Ex Parte Oh et al

Patent Trial and Appeal Board

Jun 8, 2018

13597408 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/597,408 08/29/2012 Bookeun Oh
118689 7590 06/12/2018
Apple Inc. c/o POLSINELLI PC
1401 Lawrence Street
Suite 2300
Denver, CO 80202
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.
APL-Pl4416US1 6369
EXAMINER
BARCENA, CARLOS
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
uspt@polsinelli.com
aworsnop@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BOOKEUN OH and RICHARD M. MANK
Appeal2017-008458
Application 13/597 ,408
Technology Center 1700
Before CHRISTOPHER L. CRUMBLEY, CHRISTOPHER L. OGDEN,
and LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
29.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Apple Inc. Appeal Brief of
November 18, 2016 ("App. Br."), 3.
Appeal2017-008458
Application 13/597,408
CLAIMED SUBJECT MATTER
The claims seek to provide "a mechanism for minimizing swelling
and improving capacity retention in high-voltage lithium-polymer batteries
for portable electronic devices." Spec. i-f 6. 2 Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A battery cell, comprising:
a cathode, comprising:
a first cathode active material; and
a second cathode active material with a lower first
coulombic efficiency and a higher energy density than the first
cathode active material;
an anode, comprising:
a silicon-based anode active material; and
a carbonaceous anode active material; and
a pouch enclosing the cathode and the anode, wherein the
pouch is flexible.
App. Br. 18 (Claims Appendix) (emphasis added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Inuzuka
Mao
Gu
Kosuzu
Fujii
Ryu
Bala ya
us 6,024,773
us 6,071,649
US 2003/0148173 Al
US 2003/0157407 Al
US 2011/0223482 Al
US 2011/0293991 Al
US 2014/0134490 Al
Feb. 15,2000
June 6, 2000
Aug. 7, 2003
Aug. 21, 2003
Sept. 15, 2011
Dec. 1, 2011
May 15, 2014
2 Application No. 13/597,408 titled "Increased Energy Density and Swelling
Control in Batteries for Portable Electronic Devices." Hereinafter referred
to as the "Specification" and cited as "Spec."
2
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Application I3/597,408
Shin et al., High Coulombic Efficiency Negative Electrode (SiO-Graphite)
for Lithium Ion Secondary Battery, I I Journal of the Korean
Electrochemical Society 47-50 (2008) (hereinafter "Shin").
REJECTIONS
Claims I, 5, 8, I3, I7, I8, 2I, 22, 26, and29 are rejected under
35 U.S.C. § I03 (pre-AIA) as being unpatentable over Fujii, Shin, and
Balaya. Final Act. 2. 3
Claims I, 5, 7, I3, I7, I8, 20, 22, 26, and28 are rejected under
35 U.S.C. § I03 (pre-AIA) as being unpatentable over Fujii, Kosuzu, and
Balaya. Final Act. 5.
Claims I, 5, 6, I3, I 7-I9, 22, 26, and 27 are rejected under 35 U.S.C.
§ I03 (pre-AIA) as being unpatentable over Mao, Shin, and Gu. Final
Act. 6.
Claims 2--4, 9-I I, I4, and 23-25 are rejected under 35 U.S.C. § I03
(pre-AIA) as being unpatentable over Fujii, Shin, Ryu, and Balaya. Final
Act. 4.
Claims 2--4, 9, IO, I2, I4, I5, and 23-25 are rejected under 35 U.S.C.
§ I03 (pre-AIA) as being unpatentable over Fujii, Kosuzu, Ryu and Balaya.
Final Act. 8.
Claim I6 is rejected under 35 U.S.C. § I03 (pre-AIA) as being
unpatentable over Fujii, Shin, Ryu, Balaya, and Inuzuka. Final Act. 9.
3 We refer to the Final Action of October I 9, 20 I 5 ("Final Act."), the
Examiner's Answer of February 27, 20I 7 ("Ans."), and the Reply Brief of
April 27, 20I 7 ("Reply Br.").
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Application 13/597,408
OPINION
Claim 1 over Fujii, Shin, and Balaya4
In rejecting claim 1 over Fujii, Shin, and Balaya, the Examiner cites
Fujii which describes a lithium battery with a positive electrode made of
LiMno.sFeo.2P04 and LiNio.16sMno.16sCoo.6702. Final Act. 3 (citing Fujii
Tables 1 & 2, example 7); Fujii i-fi-f 162, 165. Fujii provides that the initial
coulombic efficiency of LiMno.sFeo.2P04 is 85% and that of
LiNio.16sMno.16sCoo.6702 is 92.7%. Final Act. 3 (citing Fujii Tables 1 & 2).
The Examiner further cites Balaya which describes a cathode electrode made
of LiMno.sFeo.2P04/C whose specific energy is 678 and a cathode electrode
made of LiCo02/C whose specific energy is 561. Final Act. 3 (citing Balaya
Table 3). Because "Balaya shows the specific energy of lithium manganese
phosphates are higher than lithium cobalt oxides," the Examiner reasons that
the prior art electrode made of LiMno.sFeo.2P04 and LiNio.16sMno.16sCoo.6702
teaches or suggests "a first cathode active material" and "a second cathode
active material with a lower first coulombic efficiency and a higher energy
density than the first cathode active material" as recited in claim 1. Id.
Appellants argue that the Examiner reversibly erred here because
LiNio.16sMno.16sCoo.6702 is a different compound from the LiCo02 described
in Balaya. App. Br. 9, 10; Reply Br. 8-9. Appellants argue that the specific
energy of LiCo02 is not indicative of that of a different compound, namely
LiNio.16sMno.16sCoo.6702, particularly in light of the fact that the
4 Appellants do not present separate arguments for claims 5, 8, 13, 17, 18,
21, 22, 26, and 29 over Fujii, Shin, and Balaya. App. Br. 10. Consistent
with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and based on
Appellants' argument (App. Br. 10), claims 5, 8, 13, 17, 18, 21, 22, 26, and
29 stand and fall with claim 1 over Fujii, Shin, and Balaya.
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Application 13/597,408
LiMno.sFeo.2P04 and LiCo02 are coated with conductive carbon in Balaya.
App. Br. 9, 10; Reply Br. 8-9. Appellants argue that the Examiner has not
sufficiently explained why the comparative energy density between
LiMno.sFeo.2P04/C and LiCo02/C may be extrapolated to the energy
difference between lithium manganese phosphates and lithium cobalt oxides.
App. Br. 10; Reply Br. 9.
Appellants, however, do not identify reversible error in the
Examiner's calculation using the specific energy of LiCo02/C for the
relative energy differential between LiNio.16sMno.16sCoo.6702 and
LiMno.sFeo.2P04. Compare Ans. 4, with Reply Br. 9-10. Appellants cite to
Fujii which states "the energy density of lithium iron phosphate is smaller
compared with lithium-containing transition metal oxides." Reply Br. 10
(citing Fujii i-f 8). Fujii i-f 8, however, offers a solution to the smaller energy
density by "partially or completely substitut[ing]" the Fe of lithium iron
phosphate with Mn." Appellants do not explain why the prior art teaching,
as a whole, identifies reversible error in the Examiner's findings with regard
to the energy differential energy between LiNio.16sMno.16sCoo.6702 and
LiMno.sFeo.2P04. The entirety of Fujii i-f 8 is reproduced below:
As a polyanion positive active material, lithium iron
phosphate (LiFeP04) with an olivine structure has been actively
studied. However, the theoretical capacity of lithium iron
phosphate (LiFeP04) has a relatively low value (170 mAh/g).
Further, in such lithium iron phosphate, the insertion/extraction
of lithium take place at a low potential of 3 .4 V (vs. Li/Li+).
Accordingly, the energy density of lithium iron phosphate is
smaller compared with lithium-containing transition metal
oxides. Thus, as polyanion positive active materials, lithium
manganese iron phosphate (LiMnxFe(l-x)P04) or lithium
manganese phosphate (LiMnP04) has been under consideration.
They have Fe of lithium iron phosphate (LiFeP04) partially or
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Application 13/597,408
completely substituted with Mn, and thus have a reversible
potential near 4 V (vs. Li/Li+).
Appellants have not explained why Fujii's discussion of LiFeP04, which the
prior art distinguishes from lithium manganese iron phosphate (LiMnxF e0 _
x)P04), supports their argument for the Examiner's finding with regard to
LiMno.sF eo.2P04.
Appellants' assertion aside that there is a "lack of self-consistency
between the theoretical and experimental" specific energies in Balaya,
Appellants do not respond to the Examiner's findings with regard to the
relative energy differential between the compounds. Compare Ans. 4, with
Reply Br. 9--10. As the Examiner points out, claim 1 recites "a higher
energy density" between the two materials without requiring an absolute
energy value. Ans. 4. Having considered Appellants' arguments, the
Examiner's findings including the calculation of the energy differential, and
the evidence before us, we are not persuaded that reversible error has been
identified here.
Claim 2 over Fujii, Shin, Ryu, and Balaya5
Claim 2 depends from claim 1 and additionally recites "a separator
disposed between the cathode and the anode, comprising: a first side with a
ceramic coating" and "a second side with a polymer coating." App. Br. 18.
Ryu undisputedly describes "a separator including a polymer substrate
and a ceramic-containing coating layer on the polymer substrate." Ryu i-f 30;
5 Appellants do not present separate arguments for claims 3, 4, 9--11, 14, and
23-25 over Fujii, Shin, Ryu, and Balaya. App. Br. 10-11. Consistent with
the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and based on Appellants
argument (App. Br. 11), claims 3, 4, 9--11, 14, and 23-25 stand and fall with
claim 2 over Fujii, Shin, Ryu, and Balaya.
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Application 13/597,408
compare Final Act. 4, with App. Br. 11. Appellants argue that a "polymer
coating disposed on the second side of the substrate is absent from Ryu" but
do not explain why the inner polymer coating of Ryu is not "a second side
with a polymer coating" or why the language of claim 2 should be limited to
a side with a polymer coating as the topmost layer. App. Br. 11. No
reversible error, therefore, has been identified here.
Claim 1 over Fujii, Kosuzu, and Balaya6
Appellants' arguments for the rejection of claim 1 over Fujii, Kosuzu,
and Balaya mirror those for the rejection over Fujii, Shin, and Balaya.
Compare App. Br. 8-10, with App. Br. 11-12. The rejection of claim 1 over
Fujii, Kosuzu, and Balaya is sustained for the same reasons as detailed
supra.
Claim 2 over Fujii, Kosuzu, Ryu and Balaya 7
Appellants' arguments for the rejection of claim 2 over Fujii, Kosuzu,
Ryu, and Balaya mirror those for the rejection over Fujii, Shin, Ryu, and
Balaya. Compare App. Br. 10-11, with App. Br. 13-14. The rejection of
claim 2 over Fujii, Kosuzu, Ryu, and Balaya is sustained for the same
reasons as detailed supra.
6 Appellants do not present separate arguments for claims 5, 7, 13, 17, 18,
20, 22, 26, and 28 over Fujii, Kosuzu, and Balaya. App. Br. 11-12.
Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and
based on Appellants' argument (App. Br. 12), claims 5, 7, 13, 17, 18, 20, 22,
26, and 28 stand and fall with claim 1 over Fujii, Kosuzu, and Balaya.
7 Appellants do not present separate arguments for claims 3, 4, 9, 10, 12, 14,
15, and 23-25 over Fujii, Kosuzu, Ryu, and Balaya. App. Br. 13-14.
Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and
based on Appellants' argument (App. Br. 14), claims 3, 4, 9, 10, 12, 14, 15,
and 23-25 stand and fall with claim 2 over Fujii, Kosuzu, Ryu, and Balaya.
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Application 13/597,408
Claim 1 over Mao, Shin, and Gu8
In rejecting claim 1 over Mao, Shi, and Gu, the Examiner finds that
Mao describes an electrode of a lithium battery made from "LiNi02 coated
with LiCo02." Final Act. 7 (citing Mao 2:58-59). The Specification
describes an embodiment of the recited battery cell as having "a first cathode
active material (e.g., lithium cobalt oxide) and a second cathode active
material ... (e.g., a lithium-nickel-based compound)," (Spec. i-fi-148, 52), and
the Examiner finds that the prior art teaches an identical chemical structure,
and the properties the claims recite are necessarily present. In re Spada, 911
F.2d 705, 709 (Fed. Cir. 1990); Ans. 4--5 (citing Spec. i140). 9 We further
note that the Specification i156 provides:
The first cathode active material may have a first coulombic
efficiency of greater than 92%, and the second cathode active
material may have a lower first coulombic efficiency of less than
88%. For example, the first cathode active material may be
lithium cobalt oxide, and the second cathode active material may
be a lithium-nickel-based compound.
8 Appellants do not present separate arguments for claims 5, 6, 13, 17-19,
22, 26, and 27 over Mao, Shin, and Gu. App. Br. 12-13. Consistent with
the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and based on Appellants
argument (App. Br. 13), claims 5, 6, 13, 17-19, 22, 26, and 27 stand and fall
with claim 1 over Mao, Shin, and Gu.
9 Appellants argue that Specification i1 40 describes composition with
coulombic efficiencies. Reply Br. 14. Specifically, the Specification
describes that "the first cathode active material may be lithium cobalt oxide
and/or another compound containing lithium, nickel, and/or cobalt with a
first coulombic efficiency that is higher than 92%" and that "second cathode
active material may be a lithium-nickel-based compound with a first
coulombic efficiency of less than 88%, such as lithium nickel oxide." Spec.
i140. Appellants, however, do not address other portions of the
Specification including i-fi-1 48, 52 and the associated figures and do not assert
that the properties are not possessed in the prior art compounds.
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Application 13/597,408
Appellants' argument that the Examiner does not specify the recited
lower first coulombic efficiency and the higher energy density (App. Br. 12-
13) does not persuade us of reversible error, because to the extent that
Appellants assert that there is a "discovery of a previously unappreciated
property of a prior art composition," it has been long established that such a
discovery (if any in this case) "does not render the old composition
patentably new to the discoverer." Atlas Powder Co. v. Ireco, Inc., 190 F.3d
1342, 1347 (Fed. Cir. 1999).
The mere recitation of a property or characteristic not disclosed by the
prior art does not necessarily confer patentability to a composition or a
method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950
( CCP A 197 5). Where, as here, the Examiner establishes a reasonable belief
that because the prior art composition is identical, the property or
characteristic recited in the claims would have been inherent to the product,
the burden of proof shifts to Appellants to show that this characteristic or
property is not possessed by the prior art. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977).
The Examiner finds that Tables 1 and 2 of Mao do not show that the
recited property is not possessed by the prior art. Ans. 5. As the Examiner
notes, Tables 1 and 2 of Mao describe properties "of the LiCo02-coated
LiNi02" without specifying the recited properties as compared between
LiCo02 coated LiNi02. Id. (referring to Mao Tables 1 & 2); Mao 4:15-16.
Because Appellants have not shown that the recited property is not
possessed by the prior art, we sustain the Examiner's rejection of claim 1
over Mao, Shin, and Gu. See App. Br. 12-13; see also Reply Br. 13-15.
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Application 13/597,408
Claim 16 over Fujii, Shin, Ryu, Inuzuka, and Balaya
Claim 16 depends from claim 14, which depends from claim 13,
which recites a method for manufacturing a battery cell identical to that
recited in claim 1. Claim 16 additionally recites "applying a temperature in
the range of 45° C to 100° C to the battery cell to adhere [a] second side [of
a separator] to the cathode or the anode." App. Br. 20.
In rejecting claim 16, the Examiner cites Inuzuka which describes a
process in which "the positive and negative electrodes are laminated to the
separator and dried under heat" and that the "drying temperature is
preferably 60 to 100° C." Inuzuka 5:1-5 (cited in Final Act. 9 and Ans. 5).
Appellants' argument, directed to other portions of the reference (App. Br.
15 (citing "Col. 6, lines 1-5 of Inuzuka"); Reply Br. 17 (citing "Col. 6, Lines
1-5 of Inuzuka")) does not identify reversible error in the Examiner's
findings with regard to Inuzuka.
DECISION
The Examiner's rejections of claims 1-29 are sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
10