Ex Parte Cresce et al

Patent Trial and Appeal Board

Sep 28, 2017

14027268 (P.T.A.B. Sep. 28, 2017)

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.
ARL 12-26 7058
EXAMINER
ZEMUI, NATHANAEL T
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
14/027,268 09/16/2013 Arthur von Wald Cresce
21364 7590 09/29/2017
U S ARMY RESEARCH LABORATORY
ATTN: RDRL-LOC-I
2800 POWDER MILL RD
ADELPHI, MD 20783-1138
09/29/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR VON WALD CRESCE and KANG CONRAD XU1
Appeal 2017-003772
Application 14/027,268
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER L. OGDEN, and
SHELDON M. McGEE, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 1-8, 14, 15, 19, and 20, which are all
1 Appellants identify the real party in interest as “the United States Government as
represented by the Secretary of the Army[.]” Appeal Brief filed May 23, 2016
(“App. Br.”) 3.
2 Although the Examiner set forth the § 103(a) rejections against claims 1-20 in the
Final Action entered August 26, 2015 (“Final Act.”) and the Examiner’s Answer
entered August 11, 2016 (“Ans.”), we note that claims 9-13 and 16-18 were
cancelled and are no longer pending in the above-identified application. See, e.g.,
Advisory Action entered February 24, 2016 (“Advisory Act.”) 2; App. Br. 3. In
fact, Appellants state that “[cjlaims 1-8, 14, 15, 19, and 20 stand rejected” and
“[cjlaims 1-8, 14, 15, 19, and 20 are on appeal.” App. Br. 3.
Appeal 2017-003772
Application 14/027,268
of the claims pending in the above-identified application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter of the claims on appeal is directed to “an electrolyte for
use in electrochemical cells” and “an electrochemical cell including a negative
electrode; a positive electrode; an electrolyte material adapted to allow for ion
passivation between the negative and positive electrodes; and an additive
[containing at least one oxirane compound] dispersed in the electrolyte material.”
Spec. 1111 and 25. According to paragraph 25 of the Specification:
The oxirane compound is believed to react with reactive sites on the
cathode and anode surfaces forming a protective layer. This
protective layer prevents decomposition at higher voltages while still
allowing desired cycling of the electrochemical cell.
Details of the appealed subject matter are recited in illustrative claims 1 and
19,3 which are reproduced below from the Claims Appendix of the Appeal Brief
(with disputed limitations italicized):
1. An electrochemical cell comprising:
a negative electrode;
a positive electrode;
an electrolyte material adapted to allow for ion passivation
between the negative and positive electrodes;
an additive dispersed in the electrolyte material;
3 To the extent that Appellants have presented substantive arguments for the
individual claims on appeal in compliance with the requirements of 37 C.F.R.
§ 41.37(c)(l)(iv) (2012), we will address them separately.
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wherein the additive includes at least one oxirane compound.
19. An electrolyte for use in an electrochemical cell having a positive
and negative electrode, the electrolyte comprising:
an electrolyte material; and
an additive dispersed in the electrolyte material, wherein the
additive includes at least one oxirane compound.
App. Br. 14 and 24, Claims Appendix.
The Examiner maintains, and Appellants seek review of, the following
grounds of rejection:
1. Claims 1-3, 6-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Xu ’359 (US 2012/0225359 Al,
published September 6, 2012) and Lee (US 2009/0035656 Al, published February
5, 2009)4; and
2. Claims 1, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Xu ’485 (US 2012/0009485 Al, published January 12,
2012) and Lee. Final Act. 2-9; Advisory Act. 2-6; Ans. 2-7; App. Br. 3, 6-12.
DISCUSSION
Upon consideration of the evidence relied upon by the Examiner and
Appellants in light of each of Appellants’ contentions,5 we find Appellants do not
4 Although the Examiner includes claims 9-13 and 16-18 in this § 103(a) rejection
in the Answer, we have omitted them because they were cancelled and are no
longer pending in the above-identified application. Compare Ans. 2, with
Advisory Act. 2 and App. Br. 3.
5 Any new arguments raised in the Reply Brief, which could have been raised in
the Appeal Brief, will not be considered. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for purposes
of the present appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
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identify reversible error in the Examiner’s decision rejecting claims 1-8, 14, 15,
19, and 20 under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s
§ 103(a) rejections of the above claims substantially for the reasons set forth in the
Final Action, Advisory Action, and the Answer. We add the following primarily
for emphasis and completeness.
In assessing the obviousness of the subject matter recited in the claims on
appeal, “[ojften, it will be necessary for . . . [us] to look to interrelated teachings of
[the] multiple [prior art references relied upon by the Examiner] ... in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed . . . .” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
These prior art references must be read in context, taking into account “demands
known to the design community,” “the background knowledge possessed by a
person having ordinary skill in the art,” and “the inferences and creative steps that
a person of ordinary skill in the art would employ.” Id. at 418.
1. Claims 1-3, 6-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Xu ’359 and Lee
Here, the Examiner finds, and Appellants do not dispute, that Xu ’359
teaches an electrochemical cell comprising a negative electrode, a positive
electrode, an electrolyte material adapted to allow for ion passivation between the
negative and positive electrodes, and an additive dispersed in the electrolyte
material. Compare Final Act. 2-3, with App. Br. 6-12; see also Xu ’359 ^fl[ 4 and
2010) (Informative) (explaining that under the previous rules, which are similar to
the current rules, “the reply brief [is not] an opportunity to make arguments that
could have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”).
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8. The Examiner acknowledges that Xu ’359 does not specifically identify at least
one oxirane compound as its additive. Final Act. 3. The Examiner finds, and
Appellants do not dispute, that Lee teaches using glycidyl ether compound
comprising an oxirane group (corresponding to at least one oxirane compound
recited in claims 1 and 19) as an additive to an electrolyte. Compare Final Act. 3,
with App. Br. 6-12. The Examiner finds, and Appellants do not dispute, that Lee
teaches
the unstable ether bond in the oxirane group can be broken into a
negatively-charged oxygen atom and a positively-charged carbon
atom which continuously reacts with adjacent compounds to form a
film on the surface of the electrode. The film is then capable of
preventing the active material from contacting the electrolyte. In
addition, the film can prevent cracks caused by variations in the
volume of the negative electrode active material involved in lithium
intercalation and deintercalation[.]
Compare Final Act. 3 citing Lee H 19-22, with App. Br. 6-12; compare also Lee
122 (“the film can prevent cracks caused by variations in the volume of the
negative electrode active material involved in lithium intercalation and
deintercalation.”), with Xu ’359 14 (“the electrolyte can support the reversible Li
ion intercalation/de-intercalation chemistry . . .”). The electrolyte taught by Lee,
like the electrolyte taught by Xu ’359, is useful for a lithium battery. Compare Lee
118, with Xu ’359 H 8 and 14.
Thus, notwithstanding Appellants’ arguments to the contrary at pages 6
through 8 of the Appeal Brief, we find that a preponderance of the evidence
supports the Examiner’s determination that the collective teachings of Xu ’359 and
Lee would have provided an ample reason, suggestion or motivation to prompt one
of ordinary skill in the art to employ at least one oxirane compound taught by Lee
as an additive to the electrolyte in Xu ’359’s electrochemical cell, with a
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reasonable expectation of successfully preventing cracks caused by variations in
the volume of the negative electrode active material involved in lithium
intercalation and deintercalation.
Appellants do not dispute that Xu ’359 teaches “a Lithium ion source for
Lithium ion passivation between the negative and positive electrode” as recited in
claim 2. App. Br. 6-12. Rather, Appellants contend that the Examiner has not
provided “a rationale as to why the glycidyl ether compound of Lee . . . would
behave in the same manner or function as the Appellant’s invention[.]” App. Br. 8.
However, the Examiner finds that Lee, like Appellants’ invention, is directed to
using at least one oxirane compound (a glycidyl ether compound having an oxirane
group) to form a protective layer or film as indicated supra. In any event, “[a]s
long as some motivation or suggestion to combine the references is provided by the
prior art taken as a whole, the law does not require that the references be combined
for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992); see also KSR, 550 U.S. at 420 (“Under the correct analysis, any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in the
manner claimed.”).
Appellants contend that Xu ’395 does not teach an electrolyte in the absence
of an electric charge as required by claim 3. App. Br. 8. However, paragraph 29
of Xu ’395 relied upon by the Examiner discloses an electrolyte material that
comprises a non-aqueous organic solvent in liquid form. Nowhere in paragraph 29
of Xu ’395 or any other paragraphs of Xu ’395 relied upon by Appellants disclose
that such electrolyte material is formed in the presence of an electric charge. Thus,
we find no reversible error in the Examiner’s finding that Xu ’395 teaches an
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electrolyte material that comprises a non-aqueous organic solvent in liquid form in
the absence of an electric charge as required by claim 3.
Appellants contend that Xu ’395 and Lee do not teach or suggest the
solubility of at least 1 ppm recited in claim 8. App. Br. 8-9. However, the
Examiner finds, and Appellants do not dispute, that:
Xu [’395] teaches an electrolyte comprising an additive, wherein the
concentration of the additive ranges from 0.1 ppm to 5% with respect
to the total solvent weight which overlaps with [and is encompassed
by] an embodiment of the instant invention (oxirane additive is
present in a concentration range from 0.1 ppm to 100%) wherein one
of the solvents disclosed [in the instant application] is also taught by
Xu [’395],
Compare Final Act. 3^4, with App. Br. 8-9. Thus, we find no reversible error in
the Examiner’s finding that the very broadly recited solubility (solubility of at least
1 ppm) recited in claim 8 would have been reasonably expected or would have
naturally flowed from following the suggestion by Xu ’395 and Lee to form the
recited electrolyte. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a
compound and its properties are inseparable”); In re Kubin, 561 F.3d 1351, 1357
(Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the
[limitation], [applicants’] application itself instructs that [the limitation] is not an
additional requirement imposed by the claims on the [claimed invention], but
rather a property necessarily present in [the claimed invention]”); see also Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized
another advantage which would flow naturally from following the suggestion of
the prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”)
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Appellants contend that Xu ’395 does not teach using at least one oxirane
compound as an additive to an electrolyte. App. Br. 9. However, “[n]on-
obviousness cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As indicated supra, the collective
teachings of Xu ’395 and Lee, as a whole, would have prompted one of ordinary
skill in the art to employ at least one oxirane compound taught by Lee as an
additive to the electrolyte in Xu ’395’s electrochemical cell.
Appellants also contend that Xu ’395 “teaches away from Appellant’s
invention.” App. Br. 9. However, “[w]e will not read into a reference a teaching
away from a process [or the recited electrolyte or additive] where no such language
exists [in Xu ’395].” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellants do not identify any
teaching in Xu ’395 which would have discouraged one of ordinary skill in the art
from the using the additive taught by Lee. App. Br. 9. Nor do Appellants discuss
the effect of the collective teachings of Xu ’395 and Lee. In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991) (Even if the prior art contains “apparently conflicting”
teachings, each reference must be considered “for its power to suggest solutions to
an artisan of ordinary skill. . . considering] the degree to which one reference
might accurately discredit another.”)
Accordingly, we affirm the Examiner’s decision rejecting claims 1-3, 6-8,
14, 15, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Xu ’359 and Lee.
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2. Claims 1, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable over the combined
disclosures of Xu ’485 and Lee.
Here, the Examiner finds, and Appellants do not dispute, that Xu ’485
teaches an electrochemical cell comprising a negative electrode, a positive
electrode, an electrolyte material adapted to allow for ion passivation between the
negative and positive electrodes, and an additive dispersed in the electrolyte
material. Compare Final Act. 6, with App. Br. 10-12; see also Xu ’485 2 and 6.
The Examiner acknowledges that Xu ’485 does not specifically identify at least
one oxirane compound as its additive. Final Act. 3. The Examiner finds, and
Appellants do not dispute, that Lee teaches using glycidyl ether compound
comprising an oxirane group (corresponding to at least one oxirane compound
recited in claim 1) as an additive to an electrolyte. Compare Final Act. 6, with
App. Br. 10-12. The Examiner finds, and Appellants do not dispute, that Lee
teaches
the unstable ether bond in the oxirane group can be broken into a
negatively-charged oxygen atom and a positively-charged carbon
atom which continuously reacts with adjacent compounds to form a
film on the surface of the electrode. The film is then capable of
preventing the active material from contacting the electrolyte. In
addition, the film can prevent cracks caused by variations in the
volume of the negative electrode active material involved in lithium
intercalation and deintercalation[.]
Compare Final Act. 6-7 citing Lee 19-22, with App. Br. 6-12; compare also
Lee 122 (“the film can prevent cracks caused by variations in the volume of the
negative electrode active material involved in lithium intercalation and
deintercalation.”), with Xu ’485 12 (“the electrolytes can support the reversible Li
ion intercalation/de-intercalation chemistry . . .”). The electrolyte taught by Lee,
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Application 14/027,268
like the electrolyte taught by Xu ’485, is useful for a lithium battery. Compare Lee
118, with Xu ’485 H 2 and 8.
Thus, notwithstanding Appellants’ arguments to the contrary at pages 8
through 12 of the Appeal Brief, we find that a preponderance of the evidence
supports the Examiner’s determination that the collective teachings of Xu ’485 and
Lee would have provided an ample reason, suggestion or motivation to prompt one
of ordinary skill in the art to employ at least one oxirane compound taught by Lee
as an additive to the electrolyte in Xu ’485’s electrochemical cell, with a
reasonable expectation of successfully preventing cracks caused by variations in
the volume of the negative electrode active material involved in lithium
intercalation and deintercalation.
Appellants contend that Lee does not disclose “a gellable polymer film as
found in the Appellants’] claim[s] 4 and 5.” App. Br. 11. However, the Examiner
finds, and Appellants do not dispute, that Xu ’485 teaches a porous polyolefin
separator or a gellable polymer film as required by claims 4 and 5. Compare final
Act. 7 citing Xu ’485, claim 1, with App. Br. 10-12. Moreover, as indicated supra,
the collective teachings of Xu ’485 and Lee, as a whole, would have prompted one
of ordinary skill in the art to employ at least one oxirane compound taught by Lee
as an additive to the electrolyte in Xu ’485’s electrochemical cell that contains a
porous polyolefin separator or a gellable polymer film. Appellants, by arguing that
Lee does not disclose the gellable polymer film separator alternatively recited in
claims 4 and 5, ignores the collective teachings of Xu ’485 and Lee. In re Merck
& Co., 800 L.2d at 1097 (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”)
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Accordingly, we also affirm the Examiner’s decision rejecting claims 1, 4,
and 5 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Xu ’485 and Lee.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1-8, 14, 15,
19, and 20 under 35 U.S.C. § 103(a) is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent action
in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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