CORNING INCORPORATED

Patent Trials and Appeals Board

Mar 25, 2022

2021001728 (P.T.A.B. Mar. 25, 2022)

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. 16/519,350 07/23/2019 Michael Edward Badding SP19-056T 1020 22928 7590 03/25/2022 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 EXAMINER WYLUDA, KIMBERLY ART UNIT PAPER NUMBER 1725 NOTIFICATION DATE DELIVERY MODE 03/25/2022 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): usdocket@corning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL EDWARD BADDING, RYAN DAVID BAYLISS, JENNIFER ANELLA HEINE, and CAMERON WAYNE TANNER Appeal 2021-001728 Application 16/519,350 Technology Center 1700 Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s April 13, 2020 decision to finally reject claims 1-24 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Corning Incorporated (Appeal Br. 2). Appeal 2021-001728 Application 16/519,350 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to a sintered electrode for a battery (Abstract). The sintered electrode has a first surface which is positioned to face a current collector, and a second surface positioned to face an electrolyte layer (id.). The sintered electrode includes a chalcogenide compound having at least one of an alkali metal or an alkaline earth metal, has a thickness between the first surface and the second surface of 2 μm to 100 μm, and has an open porosity of from 0.1 % to 30% (id.). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A sintered electrode, the sintered electrode comprising: a first surface configured to be positioned facing a current collector and a second surface configured to be positioned facing an electrolyte layer; a chalcogenide compound comprising at least one of an alkali metal or an alkaline earth metal; a thickness between the first surface and the second surface of 2 μm to 100 μm; and an open porosity of from 0.1 % to 30%; wherein the sintered electrode tape or sheet does not comprise Li2CO3. Appeal 2021-001728 Application 16/519,350 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Chiang et al. US 2009/0246636 A1 October 1, 2009 Hudson et al. US 2011/0003211 A1 January 6, 2011 Yura et al. WO 2018/155155 A1 August 30, 20182 Shimmura et al. WO 2018/025594 A1 February 8, 20183 REJECTIONS 1. Claim 1 is rejected under 35 U.S.C. § 112(b) as indefinite because the term “the sintered electrode sheet or tape” lacks proper antecedent basis. 2. Claims 1-7, 9, 11, 13-15, 21, 22, and 24 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Yura. 3. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Yura in view of Shimmura. 4. Claims 16-20 are rejected under 35 U.S.C. § 103 as unpatentable over Yura in view of Shimmura. 5. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over Yura in view of Shimmura. 6. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over Yura in view of Chiang. 2 Because Yura is in Japanese, the Examiner relies on the corresponding US Publication (US 2019/0363357, published November 28, 2019) as the English language translation. 3 Because Shimmura is in Japanese, the Board, Appellant, and the Examiner rely on the English translation of record. Appeal 2021-001728 Application 16/519,350 4 7. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Yura in view of Hudson. OPINION Rejection 1. Appellant does not argue the indefiniteness rejection, stating that “‘the tape or sheet’ recitation is the result of a typographical error that Appellant might address at the conclusion of this Appeal” (Reply Br. 2). Accordingly, we summarily affirm this rejection.4 Rejection 2. “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance, Appellant contends that Yura’s electrode includes lithium carbonate (Li2CO3), which is specifically excluded by each of independent claims 1, 6, and 16.5 The Examiner finds that although Li2CO3 is included in Yura’s intermediate products, “the components other than Li in the compound evaporate during the sintering process ([0045]) and therefore the sintered electrode does not comprise Li2CO3” (Final Act. 4). The passage relied on by the Examiner reads as follows: Besides the above green sheet containing lithium complex oxide, another green sheet containing an excess-lithium source 4 The Examiner has not similarly rejected any of the claims which depend from claim 1. Accordingly, we do not address those claims in connection with the antecedent basis issue raised by the Examiner. The Examiner and Appellant may wish to consider whether the antecedent basis issue applies to the claims which depend from claim 1. 5 Appellant makes a separate argument for claim 21 (Appeal Br. 7-8), which will be addressed separately by the Board. Appeal 2021-001728 Application 16/519,350 5 is then prepared. The excess-lithium source is preferably a lithium compound other than LiMO2. The components other than Li in the compound evaporate during firing. A preferred example of such a lithium compound (an excess-lithium source) is lithium carbonate. (Yura, ¶ 45, emphasis added). Yura also discloses that its product is processed at a temperature from 700-1000°C (Yura, ¶ 46). Appellant argues that Yura requires excess lithium in the form of lithium carbonate because during its firing process, Yura loses lithium (Appeal Br. 6, citing Yura ¶ 68). Furthermore, according to Appellant, even though Yura states that the components other than Li in the compound evaporate during firing, “there is no evidence in Yura, or [in the] secondary references, showing that Yura’s green sheet is free of lithium carbonate” (Appeal Br. 6). However, the Examiner does provide evidence that Yura is free from lithium carbonate - namely Paragraph 45, which states that “the excess-lithium source is preferably a lithium compound other than LiMO2” and that “[t]he components other than Li in the compound evaporate during firing.” This language is plain that if lithium carbonate is used, its non- lithium components are not present in the final product, thus meeting the claim limitation that the sintered electrode “does not comprise Li2CO3.” Appellant argues that “[s]ome amount of [lithium carbonate] remains in Yura’s end product, especially considering Yura uses ‘external’ and ‘internal’ lithium sources, each at an excess amount of 30 mol% or more” (Reply Br. 3). This argument is essentially a bald assertion that the final product does contain lithium carbonate, and is contradicted by the plain language in Yura’s Paragraph 45. Appeal 2021-001728 Application 16/519,350 6 In addition, Appellant argues for the first time in the Reply Brief that that “there is simply no way that all of the [lithium carbonate] would “evaporate” during firing, since [lithium carbonate] decomposes at about l,300°C” (Reply Br, 3, citing https://en.wikipedia.org/wiki/Lithium_carbonate.) We will not consider this new argument because it is not accompanied by a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. 37 C.F.R. § 41.41(b)(2); see Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI 2010) (informative).6 Thus, we determine that Appellant has not demonstrated reversible error in the Examiner’s findings that claims 1, 6, and 16 are anticipated by Yura. Appellant’s arguments with respect to the obviousness rejections are essentially the same as for the anticipation rejection (see, Appeal Br. 7), and are equally unpersuasive. With respect to claim 21, which does not recite the absence of lithium carbonate, Appellant argues that “if one were to try to implement Yura’s materials in a continuous process, one would at best obtain cracked electrodes that would not be suitable as electrodes for batteries” (Appeal Br. 7). According to Appellant, this is because Yura’s methods “espouse the use of greater than 10% by weight organic material, which makes the green tape flammable” and can create cracks in the tape (Appeal Br. 8). This argument is not persuasive of reversible error, essentially for the reasons set forth in the Examiner’s Answer (Ans. 23-25). In particular, Appellant has not 6 Moreover, we note that the use of lithium carbonate is not required by Yura, which states that lithium carbonate is “a preferred example” of lithium compound which may be used as an excess lithium source (Yura, ¶ 45). Thus, other lithium compounds may also be used. Appeal 2021-001728 Application 16/519,350 7 demonstrated that the claimed process steps would provide a final structure that is patentably different from the claimed structure. Appellant’s citations to its own Specification do not provide evidence that Yura’s product would have a different structure than the claimed structure. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 112 Indefiniteness 1 1-7, 9, 11, 13-15, 21, 22, 24 102(a)(1) Yura 1-7, 9, 11, 13-15, 21, 22, 24 8 103 Yura, Shimmura 8 16-20 103 Yura, Shimmura 16-20 23 103 Yura, Shimmura 23 10 103 Yura, Chiang 10 12 103 Yura, Hudson 12 Overall Outcome 1-24 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). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2021-001728 Application 16/519,350 8 AFFIRMED