Altaimano, Inc.

Patent Trials and Appeals Board

Apr 1, 2020

14398682 - (D) (P.T.A.B. Apr. 1, 2020)

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.
14/398,682 11/03/2014 Mike Coleman ALTAIR-PES018US 3793
42640 7590 04/01/2020
Yudell Isidore PLLC
5145 RR 620N, Ste F110
Austin, TX 78732
EXAMINER
SIDDIQUEE, MUHAMMAD S
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
Patents@yudellisidore.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIKE COLEMAN and VESELIN MANEV
____________________

Appeal 2019-001915
Application 14/398,682
Technology Center 1700
____________________

Before N. WHITNEY WILSON, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
January 22, 2018 decision finally rejecting claims 1–5 and 8–37 (“Final
Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An
oral hearing was held on March 9, 2020. A transcript of that hearing will be
part of the record.
We affirm, but designate the affirmance as a new ground of rejection.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies AltairNano as the real party in interest
(Appeal Br. 3).
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Application 14/398,682

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to improvements in lithium ion cell
performance as a result of selection of specific formulation of electrolyte for
lithium ion cells (Abstract). In particular, the claims recite lithium ion
battery cells and electrolytes for such cells where the electrolyte is composed
of at least one cyclic ester and at least one linear ester and one or more
lithium salts where the lithium salt concentration exceeds the lithium salt
concentration corresponding to maximum electrolyte ionic conductivity
(Appeal Br. 3).2 Increasing the concentration of the lithium salt in the
electrolyte beyond the optimal salt concentration is said to lead to an
increase in cell capacity, improvement in capacity retention, increase the cell
rate capability and increase in cell mean and discharge voltages (id.).
Details of the claimed invention are set forth in representative claims 1 and
11, which are reproduced below from the Claims Appendix to the Appeal
Brief (emphasis added):
1. An electrolyte for a lithium ion battery with a Li4Ti5O12
compound as a negative electrode comprising at least one cyclic
ester and at least one linear ester and a lithium salt wherein the
lithium salt concentration exceeds the lithium salt concentration
corresponding to maximum electrolyte ionic conductivity.
11. The lithium ion cell comprising at least one Li4Ti5O12
compound as a negative electrode and at least one lithiated
transition metal oxide or lithiated transition metal phosphate as
positive electrode, a separator and a non-aqueous electrolyte
comprising a LiPF6 salt dissolved in a mixture of ethylene

2 We note that pages of the Appeal Brief were not numbered. The page
numbers of the Appeal Brief referenced herein are based on the page with
the case caption being assigned page number 1.
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carbonate and ethyl methyl carbonate solvents wherein the
concentration of the said LiPF6 salt is equal or higher than 1.4 M.

REJECTIONS
1. Claims 1–5 and 11–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wagner.3
2. Claims 8–10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wagner in view of Xiao.4
3. Claims 15, 16, 18–25, 31, and 32 are rejected under
35 U.S.C. § 103(a) as unpatentable over Wagner in view of Xiao.
4. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wagner in view of Xiao, and further in view of Ahn.5
5. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wagner in view of Xiao, and further in view of Lee.6
6. Claims 28 and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wagner in view of Xiao, and further in view of Gao.7
7. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wagner in view of Inagaki.8

3 Wagner, WO 2011/043934 A2, published April 14, 2011. Appellant and
the Examiner – and the Board – make reference to the US counterpart
publication – US 2012/0172613 A1, published July 5, 2012.
4 Xiao et al., US 2006/0147808 A1, published July 6, 2006.
5 Ahn et al., US 2007/0092802 A1, published April 26, 2007.
6 Lee et al., US 2011/0195308 A1, published August 11, 2011.
7 Gao et al., US 2011/0236299 A1, published September 29, 2011.
8 Inagaki et al., US 2007/0009798 A1, published January 11, 2007.
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6. Claims 33–37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wagner in view of Xiao and Abe.9

DISCUSSION
Appellant does not dispute that Wagner discloses electrolytes and
lithium ion cells which contain the claimed components in amounts which
either encompass or overlap the claimed ranges (Appeal Br. 11). However,
Appellant maintains that the ranges set forth in its claims are critical, and
impart patentability to the claims (id.). Appellant summarizes its argument
seeking reversal of the obviousness rejections as follows:
The Appellants have, in fact, demonstrated throughout the
specification, in particular the Examples and Figures, that the
range of salt is a critical feature of the instantly claimed
formulations (see, e.g., MPEP § 2144.05(11)(A) (“Generally,
differences in concentration or temperature will not support the
patentability of subject matter encompassed by the prior art unless
there is evidence indicating such concentration or temperature is
critical.”) As previously cited, the range of 1.0- 1.2 M LiPF6 salt
is the industry standard for maximum conductance in the cell
electrolyte. Surprisingly, however, a higher concentration of the
lithium salt (e.g. LiPF6 salt) in the electrolyte solution results in a
better cell rate capability than cells activated with electrolyte with
LiPF6 salt concentration corresponding to its maximum ionic
conductivity of about lM. Wagner does not indicate that the range
of the Li salt is critical and relates to being above the optimal salt
concentration. The range disclosed in Wagner would not work in
the compositions of the present invention. Wagner discloses that
the lithium salt can be in the range of 0.5 moles/liter to 3.0
moles/liter. In the present invention the lithium salt concentration
must exceed the lithium salt concentration corresponding to
maximum electrolyte ionic conductivity.

9 Abe et al., US 2004/0013946 A1, published January 22, 2004.
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(Appeal Br. 11–12). Appellant argues that the prior art did not teach or
suggest the high concentration of LiPF6 recited in the claims, and that data
presented in the Specification shows that this high concentration of the
lithium salt “beyond the maximum electrolyte ionic conductivity leads to the
improvement of rate capability, maximizes cell capacity, increases cell
charge and discharge voltage and improves capacity retention.” (Appeal Br.
12).
It is well established that Appellant has the burden of showing
unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The burden requires
Appellant to proffer factual evidence that actually shows unexpected results
relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope
with the protection sought, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir.
1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453
F.2d 764, 786 (CCPA 1972). The extent of the showing relied upon by
Appellant must reasonably support the entire scope of the claims at
issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
In this instance, claim 1 covers a very wide range of possible
compounds in the electrolyte, as well as any possible compound as the
positive electrode, and any lithium salt (Spec. ¶¶ 19 (lithium salts), 22
(solvents). However, the data relied on by Appellant is limited to batteries
which use ethylene carbonate (EC) and ethyl methyl carbonate (EMC) as
their solvents, LiPF6 as the lithium salt, and one example also uses 1,3-
propane sultone as an additive (Spec. ¶¶ 8–12) . Thus, the examples and
data relied upon by Appellant do not account for the myriad of possible
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compositions which would fall within the limitations of claim 1, in particular
the use of different solvents, different positive electrodes, and different
lithium ions. Accordingly, even if the showing were otherwise sufficient to
overcome the prima facie of obviousness – a question we need not and do
not reach – it is not commensurate in scope with claim 1. Accordingly,
Appellant has not demonstrated reversible error in the rejection of claim 1.
With regards to the remaining independent claims, as noted by the
Examiner (Ans. 14), Appellant only explicitly argues against claim 1 (see
Appeal Br. 8). However, Appellant does make arguments specific to some
of the additional limitations set forth in the other independent claims, such as
the use of LiPF6 as the lithium ion, the use of an EC/EMC solvent mixture,
and the use of sultones as an additional additive. Therefore, while it might
be appropriate to conclude that Appellant waived its arguments with respect
to claims other than claim 1, we need not reach such a conclusion.
For the general reasons outlined above, the data relied upon by
Appellant as showing unexpected results is not commensurate in scope with
the remaining independent claims. In particular, the data relied on by
Appellant is not commensurate in scope with (1) the possible range of
positive electrodes, which can be any lithiated transition metal oxide or
lithiated transition metal phosphate (claims 11, 13, 15, 18, 21), (2) many
different organic carbonate cyclic esters and organic carbonate linear esters
in the solvent (claims 13, 18), or also various electrolytic additives (claims
18 and 21).
Accordingly, we determine that Appellant has not demonstrated
reversible error in the rejections on appeal. If prosecution resumes,
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Appellant, for example, may seek to amend the claims such that they are
commensurate in scope with the data presented or may present additional
data to support the patentability of the claims on appeal.
Because our reasoning for sustaining the rejection substantially
expands upon the Examiner’s reasoning, we designate this decision as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

CONCLUSION

In summary:

Claims
Rejected
35 U.S.C.
§
References(s)/Basis Affirmed Reversed
1–5, 11–14 103(a) Wagner 1–5, 11–14
8–10 103(a) Wagner, Xiao 8–10
15, 16, 18–
25, 31, 32
103(a) Wagner, Xiao 15, 16, 18–
25, 31, 32

17 103(a) Wagner, Xiao, Ahn 17
26, 27 103(a) Wagner, Xiao, Lee 26, 27
28, 30 103(a) Wagner, Xiao, Gao 28, 30
29 103(a) Wagner, Inagaki 29
33–37 103(a) Wagner, Xiao, Abe 33–37
Overall
Outcome
1–5, 8–37

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED, DESIGNATED AS NEW GROUND OF REJECTION