Ex Parte Gao et al

Board of Patent Appeals and Interferences

Jun 27, 2012

10324611 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/324,611 12/20/2002 Yuan Gao 208-6160IP 1806
20792 7590 06/27/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
LEWIS, BEN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
06/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUAN GAO, JOHN L. BURBA III, JOHN F. ENGEL, and
MARINA V. YAKOVLEVA
____________

Appeal 2011-006552
Application 10/324,611
Technology Center 1700
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
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Yuan Gao, et al., the Appellants,1 seek our review under 35 U.S.C.
§ 134(a) of a final rejection of claims 24, 26, 31, 32, 35, and 42.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but we designate our decision as a new ground of
rejection.

STATEMENT OF THE CSE
The invention relates to an electrochemical cell, in particular a
secondary battery (i.e., a rechargeable battery), having lithium dispersed in a
host material that is capable of absorbing and desorbing lithium.
Specification (“Spec.”) ¶¶ [0002], [0003], [0008]. According to the
Appellants, secondary batteries include a positive electrode (or cathode), a
negative electrode (or anode), a separator that separates the cathode and the
anode, and an electrolyte in electrochemical communication with the
cathode and the anode. Id. at ¶ [0004]. During discharge, electrons are
collected from the anode and pass to the cathode through an external circuit.
Id. During recharge, the lithium ions are transferred from the cathode to the
anode through the electrolyte. Id.
Claim 24, which is illustrative of the subject matter on appeal, is
reproduced below:
An electrochemical cell, comprising:
(A) a cathode comprising an active material capable of
being lithiated, wherein the cathode does not comprise lithium
prior to the initial charge;

1 The Appellants state that the real party in interest is FMC Corporation,
Lithium Division. Appeal Brief filed August 10, 2010 (“App. Br.”) at 1.
2 App. Br. 2; Final Office Action mailed April 27, 2010 at 2-8.
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(B) an anode separated from said cathode by a separating
material, wherein the anode comprises
a host material capable of absorbing and desorbing
lithium in an electrochemical system and lithium metal
dispersed within said host material, the amount thereof is no
more than the maximum amount sufficient to intercalate in,
alloy with and/or be absorbed by the host material after
activation; and
(C) an electrolyte in electrochemical communication with
the cathode and the anode.
App. Br. 10 (Claims App’x.).
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows, Ans. 4-14:
I. Claims 24, 26, 31, 35, and 42 as unpatentable over Inoue3
in view of Ogino4; and
II. Claim 32 as unpatentable over Inoue in view of Ogino
and Schneider.5

ISSUES
The Appellants argue claims 24, 26, 31, 35, 42, and 43 together. App.
Br. 6-8. Therefore, pursuant to 37 C.F.R. § 41.37(c)(1)(vii), we select claim
24 as representative of claims 24, 26, 31, 35, 42, and 43 and confine our
discussion to this selected claim. With respect to separately rejected claim
32, the Appellants offer the same arguments made in support of claims 24,
26, 31, 35, 42, and 43. Id. at 8. Therefore, the outcome as to the rejection of
claim 32 depends on the outcome of the rejection as to claim 24.

3 U.S. Patent 5,707,756 issued January 13, 1998.
4 U.S. Patent 4,863,817 issued September 5, 1989.
5 U.S. Patent 6,271,645 B1 issued August 7, 2001.
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The Examiner found that Inoue describes an electrochemical cell, as
recited in claim 24, except the reference “does not specifically teach wherein
[sic] the cathode does not comprise lithium prior to initial charge.” Ans. 5.
To resolve this perceived difference, the Examiner relied on the teachings of
Ogino, which was found to teach the use of manganese dioxide as a positive
electrode active material to form a non-aqueous electrolytic cell having
improved discharge flatness, increased discharge capacity in a relatively
high voltage region, and improved charge-discharge cycle performance
when constructed as a secondary cell. Id. at 6-7. The Examiner concluded
from these findings that a person of ordinary skill in the art would have been
prompted to use Ogino’s non-lithiated manganese dioxide as the cathode
material in Inoue’s cell in order to obtain the advantages disclosed in Ogino.
Id. at 7.
The Appellants contend that non-lithiated cathode active materials
were considered unsafe and therefore “discontinued.” App. Br. 6-7. The
Appellants further argue that Inoue teaches away from non-lithiated cathode
materials. Id. at 7. The Appellants therefore urge that a person of ordinary
skill in the art would not have combined the teachings of Inoue and Ogino in
the manner claimed. Id. at 8.
Thus, the issue arising from these contentions is:
Does the evidence support a conclusion that a person of ordinary skill
in the art would have found it obvious to use a non-lithiated cathode material
in the manufacture of Inoue’s battery, thus arriving at a cell encompassed by
claim 24? We answer in the affirmative.

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DISCUSSION
We start with claim construction. The Appellants’ Specification
informs one skilled in the relevant art that component (A) (i.e., “a cathode
comprising an active material capable of being lithiated, wherein the cathode
does not comprise lithium prior to the initial charge”) includes MnO2, V2O5,
V6O13, LiV3O8, MoO3, TiS2, MoS2, or mixtures thereof. Spec. ¶ [0010].
With respect to component (B), the anode, the Specification states that “[t]he
anode host material may comprise one or more materials selected from the
group consisting of carbonaceous materials, Si, Sn, tin oxides, composite tin
alloys, transition metal oxides, lithium metal nitrides and lithium metal
oxides.” Id.; see also appealed claim 42.
Inoue describes a non-aqueous secondary battery with improved
charge and discharge properties and increased stability comprising a positive
electrode material (i.e., a cathode material), a negative electrode material
(i.e., an anode material), a non-aqueous electrolyte containing a light metal
salt (preferably lithium salt), and optionally a separator, wherein the
negative electrode material predominantly consists of amorphous chalcogen
compounds and/or amorphous oxides each containing at least three atoms
selected from Group 13, 14, 15 and 2 atoms of the Periodic Table. Col. 6, ll.
8-27.
According to Inoue, “[t]he negative electrode material . . . can be used
in such a form having a light metal, in particular, lithium intercalated” in an
amount “approximated to the deposition potential of lithium, but in general,
it is present in a proportion of preferably 50 to 700 mole % . . . .” Col. 11, l.
64 to col. 12, l. 5. Inoue further teaches that joint use of the amorphous
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negative electrode material with a carbonaceous material is preferred. Col.
15, ll. 24-32.
With respect to the positive electrode material, Inoue states that the
positive electrode material “may be a transition metal oxide capable of
reversibly intercalating and deintercalating lithium ion but is preferably a
lithium-containing transition metal oxide” (emphasis added). Col. 11, ll. 10-
14; see also col. 29, ll. 45-50, 63-67. Although Inoue teaches a preference
for lithium-containing transition metal oxides, it also teaches a “positive
electrode material of a lithium-free transition metal oxide” (emphasis
added), namely “V2O5, V6O13, MnO2, TiS2, MoS2, MoS3, MoV2O8, NbSe3,
etc.” Col. 30, ll. 1-4.
Ogino teaches a non-aqueous electrolyte cell comprising a positive
electrode, a negative electrode, and a non-aqueous electrolyte containing an
alkali metal ion, wherein the positive electrode material is manganese
dioxide prepared by electrolyzing an electrolytic solution such as manganese
sulfate-sulfuric acid solution while introducing a gas such as nitrogen. Col.
2, ll. 16-24, 49-64. According to Ogino, the manganese dioxide provides
improved discharge voltage flatness, increased discharge capacity in a
relatively high voltage region, and improved cycle performance. Col. 2, ll.
11-15; col. 2, l. 64 to col. 3, l. 3.
Based on the collective teachings of the applied prior art references,
we agree with the Examiner that a person of ordinary skill in the art would
have been prompted to use Ogino’s manganese dioxide as the positive
electrode material in Inoue’s electrolytic cell in order to achieve improved
discharge voltage flatness, increased discharge capacity in a relatively high
voltage region, and improved cycle performance, thus arriving at a cell
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encompassed by claim 24. Here, the conclusion of obviousness is even
more compelling because Inoue independently teaches that lithium-free
transition metal oxides such as manganese dioxide may be used as the
positive electrode material. Col. 30, ll. 1-4.
We do not find any persuasive merit in the Appellants’ argument,
based on the Specification disclosure at ¶¶ [0005]-[0006], that the use of
non-lithiated cathode active materials such as manganese dioxide per se was
considered unsafe and therefore discontinued in favor of lithium-ion
batteries. App. Br. 6-7. Paragraph [0005] of the Specification states that
when non-lithiated compounds having high specific capacities such as MnO2
were used as cathode active materials coupled with a lithium metal anode,
lithium ions were transferred from the lithium metal anode to the cathode
through the electrolyte during discharge and that, upon cycling, the lithium
metal developed dendrites, which ultimately caused unsafe conditions in the
battery. That disclosure is consistent with Inoue’s discussion regarding the
drawbacks in the prior art use of lithium metal and lithium alloys as the
negative electrode material. Col. 1, ll. 24-29. As we pointed out above,
however, Inoue’s cell includes a negative electrode material predominantly
consisting of amorphous chalcogen compounds and/or amorphous oxides
each containing at least three atoms selected from Group 13, 14, 15 and 2
atoms of the Periodic Table. Col. 6, ll. 8-27. Therefore, the Appellants’
argument relying on the known drawbacks of a cell using lithium or lithium
alloy anodes is not well taken.
Similarly, paragraph [0006] of the Specification refers to situations in
which lithium metal oxides such as LiCoO2 and LiNiO2 are used as the
cathode active materials coupled with a carbon-based anode, where lithium
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“is totally supplied from the cathode.” Spec. ¶ [0006]. According to the
Specification, “delithiated products corresponding to LiCoO2 and LiNiO2
formed during charging (e.g. LixCoO2 and LixNiO2 where 0.4