Ex Parte Bosnyak et al

Patent Trial and Appeal Board

Jun 20, 2018

13529797 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/529,797 06/21/2012
130577 7590 06/22/2018
ANDREWS KURTH KENYON LLP
600 Travis Street
Suite 4200
Houston, TX 77002
FIRST NAMED INVENTOR
Clive P. Bosnyak
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.
DENA-0008 (223156) 1004
EXAMINER
STUCKEY, PHILIP A
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
patenttrademarks@andrewskurth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIVE P. BOSNYAK and KURT W. SWOGGER
Appeal2017-008091
Application 13/529,797
Technology Center 1700
Before A VEL YN M. ROSS, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
Appeal2017-008091
Application 13/529,797
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1--4, 6-7, and 10-21. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held on June 14, 2018. 3
We REVERSE.
STATEMENT OF THE CASE
The subject matter on appeal relates to a lithium ion batteries using
discrete carbon nanotubes, methods for production thereof and products
obtained therefrom. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A composition useful for lithium ion batteries comprising:
discrete, non-agglomerated, and exfoliated carbon
nanotubes having a surface and mixtures of ion active materials
comprising migratable ions said materials comprising crystals or
layers of lithium ion active material, wherein a ratio of lithium
ion to other total ions in the ion active materials is at least 2: 1 to
25:1, and wherein the discrete carbon nanotubes have crystals or
layers of lithium ion active material ionically attached to their
surface and wherein the discrete carbon nanotubes comprise
oxidized species selected from the group consisting of
1 In our Decision we refer to the Specification filed June 21, 2012 as
amended September 24, 2015 ("Spec."), the Final Office Action appealed
from dated August 19, 2016 ("Final Act."), the Appeal Brief filed January
24, 2017 ("Appeal Br."), the Examiner's Answer dated March 10, 2017
("Ans.") and the Reply Brief filed May 9, 2017 ("Reply Br.").
2 Appellants identify the real party in interest as Molecular Rebar Design,
LLC. Appeal Br. 2. Appellants also state "[a]nother interested party is
licensee Black Diamond Structures, LLC which is a joint venture between
Molecular Rebar Design, LLC and SABIC." Id.
3 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
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Appeal2017-008091
Application 13/529,797
carboxylic, ketone, or hydroxyl functionalities, and wherein the
discrete carbon nanotubes have an aspect ratio of 10 to 500 and
oxidation levels from 1 % to 15% by weight of the carbon
nanotube.
Appeal Br. 17 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections4:
A. Claims 1--4 and 10-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Li in view ofNiu. Final Act.
5---6.
B. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Li in view of Niu and in further view of
Zhamu. Id. at 18.
Appellants seek our reversal of Rejections A-B. Appeal Br. 8.
Appellants argue rejections A and B together, and argue independent claims
1, 10, 11, and 12 as a group. See id. Because the basis for our reversal-
i.e., Li fails to teach "discrete, non-agglomerated, and exfoliated carbon
nanotubes" as claimed-is common to all claims 5, we focus our discussion
of the prior art rejections on claim 1.
4 The Examiner withdraws the nonstatutory double patenting rejection over
US 8,808,909. Ans. 3. Appellants filed a terminal disclaimer on March 10,
2017, disclaiming the terminal portion of this application which would
extend beyond the expiration date of US 8,968,924 ("the '924 patent).
Therefore, the nonstatutory double patenting rejection over the '924 patent is
moot. See Terminal Disclaimer dated March 10, 2017.
5 Claim 12 relates to "uniformly dispersible oxidized, non-agglomerated, and
exfoliated carbon nanotubes." Appeal Br. 19 (Claims App'x).
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Application 13/529,797
OPINION
The Examiner rejects claim 1 (among others) as obvious over Li in
view of Niu. Final Act. 6. Relevant to claim 1, the Examiner finds that Li
teaches all aspects of claim 1, except that Li "does not teach the oxidized
species, aspect ratio, and oxidation level of the carbon nanotubes." Id. at 7.
But, the Examiner finds that Niu similarly teaches disassembled discrete
carbon nanotubes that have "an aspect ratio of 5 or greater" and "the discrete
carbon nanotubes comprise oxidized species selected from the group
consisting of carboxylic, ketone, or hydroxyl functionalities." 6 Id. The
Examiner reasons that one skilled in the art would have selected the claimed
oxidized species of carbon nanotubes "because Niu discloses that an
increase in oxygen content can also improve density of the material" and
further, that the aspect ratio taught by Niu would be desired "for binding the
materials in the electrode." Id. The Examiner further determines that "the
ionically attached surface of discrete carbon nanotubes having layers of
lithium ion active material ionically attached to their surface" would be
expected in the prior art because the structure and composition of the prior
art is the same as claimed. Id. at 8.
Appellants raise two arguments: (1) Li fails to teach a composition
having lithium ions and therefore cannot describe a lithium ion active
material ionically attached to the surface of the carbon nanotubes (Appeal
Br. 9--11) and (2) Li fails to suggest "discrete, non-agglomerated, and
6 We observe that the Examiner states that Niu "teaches disassembled
( disentangled) discrete carbon nano tubes," but we do not understand the
Examiner to rely upon this particular finding in the rejection of claims 1--4,
6-7, and 10-21. See Final Act. 6.
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Appeal2017-008091
Application 13/529,797
exfoliated" carbon nanotubes (Id. at 12). Because we agree with Appellants'
second argument, we do not reach the first argument.
Appellants contend that Li does not teach "discrete, non-
agglomerated, and exfoliated carbon nanotubes" and explain that the SEM
images relied upon by the Examiner do not show individual dispersed tubes
in Li. Appeal Br. 12. Appellants further assert that the Examiner's
interpretation of "discrete, non-agglomerated, and exfoliated carbon
nanotubes" based on the SEM image is broad enough to include
"agglomerated, entangled, non-individualized nanotubes," and is therefore,
unreasonable. Id. at 13. Appellants further disagree with the Examiner's
position (Final Act. 6), that "because [the nanotubes] are dispersed in the
composite cathode slurry mixture" they are "discrete, non-agglomerated, and
exfoliated carbon nanotubes," as being conclusory. Reply Br. 6.
The preponderance of the evidence supports Appellants' position. As
Appellants explain (Reply Br. 5), Li's SEM images support their position
that the Li reference fails to teach "discrete, non-agglomerated, and
exfoliated carbon nanotubes" because "one cannot even ascertain two ends
of even a single nanotube due to the agglomeration and entanglement of the
nanotubes." Id. Further, Li describes Figure 2 as showing "a piece of
MWCNTs connected to LiFeP04 particles in series and countless MWCNTs
interlaced all particles together to form a three-dimensional network of
wiring," and therefore suggests that the carbon nanotubes are bundled or
agglomerated. Li 664 (emphasis added). The Examiner's bare statement
that "Li 2006 further teaches discrete, non-agglomerated, and exfoliated
carbon nanotubes having a surface (MWCNTs with surfaces, see figure 2,
which are considered discrete and exfoliated as instantly claimed because
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Application 13/529,797
they are dispersed in the composite cathode slurry mixture)," without more,
fails address Li's express teaching that suggests bundling or agglomeration
of carbon nanotubes. Final Act. 6 ( emphasis in original); see also Ans. 5
(same). Therefore, on this record, we do not sustain the Examiner's
rejection.
CONCLUSION
Appellants identified a reversible error in the Examiner's rejection of
claims 1--4 and 10-21 under 35 U.S.C. § 103(a) as unpatentable over Li in
view of Niu.
Appellants identified a reversible error in the Examiner's rejection of
claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Li in view of
Niu and in further view of Zhamu.
DECISION
For the above reasons, the Examiner's rejection of claims 1--4, 6-7,
and 10-21 is reversed.
REVERSED
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