Ex Parte Jung et al

Board of Patent Appeals and Interferences

Oct 28, 2009

10922919 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IN-SUN JUNG
and JIN-HWAN PARK
____________

Appeal 2009-006768
Application 10/922,919
Technology Center 1700
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Decided: October 28, 2009
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 4-12. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6. Claim 4 is
illustrative:
4. A lithium battery electrode comprising:

an electrode active material;

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an organic solvent; and

a homopolymer of polyvinylidenefluoride having an IR absorption
peak ratio of Iγ in a range from 0.35 to 1.00, wherein Iγ is equal to
I820-850/I860-880 where I820-850 is a peak height resulting from a CH2 rocking
band in γ-phase polyvinylidenefluoride and I860-880 is a peak height resulting
from a backbone in α-phase polyvinylidenefluoride and γ-phase
polyvinylidene-fluoride.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Luke 3,803,108 Apr. 9, 1974
Gebauer 4,185,000 Jan. 22, 1980
Park 4,931,019 Jun. 5, 1990
Strassel 5,112,692 May 12, 1992
Mattis 5,749,942 May 12, 1998
Olson 5,985,444 Nov. 16, 1999
Lorek 6,143,415 Nov. 7, 2000
Lin 6,313,222 B1 Nov. 6, 2001
Pascal 6,376,586 B1 Apr. 23, 2002
Shyu 6,383,353 B1 May 7, 2002
Lee US 2003/0104273 A1 Jun. 5, 2003
Gopalnarayanan 6,584,783 B2 Jul. 1, 2003

Abbrent, "Crystallinity and morphology of PVdF-HEP-based gel
electrolytes," Polymer 42, 407-416 (2001).

Dyneon, 3M Material Safety Data Sheet, PVDF (2007).

Wilks, Macromolecular Division (IV), "International Union of Pure and
Applied Chemistry," http://old.iupac.org/reports/IV/guide.html, (May 30,
2008.

Appellants' claimed invention is directed to a lithium battery electrode
comprising a homopolymer of polyvinylidenefluoride having the recited IR
absorption peak ratio.
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Appealed claims 4-12 stand rejected under 35 U.S.C. § 112, first
paragraph, written description requirement. Claims 4-12 also stand rejected
under 35 U.S.C. § 112, second paragraph. Claims 4 and 10 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Abbrent. Claims 5-9, 11, and 12
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Abbrent
in view of Lee.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we concur with Appellants that
the Examiner's rejections are not sustainable.
We consider first the Examiner's § 112, first paragraph, rejection of
claims 4-12. Although the rejection is based on the written description
requirement of § 112, first paragraph, the Examiner states that "[t]he
recitation 'a homopolymer of polyvinylidenefluoride' is not supported in the
specification in such a way that [it] would allow one of ordinary skill to
make or use the invention" (Ans., sentence bridging pages 3-4). Although
the Examiner is apparently confusing the written description requirement
and the enablement requirement of § 112, first paragraph, the thrust of the
Examiner's rejection is that whereas the claims recite a homopolymer of
polyvinylidenefluoride, "[t]he specification only discloses a
'polyvinylidenefluoride polymer' which incorporates polymers with
polyvinylidenefluoride co-polymers, homopolymers or combinations
thereof" (Ans. 4, first para.). In essence, the basis of the Examiner's
rejection is that the Specification does not recite the term homopolymer.
We agree with Appellants that one of ordinary skill in the art would
readily envisage a homopolymer of polyvinylidenefluoride upon reading
polyvinylidenefluoride polymer in the present Specification and, therefore,
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would understand that Appellants had possession of the claimed
homopolymer at the time of filing the present application. While
polyvinylidenefluoride polymer might suggest copolymers as well as the
homopolymer, we agree with Appellants that the lack of a disclosure of a
copolymer would indicate a reference to the homopolymer. Furthermore,
we agree with Appellants that even if the disclosed polyvinylidenefluoride
polymer is considered a generic term for homopolymers and copolymers, as
asserted by the Examiner, the term necessarily includes the claimed
homopolymer.
We now turn to the Examiner's § 112, second paragraph, rejection.
The Examiner submits that the recitation "homopolymer of
polyvinylidenefluoride" is unclear because the polymer can exist in α and γ
phases and "it then cannot be considered a homopolymer" (Ans. 4, last para.)
However, as emphasized by Appellants, the Examiner has not explained
how existence in one of the three crystalline phases, α, β, and γ, disqualifies
the polyvinylidenefluoride as a homopolymer. Appellants have properly set
forth that although molecules having the same structural formula may exist
as different conformational isomers, polymers made from a single monomer
are termed homopolymers.
We now turn to the Examiner's § 102 rejection of claims 4 and 10
over Abbrent. As recognized by the Examiner, Abbrent does not describe a
homopolymer of polyvinylidenefluoride but, rather, discloses a copolymer
consisting of polyvinylidenefluoride and hexafluoropropylene. As such, the
reference does not describe the claimed invention within the meaning of
§ 102. Significantly, the Examiner acknowledges that Abbrent "does not
suggest or indicate a homopolymer of PVdF" (Ans. 14, last full sentence).
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Also, it should be borne in mind by the Examiner that even if the claim
recitation "a homopolymer of polyvinylidenefluoride" did not have
descriptive support in the original Specification and, therefore, was new
matter, it is still incumbent upon the Examiner to point out where Abbrent
describes the claimed recitation to support a rejection under § 102.
In addition, we agree with the Appellants that Abbrent does not
describe a lithium battery electrode comprising a homopolymer of
polyvinylidenefluoride. The Examiner erroneously states that "[t]he
Abbrent reference states 'the copolymers [sic, copolymer] has been shown to
be a promising matrix for an electrode material in modern lithium ion
batteries'" (Ans. 29, second para.). In point of fact, however, Appellants
correctly point out that the quoted passage of Abbrent reads "[t]he
copolymer has been shown to be a promising matrix for an electrolyte
material in modern lithium ion batteries" (page 1407, second col., first para.,
emphasizes added). We also disagree with the Examiner that the claim
recitation "[a] lithium battery electrode" is a statement of intended use.
The Examiner's § 103 rejection of claims 5-9, 11, and 12 over Abbrent
in view of Lee is similarly flawed because it is based on the asserted
obviousness of incorporating the polyvinylidenefluoride copolymer of
Abbrent into the components of the battery disclosed by Lee. However, as
discussed above, Abbrent does not disclose the claimed homopolymer of
polyvinylidenefluoride, let alone its use as an electrode material, as presently
claimed.
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In conclusion, based on the foregoing, we are constrained to reverse
the Examiner's rejections.
REVERSED

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