Kyle R. Fenton et al.

Patent Trials and Appeals BoardAug 3, 2020

15409845 - (D) (P.T.A.B. Aug. 3, 2020)

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. 15/409,845 01/19/2017 Kyle R. Fenton SD12924.1/S132715 9249 20567 7590 08/03/2020 Sandia National Laboratories P O BOX 5800 MS-0161 ALBUQUERQUE, NM 87185-0161 EXAMINER DOMONE, CHRISTOPHER P ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): docketing@sandia.gov patent@sandia.gov PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KYLE R. FENTON, GANESAN NAGASUBRAMANIAN, CHAD STAIGER, HARRY PRATT, KEVIN LEUNG, SUSAN REMPE, MANGESH CHAUDHARI, and TRAVIS MARK ANDERSON ____________________ Appeal 2019-002009 Application 15/409,845 Technology Center 1700 ____________________ Before ROMULO H. DELMENDO, N.WHITNEY WILSON, and MERRELL C. CASHION, JR., Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s August 23, 2018 decision finally rejecting claims 1–5 (“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies National Technology & Engineering Solutions of Sandia, LLC as the real party in interest (Appeal Br. 2). In addition, the Specification states that the “invention was made with Government support under [a] contract . . . awarded by the U. S. Department of Energy to Sandia Corporation” and that “[t]he Government has certain rights in the invention” (Spec. 1). Appeal 2019-002009 Application 15/409,845 2 CLAIMED SUBJECT MATTER Appellant’s disclosure generally relates to a lithium battery, comprising (1) an anode containing lithium metal; (2) a cathode comprising carbon monofluoride; (3) a separator between the anode and the cathode; and (4) an organosilicon-based electrolyte for conducting lithium ions between the anode and the cathode (Spec. 2). The electrolyte comprises a siloxane or silane backbone, and an anion binding agent ligand, for example a boron- based ligand, such as a pentafluorophenylboron, bonded to the siloxane or silane backbone (id.). The organosilicon-based electrolytes are said to provide increased primary battery safety while offering electrochemical performance increases (id.). Details of the claimed battery are set forth in representative claim 1, which is reproduced below from the Claims Appendix to the Appeal Brief: 1. A lithium battery, comprising: an anode comprising lithium metal; a cathode comprising carbon monofluoride; a separator between the anode and the cathode; an organosilicon-based electrolyte for conducting lithium ions between the anode and the cathode, the electrolyte comprising a siloxane or silane backbone and an anion binding agent ligand bonded to the siloxane or silane backbone. REJECTION Claims 1–5 are rejected under 35 U.S.C. § 103 as unpatentable over Zhang2 in view of Lee.3 2 Zhang et al., US 2007/0065728 A1, published March 22, 2007. 3 Lee et al., US 2012/0183866 A1, published July19, 2012. Appeal 2019-002009 Application 15/409,845 3 DISCUSSION The Examiner’s findings underlying the rejection are set forth at pages 4–5 of the Final Action. The Examiner finds that Zhang discloses a lithium battery which comprises (1) an anode comprising lithium metal; (2) an anode comprising carbon monofluoride; (3) a separator between the anode and the cathode; and (4) an organosilicon-based electrolyte which includes a polysiloxane backbone (Final Act. 4, citing Zhang, ¶¶ 14, 21, 23, 28, 44, 45). The Examiner further finds that the polysiloxane backbone has bonded substituents R and R1, as shown in General Formula II, which may be substituted and fluorinated aryl groups (Final Act. 5, citing Zhang, ¶ 45): Zhang’s General Formula II shows the general structure of polysiloxanes suitable for use in the solvent of Zhang’s battery. The Examiner also finds that Zhang does not specify the structure of an anion binding agent ligand, but that Lee discloses an electrolyte of a battery which comprises a fluorinated arylboron oxalate compound (FABO) which acts as an anion receptor, including the FABO pentafluorophenylboron oxalate (Final Act. 5, citing Lee, Abstract, ¶¶ 17, 18). The Examiner further finds that the Specification of the application on appeal classifies oxalate- based pentafluorophenylboron as a boron-based ligand, and that Lee teaches that FABO’s like pentafluorophenylboron oxalate promote the dissolution of lithium salts such as LiF, Li2O, and Li2O2 while maintaining excellent conductivity and a high lithium ion transference number (Final Act. 5). Appeal 2019-002009 Application 15/409,845 4 Therefore, according to the Examiner, it would have been obvious to use pentafluorophenylboron oxalate as the bonded substituted/fluorinated aryl substituent of Zhang in order to provide an electrolyte that promotes dissolution of lithium salts such as LiF, Li2O and Li2O2 while maintaining excellent conductivity and a high lithium ion transference number (Final Act. 5). Appellant argues that Zhang only teaches that silicon-based solvents can improve cycling performance and inhibit dendrite formation on lithium via the formation of a stable passivation layer, and that Zhang does not teach or suggest adding a substituent to the polysiloxane solvent which would promote LiF dissolution (Appeal Br. 4). Appellant further contends that Lee teaches that FABO is added as a stand-alone compound to a non-aqueous battery electrolyte, not as a ligand on the solvent molecules (id.). According to Appellant, Lee’s use of FABO in its electrolyte solution “offers a complete and functional solution to the problem of facilitating lithium fluoride dissolution whilst simultaneously controlling the ionic conductivity within the electrolyte” (id.). Therefore, Appellant argues, the benefit cited by the Examiner in combining the teachings of Zhang and Lee is provided by Lee alone, which removes the motivation for a person of skill in the art to combine those teachings (Appeal Br. 4–5). Having considered the argument and evidence advanced by Appellant and the Examiner in the Appeal and Reply Briefs, the Final Action, and the Answer, we determine that Appellant has demonstrated reversible error in the rejection. In order to establish obviousness, the Examiner must articulate some “reasoning with some rational underpinning to support the legal conclusion Appeal 2019-002009 Application 15/409,845 5 of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This reasoning must show that “there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this instance, as explained by the Examiner, Zhang teaches a polysiloxane backbone that has bonded substituents R and R1, as shown in General Formula II, that may be aryl and may be substituted and fluorinated [0045] (Ans. 6, citing Zhang ¶¶ 44 and 45). Lee teaches that a FABO provides specific benefits in an electrolyte solution. However, Lee does not teach or suggest that those benefits would be maintained if the compound were attached as a ligand to a backbone group. Nor has the Examiner pointed to anything in Lee which suggests attaching one of its FABO compounds to a siloxane backbone, like the one in Zhang. Nor does Zhang itself provide any specific suggestion to attach a compound like the FABO’s of Lee to provide additional benefits. Without the benefit of hindsight provided by the application on appeal, one of ordinary skill in the art would not have understood that one of Lee’s FABO compounds could be substituted onto the polysiloxane backbone of Zhang and provide the same benefits as the compound does alone in Lee’s system. Thus, we conclude that the preponderance of the evidence of record does not support the rejection, and determine that Appellant has demonstrated reversible error in the rejection on appeal. Appeal 2019-002009 Application 15/409,845 6 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5 103 Zhang, Lee 1–5 REVERSED