Ex Parte Hallac et al

Patent Trial and Appeal Board

Aug 30, 2017

13664210 (P.T.A.B. Aug. 30, 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.
13/664,210 10/30/2012 Peter B. Hallac JOCP:0022 4964
75576 7590 08/31/2017
Johnson Controls, Inc.
c/o Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269
EXAMINER
DIGNAN, MICHAEL L
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
08/31/2017 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 PETER B. HALLIC, SUNG-JIN CHO, FREDERIC C.
BONHOMME, MOHAMED TAGGOUGUI, DAVID R.
BOONE, QINGFANG SHI, AND ALEXANDRE NDEDI
NTEPE1
____________________

Appeal 2016-007705
Application 13/664,210
Technology Center 1700
____________________

Before MARK NAGUMO, AVELYN M. ROSS, and BRIAN D. RANGE,
Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–5, 8–17, and 19. We have jurisdiction. 35
U.S.C. § 6(b). We AFFIRM-IN-PART.

1 Appellant is the Applicant, Johnson Controls Technologies LLC, which
according to the Appeal Brief, is also the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE2
Appellant describes the invention as relating to a cathode material that
employs overcharge protection in order to prevent thermal runaway. Spec.
¶¶ 2–4. Claim 1, reproduced below with emphasis added to certain key
recitations, is illustrative of the claimed subject matter:
1. A positive electrode comprising a physical mixture of a
first electrode active material and a second electrode active
material coated onto a collector of the positive electrode; and
wherein the first electrode active material comprises a
lithium metal oxide, and
wherein the second electrode active material comprises an
overcharge protection additive having an operating voltage
higher than the operating voltage of the lithium metal oxide.
Appeal Br. 16 (Claims App’x).
REJECTIONS AND REFERENCES
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1–5, 8–17, and 19 under 35 U.S.C. § 102 as
anticipated by Lee et al., U.S. Patent Application No. 2007/0015055 A1,
January 18, 2007 (hereinafter “Lee”). Final Act. 2; Ans. 4.3
Rejection 2. Claims 4, 5, and 16 under 35 U.S.C. § 103 as obvious
over Lee in view of Michael M. Thackeray, et al., LiMnO3-stablized LiMO2
(M = Mn, Ni, Co) electrodes for lithium-ion batteries, 17 J. of Material
Chemistry 3112 (2007) (hereinafter “Thackeray”). Final Act. 4; Ans. 5–6.

2 In this opinion, we refer to the Final Office Action dated August 14, 2015
(“Final Act.”), the Appeal Brief filed January 29, 2016 (“Appeal Br.”), the
Examiner’s Answer dated June 8, 2016 (“Ans.”), and the Reply Brief filed
August 8, 2016 (“Reply Br.”).
3 As explained herein, it appears that the Examiner may not have intended to
reject claim 5 as anticipated by Lee.
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Rejection 3. Claims 1–3, 5, 8–15, 17, and 19 under 35 U.S.C. § 112
as being indefinite. Ans. 2.4
ANALYSIS
Rejection 3. Because the Examiner’s 35 U.S.C. § 112 rejection relates
to a claim construction issue pertinent to the prior art rejections addressed
below, we address the § 112 rejection first. During prosecution, rejection of
a patent claim may be maintained where the Examiner identifies how claim
language is “ambiguous, vague, incoherent, opaque, or otherwise unclear”
and the Appellant fails to provide a satisfactory response. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014).
Here, the Examiner states that “[t]he term ‘operating voltage’ [as it
appears in claims 1 and 11] has been interpreted to be an inherent property
of a material. . . .” Ans. 2. The Examiner states that the Specification
“seems to make clear that ‘operating voltage’ is an inherent property of a
material. . . .” Id. (citing Spec. ¶¶ 21–22). The Examiner states that the
argument in the Appeal Brief, however, indicates that Appellant considers
“operating voltage” to not be an inherent property of the material. Id. at 3.
The Examiner thus concludes the term is indefinite. Id.
Appellant responds that “operating voltage” is an inherent property of
the material. Reply Br. 2. Appellant states that “operating voltage of a
material is understood to be a voltage at which the material can reversibly
intercalate/deintercalate, which is an inherent property of the material and is
clearly described in the specification, as acknowledged by the Examiner.”
Id.

4 The Examiner also indicates that claim 7 is rejected, but Appellant states
that claim 7 was previously withdrawn. Appeal Br. 2. We do not consider
claim 7 on appeal.
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Appellant’s arguments in the Appeal Brief and in the Reply Brief are
fully consistent with the Specification, the recitations of claims 1 and 11,
and ordinary meaning of the claim language. That is, the term “operating
voltage” as recited in independent claims 1 and 11 is reasonably
characterized as an inherent property of the material. See Spec. ¶ 21
(referring to “operating voltage higher than lithium metal oxides” as a
property exhibited by various materials). Operating voltage generally refers
to the voltage at which a component or device normally operates. See, e.g.,
Operating Voltage, Oxford Living Dictionaries,
https://en.oxforddictionaries.com/ definition/operating_voltage (last visited
August 16, 2017) (defining “operating voltage” as “[t]he voltage at which an
electrical component or device is designed to operate or at which it normally
operates”). We adopt Appellant’s proposed construction quoted above
because it is consistent with this context and ordinary meaning—the
operating voltage of the material is a voltage at which the material can
function reversibly (i.e., without permanently damaging the material).
Because the claim language in context is not unclear, we do not sustain the
Examiner’s indefiniteness rejection.
Rejection 1, claims 1–3. 8–15, 17, and 19. The Examiner rejects
claims 1–5, 8–17, and 19 under 35 U.S.C. § 102(b) as anticipated by Lee.
Appellant does not separately argue claims 2–3, 8–15, 17, or 19. We
therefore limit our discussion to claim 1. Claims 2–3, 8–15, 17, or 19 stand
or fall with that claim. 37 C.F.R. § 41.37(c)(1)(iv) (2015). We address
claims 4, 5, and 16 separately.
The Examiner finds that Lee teaches a positive electrode with LiCoO2
corresponding to claim 1’s first electrode active material and spinel structure
LiCr0.1Mn0.9O2 corresponding to claim 1’s second electrode active material.
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Final Act. 2–3. The Examiner finds that the second electrode active material
of Lee has a higher operating voltage than the first material. Id.; see also
Ans. 6–8.
Appellant argues that Lee does not disclose the operating voltage of
its materials and that not every lithium oxide with a spinel structure will
have a higher operating voltage than the first electrode active material.
Appeal Br. 8–11; Reply Br. 3–4. The Examiner finds, however, that
Appellant’s Specification teaches that spinel structure LiCr0.1Mn0.9O2 would
have been expected to have higher operating voltage than the LiCoO2
electrode. Ans. 7–8 (citing Spec. ¶¶ 20–23). The preponderance of the
evidence supports this finding. In particular, the Specification states that
“[t]he overcharge protection additive may be chosen from among the many
materials known to exhibit an operating voltage higher than lithium metal
oxides commonly found in battery electrodes.” Spec. ¶ 21. The
Specification then provides examples of these “many materials” and
identifies spinels as an “exemplary class of overcharge protection
additives. . . .” Id. at ¶ 22. The Specification further identifies high-voltage
lithium manganese oxide spinels that may also include chromium as being
“[c]hief among” this exemplary class. Id. Appellant does not persuasively
rebut the Examiner’s finding or provide an argument as to why the
Examiner’s explanation of the Specification is incorrect.
Appellant also argues that Lee operates differently than the present
invention because Lee protects a battery from over-discharge rather than
overcharge. Appeal Br. 9–10. Claim 1, however, broadly recites two
cathode materials having recited characteristics. As explained above, a
preponderance of the evidence supports the Examiner’s findings that Lee
teaches such material. The Examiner is correct in stating that mere
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recognition of another advantage that would flow naturally from following
the prior art cannot be a basis for patentability. Ans. 7; see also Ex parte
Obiaya, 227 USPQ 58, *3 (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.”).
Appellant’s argument (Appeal Br. 9–10) that Lee teaches that its
spinel lithium manganese oxide does not have higher operating voltage than
the lithium cobalt oxide fails due to a lack of persuasive evidence.
Appellant cites only paragraph 22 of Lee as support. Appellant has not
adequately explained why paragraph 22 establishes the relative operating
voltage characteristics of the two materials. Moreover, we find that the
evidence cited by Appellant is unpersuasive when weighed against the
evidence in Appellant’s Specification as discussed above.
We sustain the Examiner’s rejection because Appellant’s arguments
do not identify reversible error.
Rejection 1, claims 4, 5, and 16. The Examiner states that the
rejection under 35 U.S.C. § 102(b) as anticipated by Lee also applies to
claims 4, 5, and 16 despite these three claims also being subject to the
obviousness rejection discussed below. Ans. 4.
With respect to claims 4 and 16, Appellant argues that “[t]he
Examiner acknowledged that Lee fails to disclose a ‘Li-rich layered oxide,’
as recited in claims 4 and 16.” Appeal Br. 12; see also Ans. 6 (“Lee does
not explicitly: refer to the additive as a ‘Li-rich layered oxide’”). The
Examiner does not respond to this argument, and, absent a response, the
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argument is reasonable. We therefore do not sustain the Examiner’s
anticipation rejection of claims 4 and 16.5
With respect to claim 5, the Examiner provides no explanation as to
how Lee teaches the recitations of claim 5. Rather, the Examiner states that
Lee does not explicitly “use the claimed formula in claim 5.” Ans. 6.
Instead, the Examiner rejects claim 5 as obvious over Lee in view of
Thackeray (as discussed below). It therefore appears that the Examiner’s
inclusion of claim 5 in the anticipation rejection was unintentional. In any
event, we do not sustain the anticipation rejection of claim 5.
Rejection 2. The Examiner rejects claims 4, 5, and 16 as obvious over
Lee in view of Thackeray. Final Act. 4; Ans. 5–6. Claims 4 and 5 provide
recitations further limiting the overcharge protection additive of claim 1.
Appeal Br. 16 (Claims App’x). Claim 16 similarly further limits the
overcharge protection additive of claim 11. Id. at 18.
The Examiner finds that Thackeray is from the same field of invention
as Lee. Ans. 6. The Examiner concludes that it would have been obvious to
use the material of Thackeray in Lee in order to enhance stability and
“cyclability.” Id.
Appellant argues that a person of ordinary skill would not seek to
modify Lee in order to enhance stability because Lee specifically requires
unstable lithium manganese oxides. Appeal Br. 12–13. Appellant identifies

5 We also note that claims 4 and 16 require that the overcharge protection
additive include (1) a Li-rich layered oxide, (2) a lithium oxide spinel, (3) an
olivine phosphate, and (4) combinations thereof. Appeal Br. 16, 18 (Claims
App’x). Although not argued by Appellant, the Examiner’s cursory
explanation of how Lee anticipates these two claims does not appear to
address how Lee teaches an additive including all four of these materials.
Ans. 4–5.
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evidentiary support for Appellant’s position that Lee seeks a phase transition
from a layered structure to a spinel structure and that Thackeray, in contrast,
leaves a layered structure intact. Id. at 13 (providing citations to Lee and
Thackeray). The Examiner does not respond to these arguments or this cited
evidence.
Because a preponderance of the evidence in the present record
supports Appellant’s position that a person of ordinary skill would not have
had reason to modify Lee by including the materials of Thackeray, we do
not sustain the Examiner’s obviousness rejection of claims 4, 5, and 16.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1–3, 8–15, 17, and 19 under 35 U.S.C. § 102(b) as anticipated by Lee. We
reverse the Examiner’s rejection of claims 4, 5, and 16 as anticipated by Lee,
and we reverse the rejection of claims 4, 5, and 16 as obvious over Lee in
view of Thackeray. We reverse the Examiner’s rejection of claims 1–3, 5,
8–15, 17, and 19 under 35 U.S.C. § 112
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART