PPG INDUSTRIES OHIO, INC.

Patent Trials and Appeals Board

Mar 31, 2021

2020001968 (P.T.A.B. Mar. 31, 2021)

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)