Ex Parte Jung et al

Board of Patent Appeals and Interferences

Aug 9, 2012

09775315 (B.P.A.I. Aug. 9, 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.
09/775,315 02/01/2001 Hyun-Sook Jung 41671/P849 8247
23363 7590 08/10/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
ANTHONY, JULIAN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
08/10/2012 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 HYUN-SOOK JUNG, JAE-PHIL CHO, and GEUN-BAE KIM
____________

Appeal 2011-003008
Application 09/775,315
Technology Center 1700
____________

Before HUBERT C. LORIN, CATHERINE Q. TIMM, and KAREN M.
HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 09/775,315

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-4 and 11. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

Claims 1 and 11 are illustrative of the claimed subject matter:
1. A positive active material for a rechargeable lithium battery
comprising:
lithium nickel manganese oxides; and
lithium manganese oxides,
wherein a weight ratio of lithium manganese oxides to the lithium
nickel manganese oxides ranges from about 4:6 to about 1 :9, providing an
excess of lithium nickel manganese oxides.
11. A rechargeable lithium battery comprising:
a positive electrode comprising:
a positive active material comprising a mixture of lithium nickel
cobalt oxides and
lithium manganese oxides, the weight ratio of the lithium manganese
oxides to the lithium nickel cobalt oxides being less than 1: 1, wherein the
lithium manganese oxides and the lithium nickel cobalt oxides remain
distinct chemical species and are bonded together by a first binder adapted to
be evaporated,
a second binder; and
a conductive agent;
a negative electrode; and
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an electrolyte.

The Examiner maintains, and the Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) claims 1-4 as unpatentable over Pynenburg (U.S. Patent 5,429,890;
issued Jul. 4, 1995) in combination with Hasegawa (U.S. Patent 5,370,948;
issued Dec. 6, 1994) , with evidence by Imachi (U. S. Patent 7,056,622 B2;
issued Jun. 6, 2006);
2) claim 11 as unpatentable over Mayer (U.S. Patent 5,783,333; issued
Jul. 21, 1998).

PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
It is well established that where the claimed ranges “overlap or lie
inside ranges disclosed by the prior art" a prima facie case of obviousness
exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).

ANALYSIS
After thorough review of the respective positions provided by
Appellants and the Examiner, we AFFIRM both of the § 103(a) rejections on
appeal for essentially the reasons presented by the Examiner, including the
Response to Argument section (Ans., mailed Jul. 28, 2010). We add the
following primarily for emphasis.
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Claims 1-4
With respect to the rejection of claim 1-4, Appellants’ contention that
Imachi may not be relied upon because its effective date is after the priority
date of the present case (App. Br. 4) is unavailing. As pointed out by the
Examiner, Imachi is properly used as extrinsic evidence of the higher
discharge capacity property of lithium nickel manganese oxide compared to
lithium manganese oxide (Ans. 6, 9). Appellants do not dispute this finding
of the Examiner (generally App. Br.; Reply Br., filed Sept. 27, 2010).
Appellants also do not otherwise dispute that Examiner has established a
prima facie case of obviousness as to claims 1-4 (App. Br. 4). As such,
where the Examiner establishes a reasonable basis to conclude that the
claimed invention would have been obvious, as here, the burden shifts to the
Appellants to rebut the prima facie case by providing evidence of
unexpected results, based on comparisons with the closest prior art and
commensurate in scope with the claimed subject matter, or a showing that
the prior art teaches away from the claimed invention in any material
respect. See, e.g., In re Kulling, 897 F. 2d 1147, 1149 (Fed. Cir. 1990); See
also, In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
Appellants do not argue that the prior art teaches away from the
claimed invention; rather, Appellants only contend that the claimed mixture
of oxides in the claimed range of ratios achieve “unexpected results” (App.
Br. 4). To demonstrate unexpected results, Appellants primarily rely upon
the Kim Declaration, filed March 28, 2007, to show that the recited ratios of
the claimed oxide mixtures have better properties compared to those outside
the claimed range (App. Br. 4, 5). Appellants also rely upon the
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Specification to illustrate “superior” properties of the claimed oxide
mixtures (Spec. 16; App. Br. 4, Table 2, Spec. 13-17).
However, the results in Table 2 are not a comparison of the claimed
ranges with ranges outside the ranges, as the comparative examples
comprise mixtures of different oxides in the same ratios as the inventive
examples. The Specification also does not establish that these results are
“unexpected”; rather, the Specification merely states that “results [from
Table 2] indicate that the cells [of the invention] will have superior thermal
stability” to those of the comparative oxide mixtures (e.g., Spec. 16:1-9).
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“any
superior property must be unexpected to be considered as evidence of non-
obviousness.”). Furthermore, a preponderance of the evidence supports the
Examiner’s determination that Appellants’ showing in the Kim Declaration
is not commensurate in scope with the claimed range (Ans. 9). See In re
Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (in order to successfully
rebut a prima facie case of obviousness, a showing of unexpected results
must be commensurate in scope with the claims); also, In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number
of) species gives unexpected results is inadequate proof, for ‘it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support.’ In re
Tiffin, 448 F.2d 791, 792 (CCPA 1971)”).
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v.
Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009)
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(“[E]vidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of
obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d at 1372 (“[T]his
secondary consideration does not overcome the strong showing of
obviousness in this case. Although secondary considerations must be taken
into account, they do not necessarily control the obviousness conclusion.”);
see also Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir.
1988).
Here, as pointed out by the Examiner, the case of obviousness
established by the applied prior art is strong in view of Pynenburg’s teaching
“that the cell capacity is proportional to the area under the curve of the
differential cell capacity . . . vs. voltage” (Ans. 10) relating to a reasonable
expectation of optimizing an improvement from blending two oxides that
Appellants’ alleged superior results are ultimately insufficient. On the
record of this appeal, Appellants have not persuasively shown unexpected
results, and Appellants have not shown unexpected results which are
commensurate in scope with claim 1.
Appellants do not provide any separate argument directed to
dependent claims 2-4 (App. Br. 4, 5); hence, these claims are affirmed for
the same reasons discussed regarding the rejection of independent claim 1.
Appellants have not shown reversible error in the Examiner’s
obviousness rejection of claims 1-4, nor have Appellants overcome the
rejection by rebutting the prima facie case with sufficient evidence of
unexpected results.
Accordingly, we affirm the § 103 rejection of claims 1-4 on appeal.

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Claim 11
Notably, claim 11 is directed to a product. The limitation “are bonded
together by a first binder adapted to be evaporated” is a process limitation
directed to how the product was made. It has been well established that,
when a product recited in product-by-process format reasonably appears to
be the same as or obvious from a product of the prior art, the burden is on
applicant to show that the prior art product is in fact different from the
claimed product, even though the products may be made by different
processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
Appellants’ main contention that the limitation that the oxides are
“bonded together by a first binder adapted to be evaporated” means that
some binder must remain (App. Br. 3; Reply Br. 1, 2) is unavailing. “[T]he
PTO must give claims their broadest reasonable construction consistent with
the specification . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id. As explained by the Examiner, the binder is “to
be evaporated” as set out in the claim, and the Specification includes the
possibility that in the final product no binder remains (e.g., Ans. 8, 9, 11).
Appellants have provided no persuasive rationale or credible evidence that
the broadest reasonable interpretation in light of the Specification of this
limitation does not encompass a final product with no binder being present
after evaporation.
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Appellants further argue that even though, as pointed out by
Examiner, Mayer teaches certain oxide materials may remain distinct
chemical species in the electrode mixtures (e.g., Ans. 11, 12) as claimed
herein, the LiNO2 synthesis example of Mayer relied upon by the Examiner
(to exemplify water used as a binder) does not teach that the lithium
manganese oxides and lithium nickel cobalt oxides remain distinct chemical
species as required by the claim (e.g., Reply Br. 3). This argument is also
unavailing.
As pointed out by the Examiner, Mayer teaches that a positive
electrode may comprise mixtures of lithium nickel cobalt oxides and lithium
manganese oxides that remain chemically distinct, and optimizing the
relative amounts of each oxide would have been within the ordinary skill in
the art (Ans. 4; Mayer e.g., col. 10, ll. 48-67; col. 8, ll. 42-50). The use of
such a mixture appears to be no more than the predictable use of prior art
elements according to their established functions. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007).(“[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”.)
Appellants have provided no persuasive rationale or credible evidence
that the claimed battery comprising a positive electrode mixture as recited in
of claim 11 is patentably distinct over the battery of Mayer comprising a
positive electrode that may, through the use of no more than ordinary
creativity, comprise a mixture of lithium nickel cobalt oxides and lithium
manganese oxides mixtures in the claimed weight ratio as explained by the
Examiner.
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ORDER
We affirm the Examiner’s decision to reject all of the pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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