Ex Parte Menke et alDownload PDFPatent Trial and Appeal BoardJul 22, 201612396223 (P.T.A.B. Jul. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/396,223 0310212009 Erik Menke 63796 7590 07/26/2016 DINSMORE & SHOHL LLP P.O. BOX 7021 TROY, MI 48007-7021 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. TTC-39203/08ksm 5894 EXAMINER DOUYETTE, KENNETH J ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 07/26/2016 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): docket@patlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK MENKE, GRANT UMEDA, BRUCE DUNN, FRED WUDL, MONIQUE N. RICHARD, and KIMBERL. STAMM Appeal2014-005812 Application 12/396,223 Technology Center 1700 Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and WESLEY B. DERRICK, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C. § 134(a) from a final decision of the Primary Examiner to reject claims 1 and 3-25.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 The Appellants state that the real parties in interest are: (1) "Toyota Motor Engineering & Manufacturing North America, Inc."; and (2) "The Regents of the University of California" (Appeal Brief filed January 10, 2014, hereinafter "Appeal Br.," 2). 2 Appeal Br. 2; Final Office Action entered August 7, 2013, hereinafter "Final Act.," 1. Appeal2014-005812 Application 12/396,223 We affirm. BACKGROUND The subject application is a continuation-in-part of Application 11/457,525 filed July 14, 2006 (hereinafter "'525 Application"), which is also on appeal (Appeal 2014-005762) (Appeal Br. 2). We heard consolidated arguments for both appeals on July 12, 2016. 3 The subject matter on appeal relates to an anode including a chemically-bonded protective layer formed by reacting a Dor P block precursor, 4 an oxygen-containing layer, and an additional oxygen-containing species (Specification, hereinafter "Spec.," i-fi-1 5, 31 ). Representative claim 1 is reproduced from page 26 of the Appeal Brief (Claims Appendix), with the disputed limitation highlighted in italics, as follows: 1. An anode for an electrochemical cell comprising: a metal material having an oxygen containing layer; a D or P block precursor; and an additional oxygen containing species wherein the oxygen layer, D or P block precursor and additional oxygen containing species form a chemical bond to define a protective layer wherein the protective layer is not chemically bound to the metal material. THE REJECTIONS The Examiner rejected the claims as follows: 3 A written transcript of the oral arguments will be entered into the application's electronic record when it is made available. 4 According to the Appellants, "[t]he term Dor P block precursor includes compounds that have elements in the D or P block of the periodic table," which "include phosphorus, boron, silicon, titanium, molybdenum, tantalum, vanadium to name a few" (Spec. i120). 2 Appeal2014-005812 Application 12/396,223 I. Claims 1, 3-5, and 22 under 35 U.S.C. § 102(b) as anticipated by De Jonghe et al. (hereinafter "De Jonghe"); 5 II. Claims 1, 4, 5, and 22 under 35 U.S.C. § 102(b) as anticipated by Krasnov et al. (hereinafter "Krasnov"); 6 III. Claims 6-16, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over De Jonghe in view ofUckert et al. (hereinafter "U ckert"); 7 IV. Claims 17-21 and 25 under 35 U.S.C. § 103(a) as unpatentable over De Jonghe in view of Kitano et al. (hereinafter "Kitano");8 and V. Claims 1 and 3-25 provisionally under the judicially- created doctrine of obviousness-type double patenting over claims 1-20 of the '525 Application. (See Examiner's Answer entered February 14, 2014, hereinafter "Ans.," 2- 21; Final Act. 2-18.) DISCUSSION We address Rejections I-V below, but not necessarily in the same order as presented by the Examiner and the Appellants. Claims 1 & 3-25: Obviousness-Type Double Patenting (Rejection V) The Appellants state merely that they "will file a terminal disclaimer should any claims be allowed" (Appeal Br. 24). Because the Appellants 5 US 6,911,280 Bl issued June 28, 2005. 6 US 2002/0028384 Al published March 7, 2002. 7 US 2004/0186255 Al published September 23, 2004. 8 US 2003/0211358 Al published November 13, 2003. 3 Appeal2014-005812 Application 12/396,223 offer no substantive argument against the merits of the rejection or direct our attention to an entered terminal disclaimer, we summarily affirm the Examiner's rejection. Cf Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008). Claims 1, 3-5, & 22: Anticipation over De Jonghe (Rejection I) The Appellants rely on the same arguments for claims 1, 3-5, and 22 (Appeal Br. 8-14). Therefore, we confine our decision to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). By this rule, claims 3-5 and 22 stand or fall with claim 1. The Examiner found, inter alia, that De Jonghe's Figure 1 discloses an anode 10 including a protective layer 18 that is made by a different process but is nonetheless indistinguishable from the Appellants' protective layer (Ans. 2-3). The Examiner found that the limitation "wherein the oxygen layer [on the metal material], Dor P block precursor and additional oxygen containing species form a chemical bond to define a protective layer" in claim 1 is a product-by-process type limitation that fails to differentiate the claimed finally-produced anode9 over De Jonghe's anode (id.; see also id. at 11-12). Specifically, the Examiner explained that "since the metal with a protective layer as recited in claim 1 is the same as the metal with a protective layer disclosed by [De Jonghe], the claim is unpatentable even though the metal with a protection layer of [De Jonghe] was made by a different process" (id. at 3) (citing, e.g., In re Thorpe, 777 F.2d 695, 697 (Fed Cir. 1985)). 9 At oral argument (Hearing held July 12, 2016), the Appellants' counsel clarified that the claims read on a finally-produced anode. 4 Appeal2014-005812 Application 12/396,223 The Appellants contend that De Jonghe "does not teach a protection layer including a combination of the D or P block precursor bonded with an oxygen containing layer and an additional oxygen containing species" because "[t]here is no oxygen layer on the metal, [and ]in fact such a reaction is specifically taught away from in the reference" (Appeal Br. 11) (citing De Jonghe col. 7, 11. 62-67). According to the Appellants, "[i]f an oxygen containing layer were present, the metal would not be able to react with the phosphoric acid" disclosed in De Jonghe and, therefore, "there is no description of the combination of a D or P block precursor chemically bonded with an oxygen layer and an additional oxygen species" (Appeal Br. 12). The Appellants further contend that the disputed limitation is not a product-by-process limitation and that, even if it were considered as such, the Examiner failed to consider the structure implied by the limitation (id. at 13). The Appellants' arguments fail to reveal any reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). As acknowledged by the Appellants (Appeal Br. 11), De Jonghe describes forming lithium phosphate by reacting a lithium surface with anhydrous phosphoric acid in a suitable organic solvent (col. 6, 11. 41--44; see also Example 1 at col. 12, 11. 43--48). Because De Jonghe teaches that a lithium phosphate is formed, it would reasonably appear that De Jonghe's finally-produced anode would have a protective layer having Li-0- bonds as would be the case for the protective layer recited in claim 1 in which a metal, such as lithium, having an oxygen-containing layer (i.e., an oxygen- containing layer that is the reaction product of lithium metal with oxygen including the recited additional oxygen containing species) is reacted with 5 Appeal2014-005812 Application 12/396,223 any Dor P block precursor to form a final anode having Li-0- bonds. The Appellants fail to direct us to submitted evidence or technical reasoning establishing that the lithium phosphate structure disclosed in De Jonghe cannot be produced by reacting a lithium surface including an oxygen- containing layer having unreacted metal reaction sites with (i) a suitable D or P block precursor compound and (ii) additional oxygen-containing species under suitable conditions, as recited in claim 1. Here, the Appellants do not assert positively, much less demonstrate, that the scope of reaction products resulting from a lithium including an oxygen-containing layer, a D or P block precursor, and an additional oxygen-containing species, as broadly recited in claim 1, would not include lithium phosphate described in De Jonghe. Thorpe, 777 F.2d at 696----697 (affirming the Board's decision to uphold an examiner's rejection of claims to a product made using zinc oxide and benzoic acid as starting materials over a prior art product made by using zinc dibenzoate ). For these reasons, we uphold the Examiner's rejection. Claims 6--16, 23, & 24: Obviousness over De Jonghe & Uckert (Rejection III) The Appellants argue claims 6-16, 23, and 24 together (Appeal Br. 18-23). Therefore, we confine our discussion to claim 6, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). Claims 7-16, 23, and 24 stand or fall with claim 6. Claim 6 recites (Appeal Br. 26): 6. The anode of claim 1 wherein the D or P block precursor comprises a chemical compound of the formula: AR1R2X wherein A is selected from phosphorous or boron, Xis a halogen or halogen containing compound and R1 is selected from halogens, alkyl groups having from 1 to 20 carbons, alkoxy 6 Appeal2014-005812 Application 12/396,223 groups containing 1 to 20 carbons, or aromatic groups having from 1 to 20 carbons, R2 is selected from halogens, alkyl groups having from 1 to 20 carbons, alkoxy groups containing 1 to 20 carbons, or aromatic groups having from 1 to 20 carbons. Regarding claim 6, the Examiner pointed out that, as is the case for claim 1, "in the final product, the precursor and additional oxygen containing species is [sic] chemically not present as a 'precursor', [but] rather it is changed into a 'protective layer' derived from oxygen and a Dor P block precursor" (Ans. 20). The Appellants contend that "[t]here is no disclosure in the [De Jonghe] reference of an oxygen containing layer or additional oxygen containing species except to state that such a layer is to be avoided" (Appeal Br. 21 ), pointing out that claim 6 recites a particular D or P block precursor (id. at 21-22). The Appellants further point out that Uckert describes fluorine derivative polymers and "there is no description [in Uckert] of the formula of claims 6 or 12" (id. at 22). Again, the Appellants' arguments fail to identify a reversible error in the Examiner's rejection of claim 6. Even assuming that neither De Jonghe nor Uckert describes the Dor P block precursor specified in claim 6, the Appellants offer no specific discussion, evidence, or technical reasoning explaining how the finally-produced protective layers of the Appellants' claim and the prior art differ patentably based on a difference in the starting reactants used. Thorpe, 777 F .2d at 696-697. Therefore, we uphold the Examiner's rejection of claim 6. 7 Appeal2014-005812 Application 12/396,223 Claims j 7-2 j & 25: Obviousness over De Jonghe & Kitano (Rejection IV) The Appellants argue claims 17-21 and 25 together (Appeal Br. 23- 24), and, therefore, we confine our discussion to claim 17, which recites a specific silicon compound as the Dor P block precursor (id. at 29). The Examiner's reasoning with respect to claim 17 is similar to that provided for claims 1 and 6 (Ans. 12-13, 20-21). The Appellants point out that Kitano discloses a polymer including repeating units of a silane that includes functional groups with a nitrogen bonded thereon but that "[t]here is no teaching that the polymer may be utilized as a protective material" (Appeal Br. 24). According to the Appellants, "[t]he addition of the Kitano reference does not solve the deficiencies" of De Jonghe (id. at 24). As pointed out by the Examiner (Ans. 21), however, Kitano's polymers form a protective layer between the anode and the cathode (Kitano i-f 172). The Appellants fail to address the Examiner's reasoning (Ans. 21) that it would have been obvious to incorporate Kitano's materials into the protective material structure of De Jonghe. Moreover, De Jonghe describes silicates as the protective layer (col. 5, 11. 60-65). The Appellants offer no specific discussion, evidence, or technical reasoning explaining how the finally-produced protective layers of the Appellants' claim and De Jonghe differ patentably based on a difference in the use of different starting materials to make the finally-produced anode. Thorpe, 777 F .2d at 696----697. 8 Appeal2014-005812 Application 12/396,223 Claims j, 4, 5, & 22: Anticipation over Krasnov (Rejection 11) Again, the Appellants argue claims 1, 4, 5, and 22 together (Appeal Br. 14--18), and, therefore, pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we confine our discussion to claim 1. The Examiner's findings and reasoning in support of the rejection based on Krasnov are similar to those in support of the rejection based on De Jonghe (Ans. 6-8). Specifically, the Examiner relied on Krasnov's paragraph 27, which teaches various protective layers such as lithium phosphorous oxynitride. The Appellants offer arguments that are analogous to those offered in support of the other anticipation rejections (Appeal Br. 14--18). Therefore, we uphold Rejection II based on the same or similar reasoning given for Rejection I. Specifically, Krasnov describes an anode with a lithium phosphorus oxynitride protective layer (Fig. 2; i-f 27). The Appellants fail to direct us to evidence or technical reasoning establishing that Krasnov's lithium phosphorus oxynitride could not be produced by reacting a lithium with an oxygen-containing layer, a Dor P block precursor compound, and an additional oxygen-containing species. SUMMARY Rejections I-V are affirmed. Therefore, the Examiner's decision to reject claims 1 and 3-25 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)(l). AFFIRMED 9 Copy with citationCopy as parenthetical citation