Ex Parte Manthiram et al

Patent Trial and Appeal Board

Sep 18, 2017

13301447 (P.T.A.B. Sep. 18, 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.
13/301,447 11/21/2011 Arumugam Manthiram 5119-20502 1098
35690 7590 09/20/2017
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARUMUGAM MANTHIRAM and
SUKEUN YOON
Appeal 2016-006664
Application 13/301,447
Technology Center 1700
Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
JEFFREY R. SNAY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 42—54. We have jurisdiction pursuant
to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a method of making a
composition comprising a Sb-MOx-C nanocomposite. The composition is
synthesized via reduction of antimony (Sb) oxide particles with specified
metal particles in the presence of at least one conductive carbon compound.
In particular, the aforementioned components are provided, the components
are mixed together, and the mixture is subjected to mechanical milling to
effect the transfer of oxygen to the metal from the antimony oxide particles,
wherein the oxygen transfer, in combination with the conductive carbon
Appeal 2016-006664
Application 13/301,447
compound present in the mixture, results in formation of the Sb-MOx-C
nanocomposite.
Claim 42 is illustrative and reproduced below:
42. A method of making a composition, comprising:
providing antimony oxide particles;
providing metal particles;
providing at least one conductive carbon
compound;
mixing together the antimony oxide particles with
the metal particles and at least one conductive carbon
compound,
subjecting the mixture to a mechanical milling
process, wherein during the mechanical milling process
oxygen from the antimony oxide particles is transferred
to the metal to oxidize the metal, which, in combination
with at least one conductive carbon compound, forms an
Sb-MOx-C nanocomposite, where Mis Al, Mg, Ti, V, Cr,
Mn, Fe, Co, Ni, Zr, Mo, W, Nb, Ta, or combinations
thereof.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Chiang et al. US 6,599,622 B1 July 29, 2003
(hereinafter “Chiang”)
Kaneko et al. US 7,285,329 B2 Oct. 23, 2007
(hereinafter “Kaneko”)
The Examiner maintains the following ground of rejection:
Claims 42—54 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chiang in view of Kaneko.
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Application 13/301,447
We reverse the stated rejection for substantially the reasons argued by
Appellants (App. Br. 3—11).
The Examiner maintains that Chiang teaches mixing a metal-metal
oxide composition having a formula MeWle1^ where metal oxide, such as
antimony oxide, may be chosen as Me1; and alkali metal, hydrogen, or other
metal elements can be chosen as Me11; and wherein X can comprise carbon,
which teachings, in the Examiner’s view, read on the mixing of antimony
oxide with metal particles and carbon compound as recited in Appellants’
claims (Non-Final Act. 3-A; Chiang, col. 2,11. 34—36, 53—57, col. 3,11. 35—
47, col. 4,1. 61—col. 5,1. 18, col. 12,11. 24—25, Tables 1—2, Example 1).1
The Examiner finds that Chiang teaches: 1) “mixing of fine powders
of different materials (Col. 18, lines 62—65 of US ’662)”, 2) a particle
dispersion with smallest dimension “less than 0.1 pm (Col. 10, lines 29—34
US ’662)”, which is of nanoparticle size, and 3) “applying mechanical
milling for the mixed oxides which is partially reduced (col. 19, lines 22—43
of US ’662), which reads on the mixing process as recited in the instant
claim” (Non-Final Act. 4).
The Examiner finds that “US ’662 does not specify conductive carbon
compound as recited in the instant claim”; but, the Examiner determines that
“US ’329 teaches applying activated carbon (Col. 9, lines 30-32 of US ’329)
with particle size 0.01 -100 pm”, which, in the Examiner’s view, “read on
the claimed conductive carbon compound” (Non-Final Act. 4).
Based on the teachings of Chiang and Kaneko, the Examiner contends
that (Non-Final Act. 4—5):
1 The Examiner references the Non-Final Action of September 23, 2013 for
the statement of the rejection (Final Act. 2).
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Application 13/301,447
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to apply carbon
nanoparticles as demonstrated by US'329 in the process of US'
662 because US' 329 teaches that carbon is suitable for the
reduction reaction (Col.2, lines 62-67 and Col.9, lines 14-22 of
US' 329). Because US' 662 in view of US'329 teaches all of the
mixing composition and process limitations, it would have been
obvious to one of ordinary skill in the art that the claimed features
of "during the mechanical milling process oxygen from the
antimony oxide particles is transferred to the metal to oxidize the
metal, which, in combination with at least one conductive carbon
compound, forms a Sb-MOx-C nanocomposite" would be
naturally flow from US' 662 in view of US' 329.
Establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, as argued by Appellants, the Examiner has not established that
Chiang teaches that the mixed-metal composition is chemically or
thermodynamically reduced during the mechanical milling process in the
presence of at least one conductive carbon compound to form Sb-MOx-
C nanocomposite as required by appealed claim 42 (App. Br. 5—6, 9).
Rather, Chiang teaches or suggests the use of a carbon monoxide/carbon
dioxide atmosphere for the reduction of mixed metal oxides to a mixture of
metal and metal oxide following mechanical milling (App. Br. 9; Chiang,
col. 22,11. 5—23; see also id. at col. 10,11. 7—16, col. 18,1. 66—col. 19,1. 43).
As argued and reiterated by Appellants, Chiang teaches that “the
starting compound is a mixed metal oxide” wherein “the metal or metals that
have the least negative Gibbs free energy of formation among those metal
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Application 13/301,447
oxides comprising the starting mixed metal oxide form the dispersed metal
phase or phases;” hence, “there is no need to add carbon to the process of
US ’622 [Chiang].” (App. Br. 10; Chiang, col. 5,11. 54—60, abstract).
Consequently, we concur with Appellants that the Examiner’s
proffered rationale for modifying Chiang by applying the carbon
nanoparticles of Kaneko to the process of Chiang as a reduction agent for a
reducing reaction lacks an apparent reason and the necessary factual
predicate for one of ordinary skill in the art to do so and, in so doing,
naturally arrive at the claimed process wherein the conductive carbon
compound is employed during the mechanical milling process for forming
Sb-MOx-C nanocomposite as proposed by the Examiner (App. Br. 9—10:
Non-final Act. 4—5; Ans. 5). This is so because Appellants’ claimed process
includes transferring oxygen from antimony oxide particles to the metal (M)
to oxidize the metal during mechanical milling conducted in the presence of
conductive carbon compound to form Sb-MOx-C nanocomposite, not
preparing a mixed metal oxide by mechanical milling that is reduced during
a subsequent reducing reaction, as Chiang teaches (App. Br. 9-11; Chiang,
col. 19,11. 22-43, col. 18,11. 65-66, col. 22,11. 1-32).
In other words, the Examiner’s references to certain sections of
Chiang’s disclosure respecting the formation of a composite material by
partial reduction or internal reduction of a precursor metal oxide to a first
material metal with a second material that includes a metal oxide wherein
the first material metal has a less negative Gibbs free energy than the metal
of the second material metal oxide coupled with the Examiner’s reliance on
Kaneko for teaching the application of activated carbon in a high
temperature (600-1600 °C) metal oxide reduction reaction of metal oxide
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Application 13/301,447
powder with the carbon as set forth in the stated rejection fails to establish
that Chiang modified by Kaneko would have suggested a method for
forming Sb-MOx-C nanocomposite by mixing antimony oxide particles
together with metal particles and a carbon compound (at least one
conductive carbon compound) and subjecting the mixture to mechanical
milling where oxygen is transferred from the antimony oxide to the metal
during the milling and where, in combination with the presence of the
conductive carbon, Sb-MOx-C nanocomposite is formed, as required by
Appellants’ claim 42 method (Non-Final Act. 3—5; Chiang, abstract, col. 2,
11. 34—36, 53-57, col. 3,11. 35^17, col. 4,1. 61-col. 5,1. 18, col. 10,11. 29-
34, col. 18,11. 62—65, col. 19,11. 22-43, Example 1; Kaneko, col. 2,11. 62—
67, col. 9,11. 14—22, 30-32).
Thus, the Examiner’s rejection appears to be based upon
impermissible hindsight in view of the Appellants’ disclosure. See also In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
Accordingly, we do not sustain the rejection.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
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