Umicore et al.

Patent Trials and Appeals Board

Dec 17, 2021

2020006558 (P.T.A.B. Dec. 17, 2021)

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.
15/538,698 06/22/2017 Stijn PUT 909/67 UTIL 8756
115007 7590 12/17/2021
NK Patent Law
4917 Waters Edge Dr.
Suite 275
Raleigh, NC 27606
EXAMINER
GATEWOOD, DANIEL S
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
12/17/2021 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):
docket@nkpatentlaw.com
eofficeaction@appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STIJN PUT, DIRK VAN GENECHTEN,
JAN GILLEIR, NICOLAS MARX, ARIHIRO MUTO,
NOBUAKI ISHII, and MASATAKA TAKEUCHI
____________

Appeal 2020-006558
Application 15/538,698
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16, 18–26, and 28–30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the Umicore and Showa Denko KK
as the real parties in interest. Appeal Br. 3.
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The invention “relates to a powder, more specifically for use, either or
not after further processing, in an electrode of a battery, and to an electrode
and a battery comprising such a powder.” Spec. 1. Claim 16 illustrates the
invention (formatting added):
16. A powder comprising particles, wherein the particles
comprise a matrix material and silicon-based domains dispersed
in the matrix material, wherein the matrix material is a
continuous phase and comprises carbon or a material that can
be thermally decomposed to carbon, wherein the silicon content
in the silicon-based domains is 80 weight percent or more, and
either part of the silicon-based domains are present in the form
of agglomerates of silicon-based domains and wherein at least
98% of the agglomerates have a maximum size of 3 μm or less,
or the silicon-based domains are not at all agglomerated into
agglomerates, and wherein the powder has a BET value of less
than 10 m2/g.
Appeal Br. 25 (Claims App.).

Appellant requests review of the following rejections from the
Examiner’s Final Action (see generally id.):
I. claims 16, 18–26, 29, and 30 rejected under 35 U.S.C. § 103 as
unpatentable over Matsubara (US 2005/0074672 A1, published April 7,
2005) and Morita (US 2010/0075227 A1, published March 25, 2010); and

II. claim 28 rejected under 35 U.S.C. § 103 as unpatentable over
Matsubara, Morita, and Hirose (US 2009/0269677 A1, published October
29, 2009).

For Rejection I, Appellant presents substantive arguments for claims
16 and 23 and relies on these arguments to address the rejection of the
remaining claims. See generally Appeal Br. Appellant also relies on the
arguments presented for claim 16 to address the separate rejection of claim
28. See id. at 23. Accordingly, we select claim 16 as representative of the
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subject matter claimed and decide the appeal as to all grounds of rejection
based on the arguments Appellant makes in support of the patentability of
claims 16 and 23.

OPINION
After review of the respective positions the Appellant provides in the
Appeal Brief 2 and the Examiner provides in the Final Office Action and the
Answer, we affirm the Examiner’s prior art rejections of claims 16, 18–26,
and 28–30.
Independent claim 16
Claim 16 recites a powder comprising particles having a matrix
material with silicon-based domains dispersed in the matrix material. Claim
16 also recites the matrix is a continuous phase and comprises carbon or a
material that thermally decomposes to carbon.
Claim Interpretation
Appellant contends that Matsubara does not disclose a matrix material
having silicon-based domains dispersed in the matrix material because
Matsubara’s carbon coating does not fully embed the disclosed silicon-based
domains. Appeal Br. 11–12. That is, Appellant contends that Matsubara’s
disclosed silicon-based domains are not dispersed in the carbon coating
matrix as claimed.
To give proper weight to the evidence of record and the respective
positions of Appellant and the Examiner, we must first determine the
meaning of the term “silicon-based domains dispersed in the matrix

2 Appellant did not file a Reply Brief.
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material” in claim 16. See Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed.
Cir. 1997). Thus, our review of the grounds of rejection of the appealed
claims necessarily entails the interpretation of the scope of the appealed
claims, giving the broadest reasonable interpretation to the terms thereof
consistent with the written description provided in Appellant’s Specification
as it would be interpreted by one of ordinary skill in this art. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We first note that claim 16 does not recite the silicon-based domains
as fully embedded in the claimed matrix material. Moreover, Appellant does
not direct us to any portion of the Specification that defines the term
“dispersed.” See generally Appeal Br. Instead, Appellant points to the
Cambridge Dictionary’s definition of “dispersion” as “a mixture in which
very small pieces of one substance are scattered within another substance” to
support the stated position. Appeal Br. 11–12. Appellant contends that this
definition is consistent with the definition the Examiner offers of
“dispersion” as “[i]n chemistry, dispersion means a distribution of small
particles uniformly in a medium.” Appeal Br. 12. Thus, Appellant asserts
that the definitions offered by Appellant and the Examiner indicate that
“dispersed” means the medium fully covers or encompasses the small
particles distributed in a dispersion. Appeal Br. 12. That is, Appellant
argues “dispersed” does not encompass small particles covered at least
partially by the medium. Consequently, Appellant contends the disputed
term “silicon-based domains dispersed in the matrix material” excludes
silicon-based domains covered at least partially by the matrix material.
Appeal Br. 12.
Appellant’s Arguments are unpersuasive.
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We first note that the definition offered by Appellant does not
necessarily state that the small pieces are embedded fully within another
substance in a dispersion. It merely states that the small pieces are scattered
in the medium. Likewise, the Examiner’s version of the definition merely
states the small particles are distributed uniformly in a medium. Appeal Br.
12. Thus, the offered definitions do not support Appellant’s stated position.
Moreover, Appellant’s own Specification counsels against such a
limited interpretation of the disputed term. According to the Specification,
“the silicon based domains and the matrix material form a dispersion
[where] the silicon based domains . . . are dispersed in a continuous phase of
. . . the matrix material.” Spec. 5. The Specification further describes, “the
silicon-based domains are either free silicon-based domains that are not
completely embedded in the matrix material or are fully embedded silicon-
based domains that are completely surrounded by the matrix material.”
Spec. 7 (emphasis added). In addition, the Specification specifically
discloses “[f]ree silicon-based domains are . . . those silicon-based domains
that are . . . not completely shielded by the matrix material and are therefore
freely accessible from outside the composite particle.” Spec. 7. Therefore,
contrary to Appellant’s arguments, the Specification describes the silicon-
based domains as not necessarily surrounded by the matrix material. Hence,
the matrix of claim 16 comprising silicon-based domains dispersed within it
cannot be limited to silicon-based domains fully embedded in the matrix
material.
We further note that Appellant’s claim 22, dependent from claim 16,
serves as further evidence that Appellant’s urged definition is inconsistent
with the Specification and the scope of the claims because it recites
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embodiments where the silicon-based domains “are not completely
embedded in the matrix material or are fully embedded silicon-based
domains that are completely surrounded by the matrix material.” Appeal Br.
25.
Therefore, for the purposes of this appeal, we find the broadest
reasonable interpretation of the term “silicon-based domains dispersed in the
matrix material” is that of a matrix material comprising silicon-based
domains at least partially embedded in the matrix material. This definition is
consistent with the disclosure in the Specification and the scope of the
claims.
In view of our finding above, we need not reach the Declaration under
37 C.F.R. § 1.132 by Nicolas Marx3 (hereinafter “Declaration” or “Decl.”)
and the publication by Jun Yang et al.4 (hereinafter, Yang”) that Appellant
presents in support of the stated arguments. Appeal Br. 13–14.
We now turn to the Examiner’s rejection of claim 16. We refer to the
Examiner’s Final Office Action for a complete statement of the Examiner’s
rejection of claim 16. Final Act. 2–7.5
With respect to the claim 16 features noted above, the Examiner finds
Matsubara teaches a powder for an electrochemical cell or battery

3 Appellant submitted the Declaration on August 23, 2019 and the Examiner
entered it into the record in Final Office Action dated September 20, 2019.
4 Yang et al., Dry Particle Coating for Improving the Flowability of
Cohesive Powders, Powder Technology, Vol. 158, pp. 21–33 (July 1, 2005).
5 A discussion of the reference to Morita is unnecessary for disposition of
this appeal because the Examiner relies on Morita to address the BET value
for the claimed powder, a limitation not at issue in this appeal. Further,
Appellant does not contest the Examiner’s specific finding with respect to
Morita. Appeal Br. 18.
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comprising particles, wherein the particles comprise a matrix material and
silicon-based domains dispersed in the matrix material. Final Act. 6;
Matsubara ¶¶ 20, 45, 66, Figure 2. The Examiner finds Matsubara teaches
the matrix is a continuous phase and can be made of carbon. Final Act. 6;
Matsubara ¶ 66, Figure 2.
The principal premise of Appellant’s arguments is that the structure of
Matsubara’s particles forming the negative active material is different from
the structure of the particles forming the claimed powder because, unlike the
claimed invention, Matsubara’s supermicroparticles 2 (silicon-based
domains) are not and cannot be dispersed in the thin carbon layer 3 (matrix
material). Appeal Br. 11; Matsubara Figure 2. According to Appellant, the
supermicroparticles 2 are in physical contact with the graphite particle 1 and
thus cannot be “dispersed” in the thin carbon layer because the thin carbon
layer 3 covers a portion of the supermicroparticles 2 but does not fully
encompass them. Appeal Br. 11–12; Matsubara ¶¶ 65, 66, Figure 2.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
The basis of Appellant’s arguments is an interpretation of the term
“silicon-based domains dispersed in the matrix material” as excluding
silicon-based domains at least partially embedded in the matrix material. As
we discuss above, Appellant’s interpretation of the disputed term is
inconsistent with the description of this term in the Specification and the
scope of the claims.
Further, claim 16 recites an article of manufacture and “[i]t is well-
settled that the patentability of an apparatus or article of manufacture claim
depends on the claimed structure.” See Catalina Mktg. Int’l, Inc. v.
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Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also In re
Danly, 263 F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus
must distinguish from the prior art in terms of structure rather than
function.”).
Under the broadest reasonable interpretation noted above, claim 16
recites a powder comprising particles, wherein the particles have a structure
that comprises a matrix having silicon-based domains at least partially
embedded in the matrix material. While Appellant’s arguments focus on the
interaction between the supermicroparticles and the graphite particle
Matsubara describes, the only structure that claim 16 recites is of a particle
comprising a matrix material and silicon-based domains dispersed in the
matrix material. Therefore, we limit our discussion of Appellant’s
arguments to the claimed matrix structure and Matsubara’s
supermicroparticles/carbon layer structure because Appellant’s arguments
with respect to the point of contact between the supermicroparticle and the
graphite particle are not relevant for the disposition of this appeal for reasons
that follow.
Given the above noted broadest reasonable interpretation of the term
“silicon-based domains dispersed in the matrix material,” the matrix recited
in claim 16 comprises silicon-based domains at least partially embedded in
the matrix material.6

6 We note that, given this broadest reasonable interpretation of the term
“silicon-based domains dispersed in the matrix material,” partially
embedded silicon-based domains would be capable of contacting a
carbonaceous material that could form part of the claimed particle. See
Spec. 8 (“In yet a further embodiment the powder contains a carbonaceous
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Matsubara’s Figure 2 shows a structure comprising carbon layer 3
with supermicroparticles 2 embedded partially in the carbon layer 3. In fact,
Appellant’s argument that Matsubara’s carbon layer 3 does not encompass
or fully cover the entirety of the supermicroparticles 2 is a tacit
acknowledgement that Matsubara’s carbon layer/supermicroparticle
structure is one where the supermicroparticle is embedded partially in the
carbon layer. Appeal Br. 15. Such a structure falls within the broadest
reasonable interpretation of the claim 16 phrase “silicon-based domains
dispersed in the matrix material.”
Based on the above, there is a reasonable basis for one skilled in the
art to arrive at the claimed invention from Matsubara’s teachings.
Moreover, it is well settled that when a claimed product reasonably appears
to be identical or substantially identical to a product disclosed in the prior
art, the burden of proof is on the applicant to prove that the prior art product
does not inherently or necessarily possess the characteristics attributed to the
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as
here, the claimed and prior art products are identical or substantially
identical, . . . the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”). However, no such showing is of record.
To the extent that Appellant argues that the claimed matrix structure
and Matsubara’s matrix structure are made via different processes
(dispersion v. coating (Matsubara ¶ 66)), this argument fails to distinguish

material, preferably graphite, whereby the silicon-based domains are not
embedded in the carbonaceous material.”).
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the claimed matrix structure from Matsubara’s matrix structure for the
reasons we give above.
Appellant further asserts that the supermicroparticles 2 are not
distributed in the thin carbon layer 3. Appeal Br. 12. Appellant also
contends Matsubara’s matrix material is not a continuous phase. Appeal Br.
12.
These arguments are unpersuasive of reversible error in the
Examiner’s determination of obviousness because they relate to Appellant’s
limited definition of the disputed claim term. Appeal Br. 12, 16.
We again reiterate that the subject matter of claim 16 must be
distinguished based on the structure of the claimed particle. Matsubara’s
Figure 2 shows a structure comprising carbon layer 3 having
supermicroparticles distributed throughout carbon layer 3.
With respect to carbon layer 3 being a continuous phase, Matsubara
discloses that this carbon layer 3 coats the graphite particle 1 and
supermicroparticles 2 simultaneously to immobilize the supermicroparticle
onto the surface of the graphite particle. Matsubara ¶ 66. Appellant does
not explain sufficiently why this disclosure does not suggest to one skilled in
the art that carbon layer 3 has a continuous phase.
Thus, Appellant’s arguments fail to distinguish the claimed invention
from the structure Matsubara discloses.
Dependent Claim 23
Claim 23 depends from dependent claim 22. Claim 22 recites a
specific embodiment where the matrix material can comprise “free silicon-
based domains that are not completely embedded in the matrix material.”
Appeal Br. 25. As Appellant explains, claim 23 recites an analysis method
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for measuring the percentage of free silicon-based domains. Appeal Br. 19.
Given that Appellant (1) acknowledges that Claim 23 is directed to a
product (Appeal Br. 19) and (2) does not contest the Examiner’s specific
findings with respect to claim 22, Appellant does not explain how the
analysis method recited in claim 23 further limits the subject matter of claim
22. Thus, we find no reversible error in the Examiner’s rejection of claim
23.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejections of claims
16, 18–26, and 28–30 for the reasons we give above.

CONCLUSION
The Examiner’s decision to reject claims 16, 18–26, and 28–30 is
affirmed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16, 18–26,
29, 30
103 Matsubara, Morita 16, 18–26,
29, 30

28 103 Matsubara, Morita,
Hirose
28
Overall
Outcome
16, 18–26,
28–30

TIME PERIOD FOR RESPONSE
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2019).

AFFIRMED