PPG INDUSTRIES OHIO, INC.Download PDFPatent Trials and Appeals BoardMar 31, 20212020001968 (P.T.A.B. Mar. 31, 2021) Copy Citation 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. 15/638,448 06/30/2017 Randy E. Daughenbaugh 13009569A1 3007 24959 7590 03/31/2021 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER CULLEN, SEAN P ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): ipdocket@ppg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RANDY E. DAUGHENBAUGH, SHANTI SWARUP, STUART HELLRING, and ANTHONY CHASSER ____________ Appeal 2020-001968 Application 15/638,448 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals from the Examiner’s decision to reject claims 1–21 of Application 15/638,448. Final Act. (April 5, 2019). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm. In doing so, we rely upon reasoning that differs from the Examiner. We, therefore, designate our 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies PPG Industries Ohio, Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-001968 Application 15/638,448 2 affirmance as constituting a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). I. BACKGROUND The ’448 Application describes slurry compositions for use in manufacturing electrodes. Spec. ¶ 1. Electrodes for electrochemical cells are usually manufactured by coating a slurry of electrochemically active electrode material onto a current collector. Id. ¶ 2. The slurry typically comprises a mixture of an electrochemically active material and a binder material. Id. ¶ 3. Polyvinylidene fluoride (PVDF), which is conventionally dissolved in N-methyl-2-pyrrolidone (NMP), is said to have demonstrated excellent chemical and mechanical properties when used as a binder material. Id. NMP solvent, however, is a toxic material and presents undesirable health and environmental issues. Id. ¶ 6. The ’448 Application describes an electrode slurry, which uses a non- PVDF binder thereby avoiding use of toxic NMP solvent. Id. ¶¶ 6, 36, 45. According to the ’448 Application, the described slurry composition does not present adverse health and environmental effects. Id. ¶ 7. Electrodes manufactured from the described slurry compositions are said to have comparable or improved electrochemical performance, adhesive, and chemical resistance properties relative to those produced with NMP-based slurries. Id. Claim 1 is representative of the ’448 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A lithium ion battery electrode slurry composition comprising: (a) an electrochemically active material capable of lithium intercalation and deintercalation; Appeal 2020-001968 Application 15/638,448 3 (b) a binder dispersed in an aqueous or organic medium and comprising a reaction product of a reaction mixture comprising one or more epoxy functional polymer(s) and one or more acid functional acrylic polymer(s); and (c) an electrically conductive agent. Appeal Br. 11 (emphasis and pagination added). II. REJECTIONS On appeal, the Examiner maintains the following rejections:2 1. Claims 1–5 and 7–21 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Sonobe.3 Final Act. 4; Answer 3. 2. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Sonobe. Final Act. 9; Answer 3. III. DISCUSSION A. Rejection of claims 1–5 and 7–21 as anticipated by Sonobe Appellant argues for reversal of this rejection on the basis of limitations in independent claim 1. Appeal Br. 5–8. Independent claim 14 and dependent claims 2–5 and 7–21 are alleged to be patentable for the same reasons as independent claim 1. Id. at 8–9. We, therefore, limit our discussion to independent claim 1. 1. The Examiner’s rejection Appellant argues that the rejection of claim 1 should be reversed for either of two reasons. 2 The Examiner has withdrawn the rejection of claims 3–5 as indefinite under 35 U.S.C. § 112(b). Adv. Act. 1; Answer 3. 3 US 2016/0118664 A1, published April 28, 2016. Appeal 2020-001968 Application 15/638,448 4 First, Appellant argues that the slurry composition subject matter of claim 1 requires a reaction product. Id. at 7. In particular, Appellant argues that one skilled in the art would understand from reading claim 1 in light of the Specification “that the epoxy functional polymer and the acid functional acrylic polymer serve as reactants in the reaction mixture . . . and would yield a reaction product.” Id. (citing Spec. ¶¶ 15, 16); Reply Br. 4–5. The Examiner, however, disputes Appellant’s interpretation of claim 1. Final Act. 4–5. The Examiner’s construction is based on the premise that “[t]he phrase ‘comprising . . . epoxy functional polymers and . . . acid functional acrylic polymers’ can be interpreted as limiting the phrase ‘a reaction product’ or ‘a reaction mixture.’” Id. at 5 (emphasis added). Regardless of which phrase is limited, the Examiner concludes that claim 1 does not require that “epoxy functional polymers and . . . acid functional acrylic polymers react and form a reaction product.” Id. (citing Spec. ¶¶ 18, 66). We determine that the Examiner’s claim construction of the term “a reaction product of a reaction mixture” is incorrect because it is inconsistent with the claim’s language and the ’448 Application’s Specification. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (“The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is consistent with the specification.” (internal quotation omitted)). Appeal 2020-001968 Application 15/638,448 5 Based upon our review of the claim language and ’448 Application’s Specification, the correct construction interprets the phrase “comprising . . . epoxy functional polymers and . . . acid functional acrylic polymers” as limiting the phrase “a reaction mixture.” The Specification supports this interpretation. See also Reply Br. 5. The Specification describes that “[t]he binder is often prepared from a mixture of polymers comprising . . . epoxy functional polymer(s) and . . . acid functional acrylic polymer(s).” Spec. ¶ 16 (emphasis added). One of skill in the art would recognize that the Specification describes forming the reaction product “by chain extending . . . acid-functional acrylic polymer(s) with . . . epoxy-functional material(s) that contain functional groups, which are reactive with the acid functionality of the acrylic polymer.” Id. (emphasis added); see also id. ¶ 15. Second, Appellant argues that Sonobe does not describe or suggest every limitation in independent claim 1. Appeal Br. 5–7. There is no dispute that Sonobe’s negative electrode slurry composition may contain the claimed acid and epoxy functional materials as separate components. Id. at 5; Reply Br. 4; Final Act. 4. Appellant, however, contends that Sonobe neither discloses nor suggests “a slurry that contains a reaction product of a reaction mixture comprising . . . epoxy functional polymers and . . . acid functional acrylic polymers.” Appeal Br. 5. In rejecting claim 1, the Examiner found that Sonobe’s acid and epoxy functional polymers “are reaction products” because a “polymer is formed from a polymerization, which is a reaction.” Answer 6. In view of the Examiner’s incorrect claim construction of the term “a reaction product of a reaction mixture,” this finding is erroneous. We agree with Appellant that “[o]ne skilled in the art, knowing that epoxy functional groups may be reacted with acid functional groups, upon reading the Appeal 2020-001968 Application 15/638,448 6 language in instant claim 1, would understand that the respective polymers are reactants in the reaction mixture.” Reply Br. 4–5 (emphasis added). Therefore, we do not affirm the rejection of claim 1 on the basis set forth by the Examiner. 2. New ground of rejection We affirm the rejection because we determine that the limitation at issue, which requires a “slurry composition comprising . . . a reaction product of a reaction mixture” is insufficient to confer patentability upon the subject matter of claim 1 for the following reasons. A prima facie case of anticipation under 35 U.S.C. § 102 is established by showing that the elements found to be inherently present must necessarily be present in or result from the prior art. In re Montgomery, 677 F.3d 1375, 1379‒80 (Fed. Cir. 2012) (“A reference may anticipate inherently if a claim limitation that is not expressly disclosed ‘is necessarily present, or inherent, in the single anticipating reference.’”) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). A reference can be regarded as prior art that describes a composition or structure as being an intermediate product. In re Mullin, 481 F.2d 1333, 1335 (CCPA 1973) (citing In re Herbert, 461 F.2d 1390, 1394 (CCPA 1972)). Appellant argues that “one skilled in the art would not expect the acid functional materials and epoxy functional materials in [Sonobe’s] slurry . . . to react and form a reaction product until after heating and drying of the slurry.” See Appeal Br. 6 (emphasis added) (citing named inventor Mr. Shanti Swarup’s Rule 132 Declaration (filed July 2, 2019); Spec. ¶¶ 162, 195, 196). According to Appellant, “after heating and drying, [Sonobe’s] Appeal 2020-001968 Application 15/638,448 7 slurry no longer exists because the liquids have evaporated and all that remains is the cross-linked structure forming the electrode.” Appeal Br. 6. We are not persuaded by these arguments because evaporation of liquids in Sonobe’s slurry and formation of a cross-linked structure therein is not instantaneous. Rather, Sonobe describes heating an aqueous slurry over a time span to form a sufficiently cross-linked product. See Sonobe ¶ 201 (describing that “[w]hen the slurry composition is dried, the heat applied promotes the cross[-]linking reaction.”); id. ¶ 203 (disclosing heating the aqueous slurry “for about 1 hour or more but 20 hours or less at 80oC. or higher but 160°C. or lower” to obtain “an even more sufficient cross-linked structure.”); id. ¶¶ 271, 272 (describing that a “copper foil coated with the slurry composition for a secondary-battery negative electrode” was heat dried and “for the purpose of further promoting water removal and cross- linking, the web was left for 10 hours in an environment of a vacuum at 120° C.”) (emphasis added). Thus, Sonobe’s extended heating steps necessarily results in an intermediate slurry product comprising cross-linked reaction product, before liquids have fully evaporated. See Mullin, 481 F.2d at 1335. Likewise, the ’448 Application’s Specification describes forming reaction product by heating an aqueous slurry over similar durations and temperature ranges. See Spec. ¶ 51 (describing “applying [a] slurry to the surface of a suitable current collector to form a coating, and curing the coating by subjecting the coated current collector to conditions for a time sufficient to allow reactive components in the coating to react and form a hardened film.”); id. ¶¶ 52, 53 (crosslinking a slurry coating, which has been applied to the current collector, for 10–60 minutes at 50–150oC.). Appeal 2020-001968 Application 15/638,448 8 To the extent the Specification’s described heating parameters provide support for the claimed “slurry composition comprising . . . a reaction product of a reaction mixture,” Sonobe discloses a substantially similar slurry heat treatment, which necessarily results in an intermediate product that anticipates claim 1. For the foregoing reasons, we affirm the Examiner’s rejection of claim 1. Accordingly, we also affirm the rejection of claims 2–5 and 7–21. Because our affirmance relies upon reasoning that differs from that of the Examiner, we designate it as constituting a new ground of rejection pursuant to 37 CFR § 41.50(b). B. Rejection of claim 6 as obvious over Sonobe Dependent claim 6 reads: 6. The electrode slurry composition of claim 1, wherein the reaction mixture comprises at least 70 percent by weight of the one or more epoxy functional polymer(s) and up to 30 percent by weight of the one or more acid functional acrylic polymer(s), wherein the percentages by weight are based on the total weight of the reaction product. Appeal Br. 11. Appellant presents the same argument for reversal of this rejection that was presented in arguing for reversal of the rejection of claim 1. See id. at 8–9. As discussed above, we have affirmed that rejection, designating our affirmance as setting forth a new ground of rejection. Accordingly, we also affirm the rejection of claim 6 as obvious over Sonobe and designate our affirmance as a new ground of rejection. Appeal 2020-001968 Application 15/638,448 9 IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–5, 7–21 102(a)(1) Sonobe 1–5, 7–21 1–5, 7–21 6 103 Sonobe 6 6 Overall Outcome 1–21 1–21 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation