Ex Parte Casteel et al

Patent Trial and Appeal Board

Apr 11, 2017

12277369 (P.T.A.B. Apr. 11, 2017)

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.
12/277,369 11/25/2008 William Jack Casteel JR. 07121ZP USA 5906
23543 7590 04/11/2017
AIR PRODUCTS AND CHEMICALS, INC.
7201 HAMILTON BOULEVARD
ALLENTOWN, PA 18195-1501
EXAMINER
MCDERMOTT, HELEN M
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
04/11/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte WILLIAM JACK CASTEEL JR., SERGEI VLADIMIROVICH
IVANOV, KRISHNAKUMAR JAMBUNATHAN and
WADE HAMPTON BAILEY III
________________

Appeal 2016-001708
Application 12/277,369
Technology Center 1700
________________
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 2, 4–8, 12–23 of Application
12/277,369 (“the ʼ369 Application”) under 35 U.S.C. § 103(a) as obvious.
Final Act. 3–8. Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 William Jack Casteel Jr., Sergei Vladimirovich Ivanov, Krishnakumar
Jambunathan, Wade Hampton Bailey, III, and Air Products and Chemicals,
Inc. are identified as the real parties in interest. Appeal Br. 1.
Appeal 2016-001708
Application 12/277,369
2
BACKGROUND
The ’369 Application relates to a class of chemical compounds of the
formula Ma+(B12FXZ12-x-)a wherein a is an integer from 1 to 4 and x is at least
3, M comprises at least one electrochemically stable cation, and Z is one of
hydrogen, chlorine, bromine, or “OR, where R = H, C1-8, preferably C1-3
alkyl or fluoroalkyl.” Spec. 1. The ’369 Application also relates to
compositions comprising such compounds and to methods for making and
using the compounds and compositions. Id.
Claim 8 is representative of the ’369 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
8. A method for producing a composition comprising:
exposing a salt of the formula:
Ma+(B12FXZ12-x2-)a/2
where x averages at least 4 but not more than 12 and Z
represents H to a chemically oxidizing environment for a time
and under conditions sufficient to form an oxidized salt of the
formula:
Ma+(B12FXZ12-x-)a
wherein a is 1 to 4; 4 ≤ x ≤ 12; and M comprises at least one
member selected from the group consisting of alkali metal,
alkaline earth metal, tetraalkylammonium and imidazolium;
and,
combining the oxidized salt and a lithium salt of the formula:
Li2B12FxZ12-x
where x averages at least 4 but not more than 12 and Z
represents H, Cl, Br, or OR, where R = H, or C1-8.

Appeal Br. 12–13 (Claims App.).
Appeal 2016-001708
Application 12/277,369
3
REJECTION
On appeal, the Examiner maintains the following rejections:
1. Claims 2, 4–8, 12–14, 16 and 19–21 are rejected under
35 U.S.C. § 103(a) as unpatentable over Michl et al. (US 5,731,470, iss.
March 24, 1998) (hereinafter “Michl”). Final Act. 3–7.
2. Claims 15, 17, 18, 22 and 23 are rejected under 35 U.S.C. §
103(a) as unpatentable over Michl in view of Jambunathan et al. (US
2006/0216612 A1, pub. Sept. 28, 2006) (hereinafter “Jambunathan”). Id.
at 7–8.
DISCUSSION
Rejection 1. The Examiner rejected claims 2, 4–8, 12–14, 16 and 19–
21 as obvious over Michl. Appellants allege error on several bases.
As an initial matter, Appellants assert that the present rejections are
substantially redundant of a prior rejection that was subsequently withdrawn.
Appeal Br. 3–5. Appellants argue that the Examiner is in error in
maintaining the present rejections and seeks reversal on this basis. Id. at 4–
5.
The Manual of Patent Examining Procedure provides that “[a] claim
noted as allowable shall thereafter be rejected only after the proposed
rejection has been submitted to the primary examiner for consideration of all
the facts and [there is] approval of the proposed action.” MPEP § 706.04;
see also MPEP § 1004(11). Thus, Appellant seeks review of a
determination that is delegated to the primary examiner. Appellant’s
recourse for an adverse determination in such a case is through petition to
the Director rather than appeal to the Board. See 37 CFR § 1.181; see also
In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
Appeal 2016-001708
Application 12/277,369
4
Accordingly, Appellants fail to show a basis for reversal in this
regard.
Appellants additionally argue, inter alia, that Michl fails to disclose
the combination of an oxidized salt with a lithium salt as required by claim
8. Appeal Br. 7. One basis of this argument is that Michl does not teach the
sequence of steps required by the method of claim 8. Id.
In a prior office action, the Examiner had allowed a similar claim that
included the limitation “adding to the oxidized salt a lithium salt.” Answer
9. The Examiner indicates that the present claim, including the limitation
“combining the oxidized salt and a lithium salt” is broader than the
previously allowed claim in that it does not require any particular sequence
of steps. Id. As a consequence, the present claim 8 is rejected.
In determining whether a claimed method must be performed in a
particular sequence, “[f]irst, we look to the claim language to determine if,
as a matter of logic or grammar, they must be performed in the order
written.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir.
2003). Here, claim 8 requires “exposing a salt” of a certain formula “to a
chemically oxidizing environment for a time and under conditions sufficient
to form an oxidized salt” of a certain formula. Appeal Br. 12–13 (Claims
App.). The claim further requires “combining the oxidized salt and a lithium
salt” of a certain formula. Id. at 13. Thus, the claim requires two steps: 1)
exposing a salt to an oxidizing environment and 2) combining “the oxidized
salt” with a lithium salt. It is apparent from the language and structure of the
claim that the salt must be oxidized before it is combined with a lithium salt.
Appellants argue that the sequence indicated by the claim is necessary
to effectuate the method. That is, Appellants contend that if one were to
combine the salt of claim 8 (prior to oxidation) with the lithium salt of claim
Appeal 2016-001708
Application 12/277,369
5
8, and then subject both to an oxidative environment, both would be
oxidized such that the lithium salt would be chemically altered. Reply 5; see
also Spec. 9 (regarding XeF2 oxidation of lithium salt). As a consequence,
one could not combine the oxidized salt and the (unoxidized) lithium salt.
The Examiner does not make any finding as to whether Michl teaches
or suggests the claimed sequence. Final Act. 4; Answer 11. Rather, the
Examiner determines “that no particular order is required by the claims.”
Answer 11.
In view of the claim language requiring the steps of the method of
claim 8 to be performed in sequence, the teaching of the Specification
regarding oxidation of lithium salts, and the Examiner’s omission of any
finding that Michl teaches such sequence, we are obliged to reverse the
rejection of claim 8. As all other claims at issue depend from claim 8, the
rejections of all claims are reversed.
Rejection 2. Claims 15, 17, 18, 22 and 23 stand rejected as obvious
over Michl in view of Jambunathan. Final Act. 7. These rejections rely
upon the teachings of Michl in the same manner as Rejection 1. Id. Each of
these claims depends, directly or indirectly, from claim 8. Appeal Br. 13–14
(Claims App.). Accordingly, the rejections of these claims are reversed for
the reasons stated in connection with the reversal of Rejection 1.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 2,
4–8, 12–23 of the ’369 Application.
REVERSED