13464034 (P.T.A.B. Dec. 10, 2018)

Ex Parte Masarapu et al

Patent Trial and Appeal BoardDec 10, 2018

13464034 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/464,034 05/04/2012 Charan Masarapu 62274 7590 12/11/2018 CHRISTENSEN, FONDER, DARDI & HERBERT PLLC 33 South Sixth Street Suite 4540 Minneapolis, MN 55402 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 5024.34US01 2210 EXAMINER DIGNAN, MICHAEL L ART UNIT PAPER NUMBER 1723 MAIL DATE DELIVERY MODE 12/11/2018 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 PATENT TRIAL AND APPEAL BOARD Ex parte CHARAN MASARAPU, HAIXIA DENG, YONGBONG HAN, YOGESH KUMAR ANGUCHAMY, SUBRAMANIAN VENKATACHALAM, SUJEET KUMAR, and HERMAN A. LOPEZ 1 Appeal 2018-001428 Application 13/464,034 Technology Center 1700 Before KAREN M. HASTINGS, WESLEY B. DERRICK, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-17. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 According to the Appellants, the real party in interest is "Zenlabs Energy, Inc., the successor in interest from the original assignee, Envia Systems, Inc." App. Br. 3. The Specification states that "the U.S. government has certain rights in the inventions." Spec. 1 :6-7. Appeal2018-001428 Application 13/464,034 BACKGROUND The subject matter on appeal relates to "high energy lithium batteries." E.g., Spec. 1: 1 O; Claim 1. Claim 1 is reproduced below from page 28 (Claims Appendix) of the Appeal Brief (line breaks added): 1. A lithium ion secondary battery comprising a positive electrode, a negative electrode, a separator between the positive electrode comprising a lithium metal oxide and the negative electrode comprising a lithium intercalation/alloying composition, supplemental lithium in an amount with an oxidation capacity corresponding to 20% to 110% of the irreversible capacity loss of the negative electrode and an electrolyte comprising lithium ions, wherein the negative electrode lithium intercalation/alloying composition comprises a silicon based active material, wherein during an initial activation charge the battery has a negative electrode charge capacity of about 75% to about 99.5% at a rate of C/20 from an open circuit voltage to 4.6V relative to the sum of the first activation cycle positive electrode charge capacity at a rate of C/20 from an open circuit voltage to 4.6V plus the oxidation capacity of any supplemental lithium, and wherein following activation of the battery in the initial activation charge and an initial discharge at a C/20 rate, the negative electrode has a capacity greater than the positive electrode at a discharge rate of C/3 or greater discharged from 4.5V to 1.5V, the positive electrode has a specific discharge capacity of at least 200 mAh/g based on the weight of the positive electrode active material at a rate of C/3 discharged from 4.5V to 1.5V, 2 Appeal2018-001428 Application 13/464,034 the negative electrode has a specific discharge capacity of at least about 700 mAh/g based on the weight of the negative electrode active material at a rate of C/3 discharged from 4.5V to 1.5V, and the battery has a discharge energy density of at least about 250 Wh/kg at C/3 when discharged from 4.5V to 1.5V. ANALYSIS Claims 1-17 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Kumar (US 2012/0028105 Al, published Feb. 2, 2012) in view of Buckley (US 2009/0263707 Al, published Oct. 22, 2009) "with reference to Amiruddin [(US 2012/0107680 Al, published May 3, 2012)], Lopez [(US 2011/0111294 Al, published May 12, 2011)], and Wu [(High Capacity, Surface-Modified Layered Li[Li(1-xJJMn(2-xJ/3Nix/3Coxl3] 02 Cathodes with Low Irreversible Capacity Loss, 9 Electrochemical and Solid-State Letters A22I (2006))], all three of which are incorporated into Kumar by reference." Ans. 2. We reverse the rejection because the disclosure of Lopez, which is necessary to the rejection, is not available as prior art. The Examiner acknowledges that, because the named inventors of Lopez are identical to the named inventors of the application subject to this appeal, "Lopez is ... not available as prior art underÂ§ I02(a), nor under Â§ I02(e) because ofÂ§ I03(c)." Ans. 8. The Examiner does not assert that Lopez is available as prior art underÂ§ I02(b). The Examiner finds, however, that because Lopez is incorporated by reference into Kumar, the disclosure of Lopez is effectively available as prior art because "[t]he final rejections based on Kumar ... treat Kumar as if it included the text of all the copending applications [ e.g., Lopez] it incorporates." Id. at 8-9. Even assuming that the disclosure of Lopez is fully incorporated by reference into Kumar, we are not persuaded that such an incorporation 3 Appeal2018-001428 Application 13/464,034 converts the disclosure of Lopez into prior art underÂ§ 102(a) orÂ§ 102(e). As the CCP A explained in In re Katz: [A] printed publication cannot stand as a reference under s 102( a) unless it is describing the work of another. ... [O]ne's own work is not prior art under s 102(a) even though it has been disclosed to the public in a manner or form which otherwise would fall under s 102(a). Disclosure to the public of one's own work constitutes a bar to the grant of a patent claiming the subject matter so disclosed ( or subject matter obvious therefrom) only when the disclosure occurred more than one year prior to the date of the application, that is, when the disclosure creates a one-year time bar, frequently termed a "statutory bar," to the application under s 102(b) .... [C]ertainly one's own invention, whatever the form of disclosure to the public, may not be prior art against oneself, absent a statutory bar. 687 F.2d 450, 454 (CCP A 1982) ( emphasis added) (internal quotation marks omitted). The portions of Lopez relied on by the Examiner, see Ans. 3-5, 13-16 (relying on Lopez as teaching or suggesting significant aspects of claim 1 ), do not constitute "the work of another," see Katz, 687 F.2d at 454, and therefore are not available as prior art. The fact that Lopez may have been incorporated by reference into Kumar does not change that. See id. ("[O]ne's own invention, whatever the form of disclosure to the public, may not be prior art against oneself, absent a statutory bar." (emphasis added)). Because the Examiner's analysis of every claim on appeal relies significantly on the disclosure of Lopez, and the Examiner has not shown that the claims would have been obvious in the absence of reliance on the disclosure of Lopez, we cannot sustain the rejection. 4 Appeal2018-001428 Application 13/464,034 CONCLUSION We REVERSE the Examiner's rejections of claims 1-17. REVERSED 5