Ex Parte Kim et al

Board of Patent Appeals and Interferences

Jun 15, 2012

11937462 (B.P.A.I. Jun. 15, 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.
11/937,462 11/08/2007 Joon-Sup Kim 60097/P849 1780
23363 7590 06/15/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
MOHADDES, LADAN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
06/15/2012 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 JOON-SUP KIM, SUNG-SOO KIM,
JEA-WOAN LEE, and SANG-JIN KIM
____________

Appeal 2011-002965
Application 11/937,462
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-5 and 14-23. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-002965
Application 11/937,462

2
Claim 1 is illustrative:
1. A negative active material for a rechargeable lithium
battery comprising:
a plurality of secondary particles, each secondary particle
comprising an assembly of a plurality of primary particles,
wherein the primary particles comprise a compound represented
by Formula 1:
Formula 1
LixMyVzO2+d ,
wherein, 0.1 ≤ x ≤ 2.5, 0 ≤ y ≤ 0.5, 0.5 ≤ z ≤ 1.5, 0
≤ d ≤ 0.5, and M is a metal selected from the group consisting
of Al, Cr, Mo, Ti, W, Zr, and combinations thereof.

Independent claims 14 and 19 similarly recite a plurality of secondary
particles, each comprising an assembly of a plurality of primary particles.

The Examiner maintains, and Appellants appeal, the rejection of all
the pending claims under 35 U.S.C. § 102(b) as anticipated by Kim
(US Patent Pub. No. 2005/0079417, published April 14, 2005).1, 2
The Examiner also provisionally rejected claims 1, 14, and 19 on the
ground of nonstatutory obviousness-type double patenting over claims 1-2,
8, and 26-27 of Application No. 11/947,708 (Final 2). Appellants appealed
this rejection (App. Br. 3, 7). The Examiner did not repeat this rejection in
the Answer; however, there was not any indication that it was withdrawn
(generally Ans.).
Nonetheless, on the record before us, we do not reach the merits of the

1 The Examiner notes that it was a “typographical error” to include a
rejection of the claims under 35 U.S.C. § 103 in the Final Rejection (see,
Advisory Action 2, mailed Mar. 4, 2010; see also App. Br. 3, footnote 1).
2 The present application and Kim share common inventors and have a
common assignee, that is, Samsung SDI Co., Ltd.
Appeal 2011-002965
Application 11/937,462

3
Examiner’s provisional obviousness-type double patenting rejection. When
all other rejections have been reversed, it would be premature to address a
provisional obviousness-type double patenting rejection, consistent with the
holding of Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010)
(precedential).
PRINCIPLES OF LAW
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of § 102. In re Schaumann, 572 F.2d
312, 317 (CCPA 1978).

ANALYSIS
The Examiner contends that Fig. 15 of Kim shows an “assembly of a
plurality of smaller size (primary) particles which form [a] plurality of larger
(secondary) particles” (Ans. 3). On the other hand, Appellants contend that
“Figure 15 of Kim does not show such assemblies of smaller size particles”
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Application 11/937,462

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(App. Br. 5). Appellants point out that Kim does not expressly describe
primary and secondary particles as claimed (id. at 4, 5). Appellants further
contend that the process of Kim is similar to the process of their
Comparative Example 1 which only produces primary particles (id. at 6;
Reply Br. 3). Appellants emphasize “that the method of Kim does not
produce secondary particles” (Reply Br. 3; emphasis in original).
A preponderance of the evidence supports Appellants’ position that
since the process of Kim is different from that described in the current
Specification, and is similar to the process of their Comparative Example 1,
the Examiner has not shown that Kim inherently produces the claimed
secondary particles comprising an assembly of primary particles (App. Br.
4). The Examiner has also not shown by a preponderance of the evidence
that Kim expressly describes such assemblies. The Examiner’s rejection and
response to argument presented in the Answer do not adequately address the
concerns raised by the Appellants outlined above (Ans. generally).
Under these circumstances, we are constrained to reverse the
anticipation rejection before us.

ORDER
REVERSED

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