Ex Parte Lopez et alDownload PDFPatent Trial and Appeal BoardJan 26, 201712616226 (P.T.A.B. Jan. 26, 2017) Copy Citation 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 Appeal 2015-003794 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). 3 Appeal 2015-003794 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 4 Appeal 2015-003794 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 5 Appeal 2015-003794 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 6 Appeal 2015-003794 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 7 Appeal 2015-003794 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.”). 8 Appeal 2015-003794 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 9 Appeal 2015-003794 Application 12/616,226 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. 10 Appeal 2015-003794 Application 12/616,226 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 11 Copy with citationCopy as parenthetical citation