Ex Parte Manthiram et al

Patent Trial and Appeal Board

Jun 18, 2018

13967129 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/967, 129 08/14/2013
31625 7590 06/20/2018
BAKER BOTTS L.L.P.
PA TENT DEPARTMENT
98 SAN JACINTO BL VD., SUITE 1500
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
Arumugam Manthiram
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.
065715.0398 1664
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
tracy .engberg@bakerbotts.com
juli. tran@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARUMUGAM MANTHIRAM and
EUN SUNG LEE
Appeal2017-008652
Application 13/967,129
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and LILAN
REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision to reject claims 1--4, 6-13, 15-18, and 20 under 35
1 In explaining our Decision, we cite to the Final Office Action of June 20,
2016 (Final), the Advisory Action of August 30, 2016, the Appeal Brief of
November 21, 2016 (Br.), and the Examiner's Answer of December 22,
2016 (Ans.).
2 Appellants identify the real party in interest as Board of Regents, the
University of Texas System. Br. 3.
Appeal2017-008652
Application 13/967,129
U.S.C. § 103 as obvious over Sun. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a cathode (see, e.g., claim 1), a
rechargeable battery comprising the cathode (see, e.g., claim 6), and an
automotive battery (see, e.g., claim 16). All the claims require the cathode
to be material of an electrochemically active lithium-rich layered oxide.
Claim 1 is illustrative:
1. A cathode comprising an electrochemically active
lithium-rich layered oxide having the general formula
Lic1.33-o.67x-y)Mnco.67-o.sz-o.33x)Nicx-o.sz+2y)Mcz-y)02,
wherein Mis cobalt (Co), chromium (Cr), or any
combination thereof,
wherein, with respect to the amount of Li, 1 < (l.33-
0.67x-y) <1.2,
wherein, with respect to the amount of Mn, 0.5 < (0.67-
0.5z-0.33x) < 0.6,
wherein, with respect to the amount of Ni, 0.2 < (x-
0.5z+2y) < 0.5, and
wherein, with respect to the amount of M, 0 < (z-y) <
0.13, and
wherein, when placed in a rechargeable battery, the
cathode exhibits less voltage decay after 10 cycles than a
3 Sun et al., Preparation and electrochemical properties of Li COOL
LiNio.sMno.sOLLi2Mn03 solid solutions with high Mn contents
Electrochimica Acta 51 (2006) 5581-5586.
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Application 13/967,129
cathode in an otherwise identical battery containing a lithium-
rich layered oxide with less or no cobalt.
Br. 12 ( claims appendix).
OPINION
As no claim is argued apart from the others, we select claim 1 as
representative for resolving the issue on appeal.
There is no dispute on this appeal record that Sun teaches "a cathode
comprising an electrochemically active lithium-rich layered oxide having the
general formula LiwNixCoyMnz02, with high Mn content and very low cobalt
content" as found by the Examiner. Compare Final 3, with Br. 7-11. The
Examiner points to "compositions in table 1 and 2" and, specifically, to a
composition found in Sun's Table 2, i.e., Li1.13Nio.2s6Coo.os7Mno.s2302, as an
example of a composition meeting the requirements of the claim. Final 3.
This example includes Li, Ni, Co, Mn, and O within the amounts recited in
the wherein clauses of claim 1. With respect to the general formula recited
in the claim, i.e., Lic1.33-o.67x-y)Mnco.67-o.sz-o.33x)Nicx-o.sz+2y)Mcz-y)02, the Examiner
states that "it is well settled that there is no invention in the discovery of a
general formula if it covers a composition described in the prior art." Final
4. The Examiner determines that "[t]he ranges for the general formula
disclosed by the prior art, as well as the specific examples overlap the
claimed range in a manner which provides a prim a facie case of
obviousness." Id.
In the Final Office Action, the Examiner responded to an argument by
Appellants by stating:
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Application 13/967,129
Applicant's arguments have been considered but are not
persuasive. Specifically, applicant argues that some of the
examples disclosed by the prior art fall out of the claimed range
for the nickel or cobalt components. However, the fact that
some of the components in some of the examples of the prior
art do not fall within the claimed ranges is immaterial as the
prior art teaches some examples where all of the components
fall within the claimed range, as exemplified in the rejection
above. Additionally, the examiner notes that the variables X,
Y, and Z in the independent claim are not defined and may
include negative numbers (so long as the compositions of the
components remains with the claimed range) such that they are
not taken to further distinguish the claimed ranges from the
prior art.
Final 5.
Appellants contend that the Examiner is arguing that "the subscripts
designating relative amounts of chemical elements in the claimed general
formula, x, y, and z, are not individually defined and therefore the relative
amounts of the chemical elements cannot be determined." Br. 7-8
(emphasis added). But, this is not the Examiner's point. The Examiner's
point is that the inequalities of the wherein clauses define ranges of amounts
of the elements, which ranges are rendered prima facie obvious on the basis
of overlap with the prior art, and that the variables x, y, z, defining amounts
of the elements within the ranges defined by the inequalities, do not provide
any patentable distinction. In the Advisory Action, the Examiner explained:
Specifically, first applicant argues that the Examiner's
assertion that x, y and z are not defined is not true. In the
response to arguments of the previous office action the
Examiner was trying to note that x, y and z are not individually
defined, of course the inequalities of the claims must be met by
the prior art ( and they are as the for the amounts of Li, Mn, Ni
and M), however the claims do not preclude the variables x, y
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Application 13/967,129
and z from being negative or irrational numbers such that the
inequalities may be met with unintended combinations and the
relative values of x, y and z are not taken to further limit the
claims. Furthermore, it is well settled that there is no invention
in the discovery of a general formula if it covers a composition
described in the prior art, In re Cooper and Foley 1943 C. D.
357, 553 O.G. 177; 57 USPQ 117, Taklatwalla v. Marburg, 620
O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44
F(2) 878, 1931 C.D. 75.
Advisory (Continuation of,I 12).
We agree that Appellants have failed to establish reversible error in
the Examiner's rejection. The Examiner has determined, inter alia, that the
claimed ranges are prima facie obvious over the prior art, including the
particular composition Li1.13Nio.2s6Coo.os7Mno.s2302. While Appellants
contend the Examiner has erred, arguing that variables x, y, and z are neither
indeterminate, nor open to being negative numbers (Appeal Br. 7-10), they
offer no cogent argument that the disclosed ranges do not overlap with, and
that particular compositions do not fall within, the claimed ranges (see
generally id.). There is, for example, neither any argument explaining how
the disclosed ranges do not overlap, nor how the particular composition
Li1.13Nio.2s6Coo.os7Mno.s2302 is not a composition according to claim 1. Thus,
on this record, Appellants have not identified a reversible error in the
Examiner's finding that Sun teaches oxides, such as
Li1.13Nio.2s6Coo.os7Mno.s2302, meeting the compositional requirements of
claim 1.
Appellants further contend that the Examiner erred in finding Sun's
material would have the voltage decay property of the last wherein clause of
claim 1. Br. 10-11.
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Application 13/967,129
The last clause of claim 1 recites "wherein, when placed in a
rechargeable battery, the cathode exhibits less voltage decay after 10 cycles
than a cathode in an otherwise identical battery containing a lithium-rich
layered oxide with less or no cobalt." In the Advisory Action, the Examiner
interprets this clause as "comparing the claimed composition to an arbitrary
battery with less or no cobalt." Advisory (Continuation of 12). In other
words, the limitation is analogous to a method of comparative testing
inventive cathodes against non-inventive cathodes and limits the cathodes of
the claim to those meeting the voltage decay property obtained by that
testing.
With regard to this voltage decay property, the Examiner finds "the
prior art teaches a composition which is indistinguishable from the claimed
composition," and, thus, "the material properties of the prior are taken to be
indistinguishable from that of the claim." Advisory (Continuation of 12).
"[A] compound and all of its properties are inseparable." In re Papesch, 315
F.2d 381,391 (CCPA 1963). Thus, a preponderance of the evidence
supports the Examiner's finding that oxides of Sun meeting the
compositional requirements of claim 1, such as Li1.13Nio.2s6Coo.os7Mno.s2302,
would have the voltage decay property recited in claim 1. The evidence is
strong enough to shift the burden to show that, in fact, Sun does not teach a
compound having the required property. Appellants do not provide any
evidence showing that, in fact, Li1.13Nio.2s6Coo.os7Mno.s2302 does not have the
voltage decay required by claim 1.
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Application 13/967,129
In summary:
1--4, 6-13, § 103
15-18, 20
Summary
CONCLUSION
Sun
DECISION
The Examiner's decision is affirmed.
1--4, 6-13,
15-18, 20
1--4, 6-13,
15-18, 20
TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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