to whether the material exhibits an
average voltage that is no more than about 2 percent less than the average
voltage of the same active composition without the coating, when cycled
from 2V to 4.6V against lithium at a rate of C/10, the Examiner determines
that because it would have been obvious to make a composition having the
claimed amounts of components (because of the overlapping ranges), the
burden shifts to Appellants to demonstrate that it would not have the recited
property (Final Act. 4—5, citing MPEP 2112.01 I).
Appellants argue that “the manganese rich materials disclosed and
claimed by Appellants] have very complex chemistry, and Kensuke does
not point at all to the particular compositions disclosed and claimed by
Appellants] from the vast genera disclosed in Kensuke” and that because
Kensuke does not mention the association of voltage instability with
manganese activation, Kensuke does not render the claimed invention prima
facie obvious (Appeal Br. 14). Appellants further argue that “[b]ecause the
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Application 12/616,226
genus in Kensuke is so broad, there is no plausible way to begin to evaluate
the potential inherent properties of Kensuke” (Appeal Br. 17).
Appellants’ arguments are not persuasive. Appellants do not contest
that Kensuke’s ranges overlap with the recited ranges, which makes out a
prima case of obviousness. See In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). At those
overlapping ranges, the claimed voltage is inherent in Kensuke’s coating
composition. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The
fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be obvious.”); cf
PAR Pharm., Inc. v. TWIPharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir.
2014) (a limitation is inherently disclosed “when the limitation at issue is the
‘natural result’ of the combination of prior art elements.”).
“[T]he existence of overlapping or encompassing ranges shifts the
burden to the applicant to show that his invention would not have been
obvious.” In re Peterson, 315 F.3d at 1330.
Appellants also argue that they have overcome the prima facie case of
obviousness by a showing of unexpected results (Appeal Br. 17—18). When
the difference between the claimed invention and the prior art is some range
or other variable within the claims, the Federal Circuit has held that the
Appellants must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. See, e.g., In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003); In re Woodruff, 919 F.2d at 1578. The burden rests with Appellants
to establish (1) that the alleged unexpected results presented as being
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Application 12/616,226
associated with the claimed invention are, in fact, unexpected, (2) that the
comparisons are to the disclosure of closest prior art, and (3) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The claimed compositions recite a range of lithium contents, as well
as other components. Appellants have not shown or explained how their
alleged showing of unexpected results is commensurate in scope with the
claims on appeal. Moreover, Appellants have not provided evidence that the
results they cite are, in fact, unexpected or surprising. Thus, on balance, the
evidence of record weighs most heavily in favor of a conclusion of
obviousness.
Claims 26—28 and claim 31 over Kensuke. Claim 26 further recites
a high discharge capacity at a rate of 2C. Appellants argue that Kensuke
does not disclose any specific capacities, and that the claimed property is a
result of the method by which the material is made (Appeal Br. 21).
Appellants further argue that the claimed discharge capacity is not inherent
in Kensuke. Claim 31 recites a specific discharge capacity, and Appellants
make similar arguments urging its patentability as they do for claims 26—28
(id.). However, the rejections of these groups of claims are based on
findings that the claimed compositions would have been obvious (based on
the overlapping ranges), and that because the Office has shown a sound basis
for believing that the claimed products and the products which would have
been obvious in light of the Kensuke disclosure are the same as the claimed
products, Appellants have the burden of showing that they are not. Spada,
911 F.2d at 708. Appellants have not met this burden. Although the
Specification states that the co-precipitation technique produces high
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Application 12/616,226
capacities, Appellants do not point to any specific information or data which
would support the contention that the particular production technique
produces the large capacities as asserted by Appellants.5
Claims 1—8, 26, and 28-34 over Sun in view of Zheng. The
Examiner finds that Sun discloses a lithium ion secondary battery
comprising a positive active material composition represented by the
formula Li[Nii/3Coi/3Mni/3]02 coated with an inorganic coating composition
wherein the coating composition comprises a metal fluoride of AIF3 of a
thickness of between 1 nm to about 8 nm, but does not specifically disclose
the lithium composition recited in the claims (Final Act. 9—10). The
Examiner further finds that Zheng discloses an active material composition
with the following composition: Fi[Fi0.2Mno.54Nio.i3Coo.i3]02. The
following table shows the correspondence of the claimed active material and
the active material disclosed by Zheng.
Component Claim 1 Zheng
Fi 1.05-1.25 1.2
5 In connection with this argument, Appellants state that “[ajspects
have been discussed throughout the file history without being refuted by the
Examiner” (Reply Br. 8), but do not point to anything specific which would
provide evidentiary support for their position. To the extent that the patents
incorporated by reference into the Specification provide the requisite
evidence, Appellants have not directed us to it and thus have not met their
burden to show error in the rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (citing Ex parte Frye, Appeal 2009-006013, at 9-10, 2010 WE
889747 (BPAI Feb 16, 2010) (precedential) (“The panel then reviews the
obviousness rejection for error based upon the issued identified by appellant,
and in light of the arguments and evidence produced thereon.”).
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Application 12/616,226
Ni © o 0.13
Mn 0.4 - 0.65 0.54
Co 0-0.3 0.13
A 0 1 © None
O 2 2
The Examiner also finds that Zheng teaches that active material
compositions like those taught by Sun (Li[Nii/3Coi/3Mni/3]02) must be
charged at high potentials which are beyond the electrochemical stable
windows of widely used electrolytes (Final Act. 10). Therefore, according
to the Examiner, it would have been obvious to use Zheng’s active material
composition to replace Sun’s active material composition to provide
electrolytic stability during the life of Sun’s battery (id.). The Examiner
finds that the claimed average voltage would have been inherent “given that
both the prior art and the present application utilize similar or the same
coating layer and active materials” (Final Act. 10-11).
Appellants make a number of arguments seeking reversal of this
rejection. First, they argue that Sun’s coating is not sufficiently uniform to
provide the improved performance properties taught by Appellants (Appeal
Br. 23). This argument is not persuasive because it is based on an assertion
that the improved properties of the claimed material result in part on
uniformity of the coating (id.). However, this assertion is primarily by
attorney argument (e.g., Appellants’ statement that “Appellant has examined
many TEM micrographs of particles to conclude that their coatings are
uniform” (id.)). However, attorney arguments in a brief do not take the
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place of evidence in the record. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants also argue that Zheng’s active materials are different from
the claimed active materials because they have different crystalline
structures, as evidenced by electrochemical performance (Appeal Br. 23—
24). However, the asserted differences of electrochemical performances are
not supported by evidence of record.
Appellants also argue that there was no motivation to combine Zheng
and Sun as required by the rejection, as evidenced by the fact that Zheng was
aware of Sun and yet used a different coating method (Appeal Br. 24). The
mere fact that Zheng uses a different coating method than Sun does not
weigh against the Examiner’s conclusion of obviousness where Appellants
have not directed us to any evidence showing that one of ordinary skill in the
art could not have applied the active material composition of Zheng using
the coating method of Sun. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (test for obviousness is “what the combined teachings of the
references would have suggested to those of ordinary skill in the art”).
With regards to Appellants’ argument that unexpected results weigh
in favor of non-obviousness (Appeal Br. 25—26), as explained by the
Examiner, the charge voltages used in the comparisons are not the same,
which makes the assertion of unexpected results unpersuasive.
Finally, with regards to Appellants’ separate arguments for claims 26—
28, 31, and 34, we find these arguments unpersuasive essentially for the
reasons set forth in the Answer at pages 35—38.
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CONCLUSION
We AFFIRM the rejection of claims 1, 3, 4, 7—9, and 26—32 under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Kensuke.
We AFFIRM the rejection of claims 1—8, 26, and 28—34 under
35 U.S.C. § 103(a) as being unpatentable over Sun in view of Zheng.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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