Ex Parte Kim et al

Patent Trial and Appeal Board

Feb 27, 2017

13220016 (P.T.A.B. Feb. 27, 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.
13/220,016 08/29/2011 Chang- Hyuk Kim P59462 1022
8439 7590 03/01/2017
ROBERT E. BUSHNELL & LAW FIRM
2029 K STREET NW
SUITE 600
WASHINGTON, DC 20006-1004
EXAMINER
CARRICO, ROBERT SCOTT
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
rebushnell @ aol. com
mail @ rebushnell. com
info @ rebu shnell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANG-HYUK KIM, DO-HYUNG PARK,
SEON-YOUNG KWON, MIN-HAN KIM,
JI-HYUN KIM, JEONG-SEOP LEE,
and YOON-CHANG KIM
Appeal 2016-002660
Application 13/220,016
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 filed an appeal under 35 U.S.C. § 134(a) from the
1 Our decision refers to Appellants’ Specification filed Aug. 29, 2011
(Spec.), the Final Office Action (Final Act.) mailed Feb. 13, 2015,
Appellants’ Appeal Brief filed July 13, 2015 (Appeal Br.), the Examiner’
Answer mailed Oct. 23, 2015 (Ans.), and Appellants’ Reply Brief (Reply
Br.) filed Dec. 23,2015.
2 Appellants identify the real party in interest as Samsung SDI Co., Ltd.
Appeal Br. 3.
Appeal 2016-002660
Application 13/220,016
Examiner’s decision finally rejecting claims 1—6 and 19—243 under
35 U.S.C. § 103(a) as unpatentable over Chang4 and rejecting claim 25
under 35 U.S.C. § 103(a) as unpatentable over Chang in view of Inda.5 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims on appeal are directed to positive active materials (see,
e.g., claim 1). Appellants disclose there has been a need to develop batteries
for portable electronic equipment having both high performance and large
capacity. Spec. 13. FiCoCF has been widely used as a positive active
material in rechargeable lithium batteries, but cobalt is an expensive rare
metal having an unstable supply. Spec. H 4, 5. In view of this, positive
active materials including nickel and manganese have been researched.
Spec. 1 5. Positive active materials including nickel can provide a high-
capacity and high voltage battery, but the positive active materials have an
unstable structure, which reduces capacity. Spec. 1 6. They are also
thermally unstable. Id. In view of this, Appellants disclose a positive active
material for a rechargeable lithium battery that has a high capacity, high
voltage characteristics, excellent thermal stability, ion conductivity, and
electrical conductivity. Spec. 17.
3 The statement of the rejection lists claims 1—7, 19, and 20 as rejected under
§103 over Chang, but it is clear from the body of the rejection that the
rejection extends to claims 21—24. Final Act. 5. Because claim 7 has been
cancelled, it is not before us on appeal. Arndt, of Dec. 12, 2014.
4 Chang et al., WO 2010/079965 A2, published July 15, 2010. The
Examiner and Appellants cite to US 2011/0086274 as an English language
equivalent. Final Act. 2; Appeal Br. 10-26. Thus, we also cite to Chang et
al., US 2011/0086274 Al, published Apr. 14, 2011 (“Chang”).
5 Inda, US 2007/0087269 Al, published Apr. 19, 2007 (“Inda”).
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Application 13/220,016
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Appeal Brief with
the portion at the center of the dispute emphasized:
1. A positive active material, comprising:
a core; and
a composite surrounding a surface of the core and
including a phosphate-based compound and a carbon-based
compound, wherein the composite is included in an amount of
about 0.01 part by weight to about 0.1 part by weight based on
100 parts by weight of the core.
Appeal Br. 28 (emphasis added).
OPINION
Rejection of claims 16 and 19—24 over Chang
In responding to the Examiner’s rejection of claims 1—6 and 19—24
under 35 U.S.C. § 103(a) as being unpatentable over Chang, Appellants
argue claims 1, 2, 5, 6, 19, 20, 23, and 24 as a group, claims 3 and 4 as a
separate group, and claims 21 and 22 as a separate group. Appeal Br. 10—
24. We will separately address these arguments below. Additionally, we
address groups of claims argued in the Reply Brief.
Claim 1
Appellants contend the Examiner has not made a prima facie case of
obviousness because the Examiner has only provided conclusory statements
that lack articulated reasoning with some rational underpinning to support
the Examiner’s conclusion of obviousness. Appeal Br. 11; Reply Br. 5.
Specifically, Appellants assert the Examiner is “supposed to find a prior art
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Application 13/220,016
reference that teaches the limitation of Appellants’] claim 1 and apply it.”
Appeal Br. 11.
Appellants’ arguments do not identify a reversible error in the
Examiner’s rejection.
The Examiner finds Chang discloses coating the oxide of a positive
active material with an ion-conductive solid compound, such as lithium
phosphate, and conductive carbon to provide high electrical conductivity,
high ionic conductivity, and high temperature stability. Paragraphs 15—18
and 35 of Chang support the Examiner’s findings. The ion-conductive solid
compound and the conductive carbon may be coated onto the core in
composite form. Chang 137.
The Examiner further finds Chang discloses the general conditions for
using the coating along with a preferred range of concentration relative to
the core. Final Act. 3. Specifically, the Examiner finds
Chang discloses when a coating amount of the composite
is excessively small, desired coating effects may not be
realized. On the contrary, if the coating amount is too large, cell
performance may be deteriorated. Therefore, the coating
amount of the foregoing materials may preferably range from
0.5 to 10 wt.% relative to a total weight of active material.
Final Act. 3. Paragraph 39 of Chang supports these findings by the
Examiner. In a situation where the prior art has disclosed the general
conditions for using a claimed invention, it would have been obvious for one
of ordinary skill in the art to have discovered the workable ranges for the
invention via routine experimentation. See In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation”).
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Application 13/220,016
Appellants further argue there is no reason to modify Chang to
provide the claimed amount of composite because Chang discloses a
preferred range for its coating and has determined the desired effects of the
coating will not be realized outside this range. Appeal Br. 13—14; Reply Br.
4—6. But the statement that a particular range is preferred does not, in itself,
indicate that the desired effects will not be realized outside the preferred
range. Nor, as stated by the Examiner at page 2 of the Examiner’s Answer,
does Chang’s disclosure of the preferred range constitute a teaching away
from the composite amount recited in claim 1. Chang does not disclose that
concentration amounts outside Chang’s preferred range would be
unworkable or would otherwise be “excessively small” for providing the
desired effects of Chang’s coating. Instead, Chang provides the ordinary
artisan with the guidance needed to perform the routine experimentation
required to determine the workable range of coating amounts that are neither
too small nor too large. Chang 139. Therefore, the disclosure of Chang
does not support Appellants’ argument that a value outside the preferred
range of Chang would not have been obvious to one of ordinary skill in the
art. In fact, this is the classic situation in which the burden shifts to
Appellants to show that the range of their claim is critical for providing an
unexpected result. See Aller, 220 F.2d at 456 (“Under some circumstances,
however, changes such as [changes in temperature or concentration] may
impart patentability to a process if the particular ranges claimed produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art.”).
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Application 13/220,016
Appellants further argue they have shown unexpected results as
evidenced by data in their Specification and in a Declaration filed December
12, 2014. Appeal Br. 14.
The Specification includes two inventive examples and three
comparative examples and the Declaration includes a new comparative
example. Spec. 14—19, Table 1; Decl. 1—2, Table A. These results are
summarized in a table at page 15 of the Appeal Brief, which is reproduced
below:
............................
Initial efficiency
(%)
...................................
Discharge capacity ratio {%}*
CiC/O/iC)
Capacity
retemion
(%)**
Example 1 90 88 90
Example 2 89.5 89 89,5
Comparative
Example 1
8? 86 85
Comparative
Example 2
88 88 89
Comparative
Example 3
87.5 87.5 87
Mew
Comparative
Example
88 8? 88
Table A of Appeal Brief summarizing asserted results
The Examiner states at page 8 of the Final Office Action that “the
difference in reported properties between the Comparative Examples and
Examples 1 and 2 are quite small: between 1% and 3%. It is not clear that
these results are unexpected.” In response, Appellants argue the Examiner
has not provided any authority to support a position that a claimed invention
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Application 13/220,016
is obvious because its improvement is small. Appeal Br. 16. Appellants
further contend one data point can suffice to demonstrate unexpected results
when one of ordinary skill in the art could ascertain a trend. Appeal Br. 20.
As the party arguing unexpected results, Appellants carry the burden
of demonstrating the asserted results would have been unexpected to one of
ordinary skill in the art. Although Table A reports small differences
between in the inventive and comparative examples, Appellants have failed
to show that those differences would have been unexpected. Given the lack
of guidance on what properties would have been expected by those of
ordinary skill, a preponderance of the evidence supports the Examiner’s
determination that Appellants have not met their burden of showing
unexpected results.
We also agree with the Examiner that the data is not commensurate in
scope with the claim. Ans. 3.
After considering a totality of the evidence, we determine a
preponderance of the evidence supports the Examiner’s obviousness
determination.
Claims 3 and 4
Claims 3 and 4 each depend from claim 1. For the rejection of claims
3 and 4, Appellants argue at page 8 of the Reply Brief that Appellants should
not be required to show unexpected results because Chang fails to disclose
or teach the amount of the composite recited in claim 1. Reply Br. 8. This
argument fails to identify a reversible error because, as discussed above with
regard to claim 1, the Examiner has set forth a prima facie case of
obviousness. Therefore, the burden has been properly shifted to Appellants.
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Appellants also contend their data shows unexpected results. Appeal
Br. 21—23. As discussed above, Appellants have not met their burden of
demonstrating unexpected results.
Claims 21 and 22
Claims 21 and 22 recite the positive active material of claim 1 is
produced by processes comprising mixing the phosphate-based compound, a
precursor6 to the carbon-based compound, and the core and then heat
treating the mixture. Appeal Br. 29.
In the § 103 rejection over Chang, the Examiner finds claims 21 and
22 recite product-by-process limitations and the positive active material of
Chang does not appear to be structurally different from the positive active
materials of claims 21 and 22. Final Act. 5—6. Appellants assert the
product-by-process steps of claims 21 and 22 impart structural differences
because the heat treatment recited in claims 21 and 22 transforms the
precursor into the carbon-based compound. Appeal Br. 23—24; Reply Br. 9.
Appellants argue the active material of Chang includes one or more of the
recited precursors but Chang does not disclose a heat treatment to transform
the precursor into the claimed carbon-based compound. Appeal Br. 24;
Reply Br. 9.
Appellants’ arguments do not identify a reversible error. Chang
discloses a coating that includes an ion-conductive solid compound and
conductive carbon. Chang 116. The conductive carbon can be, for
example, natural graphite, artificial graphite, carbon fiber, carbon black, and
6 Claims 21 and 22 recite “the precursor to the carbon-based compound.”
Claim 21 depends from claim 1 and claim 22 depends from claim 3, which
depends from claim 1. However, there is no antecedent basis for the
language “the precursor” in claims 1, 3, 21, or 22.
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other forms of conductive carbon. Chang 131. These are all carbon-based
materials, and Appellants have not demonstrated that these forms of
conductive carbon do not fall within the scope of the “carbon-based
compound” recited in claims 21 and 22. Nor have Appellants met their
burden of demonstrating the heat treatments recited in claims 21 and 22
would produce a different structure than the conductive carbon or overall
active material disclosed by Chang.
Claims 5, 23, and 24
In the Reply Brief, Appellants present arguments for claims 5, 23, and
24. Reply Br. 10. However, Appellants did not previously raise arguments
for claims 5, 23, and 24 in the Appeal Brief. We will not consider the
separate arguments for claims 5, 23, and 24 newly raised in the Reply Brief.
37 C.F.R. §41.41(b)(2) (2015).
Claims 3—5, 23, and 24
Appellants contend that the Examiner’s comments in the Answer
ignore the existence of many of Appellants’ dependent claims, such as
claims 3—5 and 23—25. Reply Br. 8. This argument is not persuasive
because the Examiner addressed these claims in the Final Office Action.
Final Act. 3—7. We address Appellants’ additional argument with regard to
claim 25 below.
Rejection of claim 25 over Chang in view of Inda
Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chang in view of Inda. Claim 25 depends from claim 1 and further
recites “wherein the phosphate-based compound comprises a material
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selected from a group consisting of P2O5, H3PO4, (NH4)2HP04, NH4H2PO4,
and a combination thereof.” Appeal Br. 30.
The Examiner finds Chang discloses an ion-conductive solid
compound, but does not expressly disclose the phosphate-based compound
of claim 25. Final Act. 6. The Examiner finds Inda discloses a solid
electrolyte for use in a lithium ion secondary battery, wherein the electrolyte
comprises P2O5. Final Act. 6. The Examiner concludes it would have been
obvious to have substituted the solid electrolyte of Inda for the ion-
conductive solid compound of Chang because they are art recognized
equivalents or because this would have been a simple substitution of one
lithium ion conductive solid for another to obtain predictable results. Final
Act. 6—7.
Appellants contend Chang is directed to a positive active material, but
Inda pertains to a solid electrolyte. Appeal Br. 25. Appellants argue one of
ordinary skill in the art would not have modified Chang in view of Inda
because an electrolyte and a positive active material are different elements of
a battery, are arranged at different locations, and provide different functions.
Appeal Br. 25 and Reply Br. 11.
In response, the Examiner finds Chang discloses an ion conductive
solid compound and this disclosure of an ion conductive solid compound
would have prompted one of ordinary skill in the art to have investigated
other ion conductive solid compounds, such as those of Inda. Ans. 4.
Appellants contend this amounts to a shift in the Examiner’s rejection and
there is no evidence in the record to support the Examiner’s statement.
Reply Br. 11—12.
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Appellants’ arguments are not persuasive. The Examiner’s statements
in the Examiner’s Answer do not present a shift because the Examiner finds
in the rejection that each of Chang and Inda discloses an ion-conductive
solid. Final Act. 6. Moreover, the disclosures of Chang and Inda support
the Examiner’s findings because Chang discloses an “ion-conductive solid
compound”7 used in an active material for lithium secondary batteries8 and
Inda discloses a solid lithium ion conductive glass-ceramic comprising P2O59
for lithium ion secondary batteries.10 The two ion-conductive solid
compounds would have been expected to function as ion-conductive
compounds whether they are used as the solid electrolyte of the battery as
taught by Inda or used in the coating as taught by Chang.
DECISION
On the record before us, we affirm the decision of the Examiner to
reject the 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)(l)(iv).
AFFIRMED
7 Chang 134.
8 Chang 11.
9 Inda 119, 11,22, 58.
10 Indal 1.
11