Ex Parte Sanchez-Carrera et al

Patent Trial and Appeal Board

Sep 15, 2017

13616320 (P.T.A.B. Sep. 15, 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.
1576-0858 6067
EXAMINER
DOUYETTE, KENNETH J
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
13/616,320 09/14/2012
10800 7590 09/18/2017
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Roel S. Sanchez-Carrera
09/18/2017 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 ROEL S. SANCHEZ-CARRERA,
BORIS KOZINSKY, TIMM LOHMANN,
PAUL ALBERTUS, and JOHN F. CHRISTENSEN
Appeal 2016-007235
Application 13/616,3201
Technology Center 1700
Before JEFFREY T. SMITH, DONNA M. PRAISS,
and CHRISTOPHER L. OGDEN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—5, 7—13, and 15—17. We have jurisdiction under 35 U.S.C. § 6.
1 The real party in interest Robert Bosch GmbH. App. Br. 2.
Appeal 2016-007235
Application 13/616,320
Appellants’ invention is directed generally to a method of producing a
Li-ion battery displaying increased resistance to nucleophilic attack. (Spec.
19). Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A method of producing a Li-ion battery displaying
increased resistance to nucleophilic attack, the method
comprising:
a. providing a first electrode,
b. providing a second electrode spaced apart from the
first electrode,
c. providing at least one electrolyte selected as having an
electrophilicity index below 0.8eV.
The Examiner finally rejects claims 1—5, 7, 8, 10, 12, 13, and 15—17
under 35 U.S.C. § 102(b) as anticipated by or obvious under 35 U.S.C.
§ 103(a) over each of Owen et al. (US 2009/0253036 Al, pub. Oct. 8, 2009)
(“Owen”), Oyama (US 6,509,122 Bl, issued Jan. 21, 2003) or Kamenski
(US 3,873,369, issued Mar. 25, 1975); and claims 9 and 11 as obvious under
35 U.S.C. § 103(a) over each of Owen, Oyama or Kamenski in view of
Nimon et al. (US 2006/0078790 Al, pub. Apr. 13, 2006) (“Nimon”). (Final
Act. 2-25).
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Appeal 2016-007235
Application 13/616,320
OPINION2
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner and
add the following.
The complete statement of the rejections on appeal appear in the Final
Office Action. (Final Act. 2—25).
Appellants argue each of Owen, Oyama, and Kamenski fail to
disclose the electrophilicity index of any of the electrolytes used in the
electrochemical cells. (App. Br. 5—6). Appellants argue each of Owen,
Oyama, and Kamenski discloses triethylamine is an additive to an existing
electrolyte, specifically as a solvent for an electrolyte. (Id. at 6—7).
Appellants also argue “[tjhere is no basis to determine that the electrolytes in
Owen, Oyama or Kamenski will have the property recited in claims 1 and
10, namely an electrophilicity index below 0.8eV.” (Id. at 7). Appellants
further argue there is no basis to conclude that the electrolytes of Owen,
Oyama or Kamenski will provide a lithium ion battery with the claimed
beneficial property of providing increased resistance to nucleophilic attack.
(Id.).
Appellants’ arguments are without persuasive merit. “From the
standpoint of patent law, a compound and all of its properties are
inseparable.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). Thus, the
mere recitation of a newly discovered property, inherently possessed by a
2 Appellants’ arguments are not directed to a specific claim. (App. Br. 4—
10). Appellants argue independent claims 1 and 10 together. Appellants
have also not addressed separately rejected claims 9 and 11. We select
independent claim 1 as representative of the subject matter on appeal.
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Appeal 2016-007235
Application 13/616,320
prior art composition, does not cause a claim drawn to that composition to
distinguish over the prior art. Appellants have not disputed that
triethylamine is recognized as an electrolyte and is incorporated in the
electrolytes of Owen, Oyama, and Kamenski. Claims 4 and 12 expressly
identify triethylamine as an electrolyte that has an electrophilicity index
below 0.8eV. The disclosure of triethylamine as a solvent for use in
conjunction with an electrolyte does not detract from the electrolyte
properties of triethylamine. It is further noted the Specification recognizes
that triethylamine is a typical electrolyte. (Spec. 125, Fig. 4)
Claim 1 specifies “providing at least one electrolyte selected as having
an electrophilicity index below 0.8eV.” The claim does not specify the
electrolyte composition, composed of individual electrolytes, has an
electrophilicity index below 0.8eV. The claim only requires at least one of
the electrolyte components has the electrophilicity index property. The
claim, as phrased, indicates the property of providing increased resistance to
nucleophilic attack is achieved by the electrolyte comprising at least one
electrolyte having an electrophilicity index below 0.8eV. Appellants have
not directed us to evidence that establishes when the electrolyte is present as
required by each of Owen, Oyama, and Kamenski it fails to obtain the
property of providing increased resistance to nucleophilic attack.
Accordingly, we sustain the Examiner’s prior art rejections of claims
1—5, 7—13, and 15—17 under 35 U.S.C. § 103(a) for the reasons stated above
and those presented by the Examiner.
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Appeal 2016-007235
Application 13/616,320
ORDER
The decision of the Examiner rejecting claims 1—5, 7—13, and 15—17
is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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