Ex Parte Schmidt

Patent Trial and Appeal BoardMar 18, 2019

14400165 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/400,165 11/10/2014 21839 7590 03/20/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 FIRST NAMED INVENTOR Gregory Schmidt 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. 0078840-000145 7055 EXAMINER MEKHLIN, ELIS ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 03/20/2019 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): ADIPDOC 1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte GREGORY SCHMIDT Appeal2018-004360 Application 14/400, 165 Technology Center 1700 Before JEFFREY B. ROBERTSON, GEORGIANNA W. BRADEN, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-5 and 17-20. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 In this Decision, we refer to the Specification filed November 10, 2014 ("Spec."), the Final Office Action dated May 17, 201 7 ("Final Act."), the Appeal Brief filed December 7, 2017 ("Appeal Br."), the Examiner's Answer dated January 22, 2018 ("Ans."), and the Reply Brief filed March 20, 2018 ("Reply Br."). 2 Appellant is the Applicant, Arkema France, which, according to the Appeal Brief, is the real party in interest. Appeal Br. 2. 3 Claims 6-16 are withdrawn from consideration by the Examiner as directed to an independent or distinct invention. Final Office Action dated May 17, 2017, 2. Appeal2018-004360 Application 14/400, 165 The subject matter on appeal relates to a salt of a bicyclic imidazole compound used for lithium ion batteries. Spec. 1, 11. 1-8. Sole independent claim 1, reproduced below from the Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal. 1. A salt of a bicyclic imidazole compound (IV) represented by expanded general formulae below: NC ~ X-X NCX:>- or in which A represents a monovalent cation and X independently represents a carbon atom, an oxygen atom, a sulfur atom, a phosphorus atom or a nitrogen atom, wherein at least one Xis N. Appeal Br. 11 (Claims App. 1 ). DISCUSSION The Examiner maintains the rejection of claims 1-5 and 17-20 under pre-AIA 35 U.S.C. Â§ I03(a) over Ihara et al. (US 2011/0229769 Al, published September 22, 2011) ("Ihara") in view of Heider et al. (US 6,548,212 Bl, issued April 15, 2003) ("Heider") with added support provided by Thompson et al. (US 2005/0042713 Al, published February 24, 2005) ("Thompson"). 4 The Examiner finds that Ihara teaches an electrolytic solution for a lithium secondary battery containing an electrolyte salt that includes, in part, 4 The rejection of claim 20 under pre-AIA 35 U.S.C. Â§ 112, fourth paragraph, was withdrawn by the Examiner in the Advisory Action dated September 25, 2017 ("Adv. Act.). Adv. Act. 2. 2 Appeal2018-004360 Application 14/400, 165 at least one or more nitrogen-containing organic anions, such as a compound of Formula (1-14), reproduced below. (l-14) M NC CN Formula (1-14) is an example of a nitrogen-containing organic anion useful in Ihara's electrolytic solution. The Examiner finds that although Ihara teaches the phenyl ring substituent group functions as an electron-drawing group in Formula (1-14), it fails to teach an imidazole compound substituted with a phenyl group having at least one carbon atom replaced by a nitrogen atom. Final Act. 7 (citing Ihara ,r,r 28, 29, 35, 41). The Examiner, however, finds that Heider "teaches phenyl groups and pyridyl groups are equivalent to and interchangeable for one another as substituent groups for electrolyte salts." Id. (citing Heider 3:37---61). The Examiner also finds that "Thompson teaches phenyl and pyridyl substituent groups are [known in the art] as electron-withdrawing groups." Id. at 8 (citing Thompson ,r 56). The Examiner concludes that "it would have been obvious to one ordinarily skilled in the art at the time of invention to use pyridyl, which contains one nitrogen, in place of phenyl because Heider teaches the two substituent groups are equivalent to and interchangeable for one another as substituent groups for electrolyte salts." Id. 3 Appeal2018-004360 Application 14/400, 165 Appellant argues that Heider would not teach or motivate a person of ordinary skill in the art to substitute the phenyl group in Ihara' s Formula ( 1- 14) with a phenyl group having at least one carbon atom replaced by a nitrogen atom (e.g., pyridyl). Appeal Br. 5---6. Appellant also argues that the cited art does not teach or suggest that phenyl and pyridyl substituents are equivalent or interchangeable for all electrolyte salts. Id. at 6-9. Appellant's arguments are persuasive of reversible error. As Appellant explains, Heider only discloses phenyl and pyridyl groups in a Markush group as suitable substituents for a particular lithium borate complex. Appeal Br. 8; Heider 3:37-61. Although Heider teaches that its lithium borate complex is an electrolyte, Reider's electrolyte salt is not structurally similar to Ihara's electrolyte salt. Ignoring this dissimilarity, the Examiner then concludes that Heider "teaches phenyl groups and pyridyl groups are equivalent to and interchangeable for one another as substituent groups for [all] electrolyte salts." Final Act. 7. The Examiner also finds that Thompson teaches that pyridyl and phenyl substituent groups are both electron-withdrawing. Final Act. 8 (Thompson ,r 56). However, as with Heider, Thompson's lysine selective protein labelling reagent is not structurally similar to Ihara's electrolyte salt. As Appellant contends, "because two compounds are individually useful as electrolyte salts does not mean that substituent groups attached to different compounds are interchangeable." Appeal Br. 7-8; see In re Ruff, 256 F.2d 590, 598-9 (CCPA 1958) (explaining how equivalence cannot be demonstrated by mere existence within a Markush group). Thus, on this record, Examiner's findings fall short of establishing equivalence or 4 Appeal2018-004360 Application 14/400, 165 interchangeability. Accordingly, we do not sustain the Examiner's rejection of claims 1-5 and 17-20 under pre-AIA 35 U.S.C. Â§ 103(a). DECISION The rejection of claim 1-5 and 17-20 under pre-AIA 35 U.S.C. Â§ 103(a) over Ihara in view of Heider, with added support provided by Thompson, is reversed. REVERSED 5