Umicore et al.Download PDFPatent Trials and Appeals BoardDec 17, 20212020006558 (P.T.A.B. Dec. 17, 2021) 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. 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 usptomail@nkpatentlaw.com 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. Appeal 2020-006558 Application 15/538,698 2 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 Appeal 2020-006558 Application 15/538,698 3 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. Appeal 2020-006558 Application 15/538,698 4 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. Appeal 2020-006558 Application 15/538,698 5 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 Appeal 2020-006558 Application 15/538,698 6 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. Appeal 2020-006558 Application 15/538,698 7 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. Appeal 2020-006558 Application 15/538,698 8 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 Appeal 2020-006558 Application 15/538,698 9 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.”). Appeal 2020-006558 Application 15/538,698 10 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 Appeal 2020-006558 Application 15/538,698 11 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 Appeal 2020-006558 Application 15/538,698 12 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 Copy with citationCopy as parenthetical citation