Ex Parte Gao et al

Patent Trial and Appeal Board

Sep 11, 2014

10900715 (P.T.A.B. Sep. 11, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/900,715 07/28/2004 Yuan Gao 208-6176 8733
20792 7590 09/11/2014
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
BEST, ZACHARY P
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
09/11/2014 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 YUAN GAO, MARINA YAKOVLEVA,
JOHN ENGEL, CHRISTINE JARVIS,
and MICHAEL LAIN
__________

Appeal 2013-005973
Application 10/900,7151
Technology Center 1700
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 4, and 5. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
We AFFIRM.
Appellants’ invention is directed to a method of prelithiating
electrodes comprising a host material and lithium metal dispersed in the host
material (Spec. paras. [0002], [0032]).

1 This application was the subject of a previous appeal (Appeal No. 2009-
013541).
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2
Claim 1 is illustrative:
1. A method of prelithiating a host material prior to contact with an
electrolyte, comprising:
dispersing the host material in stabilized lithium metal powder to
form a mixture of host material and stabilized lithium metal powder; and
vigorously stirring at a temperature of from about 40°C to about
180°C the mixture of host material and stabilized lithium metal powder to
promote intimate contact between the host material and stabilized lithium
metal powder to promote lithiation of the host material prior to contact with
an electrolyte.

Appellants appeal the following rejections:
1. Claims 1, 4, and 5 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to point out and particularly claim the subject
matter which Appellants regard as the invention.
2. Claims 1, 4, and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gao (US 6,706,447 B2, issued Mar. 16, 2004) in
view of Yazami (US 5,543,021, issued Aug. 6, 1996).

REJECTION (1)
ISSUE
Did the Examiner reversibly err in determining that the relative
expression “vigorously stirring” in claim 1 is indefinite? We decide this
issue in the negative.

ANALYSES
The Examiner states that the “vigorously stirring” limitation in claim
1 is indefinite because the Specification provides no measure or standard as
to what degree of stirring constitutes “vigorously stirring.” (Ans. 5). The
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Examiner finds that the Specification at paragraph 34 discloses that
“vigorous stirring or other agitation can be used to promote contact between
the host material 24 and lithium metal powder.” (Ans. 8). The Examiner
finds the paragraph 34 disclosure of the Specification to mean that other
forms of mixing, other than vigorous stirring, can be used to prelithiate2 the
host material (Ans. 8). The Examiner finds that Appellants’ reliance on
whether or not the host material is prelithiated is not a sufficient standard for
determining if the agitation is vigorous because “other agitation” can also be
used to prelithiate the host material (Ans. 8-9).
Appellants argue that “vigorously stirring” must result in lithiation of
the host material, which provides a standard for determining whether or not
the agitation may be considered “vigorously stirring” (Reply Br. 2).
Appellants contend that the Specification’s paragraph 34 disclosure that
“vigorous stirring or other agitation can be used” does not mean that the
“other agitation” is not vigorous (Reply Br. 3). Rather, Appellants argue
that the proper interpretation of “other agitation” means that other forms of
vigorous agitation may be used otherwise the term vigorous would be
superfluous. Id. Appellants contend that the Examiner’s analysis of the
second example in the Declaration of Kenneth Brian Fitch dated May 31,
2012 (hereinafter Fitch Declaration 2) where the lithium metal and host
material is mixed at 1200 rpm for 10 minutes (i.e., low-energy mixing
according to Appellants) is circular (Reply Br. 3-4). Appellants contend that
the Examiner improperly reasons that the low-energy mixing example in the
Fitch Declaration 2 is vigorous stirring but then concludes that lithiation of

2 “Prelithiate” or “prelithiating” refers to “lithiation of the host material 24
prior to contact of the host material with an electrolyte” (Spec. para. [0032]).
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4
the host material cannot be the defining characteristic of vigorous stirring
because no lithiation occurs in the low energy mixing example (Reply Br.
4).
“Vigorously stirring” is not specifically defined in the Specification.
The Specification discloses in paragraph 34 that “vigorous stirring and other
agitation can be used to promote contact between the host material and the
lithium metal powder.” The Specification further discloses that “contact
between lithium metal powder and host material 24 results in the partial
lithiation of the host material 24, creating a prelithiated host material 24”
(Spec. para. [0034], emphasis added). In other words, the agitation, be it
vigorous stirring or other agitation, merely promotes contact between the
host material and the lithium metal powder where partial lithiation of the
host material may occur. The Specification does not disclose what amount
of lithiation results from vigorously stirring the host material and lithium
metal powder relative to other agitation methods. If only partial lithiation is
achieved, unused lithium metal powder would be present in the host material
because not all the lithium metal powder has interacted/reacted with the host
material.
Based upon these disclosures, we agree with the Examiner that no
clear standard has been set forth to determine what constitutes “vigorously
stirring” within the meaning of the claims. Seattle Box Company, Inc. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)(
Definiteness problems often arise when words of degree are used in a
claim….When a word of degree is used the district court must determine
whether the patent’s specification provides some standard for measuring that
degree. The trial court must decide, that is, whether one of ordinary skill in
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the art would understand what is claimed when the claim is read in light of
the specification.”) Example (c) in the Fitch Declaration 2 which Appellants
rely upon to show what they consider to be “vigorously stirring” shows
complete lithiation of the host material with the lithium metal powder (i.e.,
all the lithium metal powder has reacted with the host material). However,
vigorously stirring and other agitation methods may partially lithiate the host
material. It is not clear what amount or degree of partial prelithiation would
be required by an agitation method for it to be considered vigorously stirring
relative to other agitation or stirring methods that achieve the same degree of
prelithiation. Therefore, we agree with the Examiner that whether or not
prelithiation of the host material occurs is not a suitable standard for
determining whether or not the stirring is vigorous or non-vigorous.
We are unconvinced by Appellants’ argument that the “other
agitation” methods would have been understood to be vigorous agitation
methods. As noted above, the paragraph 34 disclosure in the Specification
recites that the “vigorous stirring and other agitation can be used to promote
contact between the host material and the lithium metal powder.” In other
words, the Specification clearly distinguishes “vigorous stirring” from “other
agitation” techniques. If Appellants meant paragraph 34 of the
Specification to read “vigorous stirring and other vigorous agitation can be
used to promote contact between the host material and the lithium metal
powder” such should have been so stated in paragraph 34. No evidence in
the Specification or the record established that “other agitation” only
includes “vigorous” agitation methods to achieve partial prelithiation of the
host material.
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Accordingly, based on the disclosures and record discussed above,
one of ordinary skill in the art would not have been able to ascertain with
reasonable certainty the scope of the relative expression “vigorously
stirring” in the claims as no guidance or standard for determining such
expression has been provided in the Specification. Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). We affirm the Examiner’s §
112, second paragraph rejection.
Because we are unable to determine the scope of “vigorously stirring”
as recited in the claims, the rejection of claims 1, 4, and 5 under 35 U.S.C.
§ 103(a) over Gao in view of Yamazaki would be based upon speculative
assumptions as to the meaning of the claims. Therefore, we pro forma
reverse the Examiner’s § 103(a) rejection. In re Steele, 305 F.2d 859, 863
(CCPA 1962). This reversal of the prior art rejection is merely procedural
based upon our inability to construe the claims as drafted. Gao and
Yamazaki may be used by the Examiner in further prior art rejections in the
event of further prosecution.

DECISION
The Examiner’s decision is affirmed.
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).
ORDER
AFFIRMED

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