13344802 (P.T.A.B. Oct. 17, 2018)

Ex Parte SCHULZ-DOBRICK et al

Patent Trial and Appeal BoardOct 17, 2018

13344802 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/344,802 01/06/2012 Martin SCHULZ-DOBRICK 22850 7590 10/19/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 392216US99 7732 EXAMINER PATEL, RONAK C ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 10/19/2018 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN SCHULZ-DOBRICK and SIMON SCHRODLE Appeal2017-002711 Application 13/344,802 Technology Center 1700 Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and AVEL YN M. ROSS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection under 35 U.S.C. Â§ 103(a) of claims 12-20 as unpatentable over the combined prior art of Nakaoka (US Pub. 2009/0226811 Al; Sept. 10, 2009), Tatsumi (US Pub. 2010/0196761 Al; Aug. 5, 2010), and Kang (US Pub. 2005/0058588 Al; Mar. 17, 2005). 2 An oral hearing was held on September 25, 2018. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). 1 The real party in interest is identified as BASF SE (Appeal Br. 1 ). 2 The Examiner alternately used Nakaoka and Tang as the primary reference (Final Action 2-8). Appeal2017-002711 Application 13/344,802 We affirm. CLAIMED SUBJECT MATTER Claim 12 is representative: 12. A particulate transition metal carbonate, compnsmg: a transition metal carbonate of Cr, V, Mn, Ni, Fe, Co, Zn, Ti, Zr, or any combination thereof, wherein particles of the transition metal carbonate are essentially spherical, a proportion of particles with a diameter greater than 50 Âµm is less than O .1 % by weight, a mean diameter D50 of particles of the transition metal carbonate is from 6 to 19 Âµm, and a ratio of tamped density to the mean diameter is greater than 0.08 kg/(1-Âµm). (Appeal Br. Claims Appendix). OPINION Upon consideration of the evidence in this appeal and each of Appellants' contentions as set forth in the Appeal Brief filed Aug. 1, 2016, as well as the Reply Brief filed Dec. 22, 2016, we determine that Appellants have not demonstrated reversible error in the Examiner's rejection (e.g., Ans. 2-18 (mailed Oct. 24, 2016)). In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining the Board's long-held practice of requiring Appellants to identify the alleged error in the Examiner's rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following for emphasis. It has been established that "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a 2 Appeal2017-002711 Application 13/344,802 person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264-- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellants do not dispute the Examiner's findings with respect to the teachings of the applied prior art; rather, they allege that there is reversible error because the Examiner impermissibly mixed and matched the particle parameters from different samples in the applied prior art and that there is no motivation to use the D50 of the carbonate compound of Tatsumi in the carbonate compound of Nakaoka ( or Kang) as proposed by the Examiner (Appeal Br. 3-10; Reply Br. 1--4). These arguments are not persuasive. Appellants do not sufficiently address the Examiner's position that there is a limited number of possibilities in the applied prior art combination needed to arrive at the claimed carbonate's ranges of characteristics that are all explicitly taught or suggested to be overlapping ranges with those recited herein for desirable properties for a metal carbonate useful as a lithium ion cathode active material (Ans. generally). See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness."). Cf Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200 possible combinations rendered all possible formulations obvious). As pointed out by the Examiner, each reference explicitly suggests the desirability of the claimed physical characteristics of a metal carbonate 3 Appeal2017-002711 Application 13/344,802 spherical particles useful as cathode lithium ion active material, such that one of ordinary skill in the art would have, using no more than ordinary creativity, made such a material that had all of the claimed properties (e.g., Ans. 11, 12, 17; Nakaoka abstract, ,r,r 39, 41, 43; Tatsumi abstract, ,r 35; Kang ,r 5, 56, claims 2 and 4). KSR Int'! Co., 550 U.S. at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."); Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the "inferences and creative steps," as well as routine steps, that an ordinary artisan would employ). Furthermore, inasmuch as these properties were known in the art as suitable, indeed desirable, for a metal carbonate lithium ion battery cathode active material, it is incumbent upon Appellants to establish that the present inventors had to resort to more than routine experimentation to determine if attainment of these desirable properties would be achievable in a cathode material of the type disclosed by Nakaoka or Kang. However, no such evidence is of record. "Obviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (quoting In re O 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988)). The only explanation proffered by Appellants is that they have controlled the morphology "by introducing greater amounts of mechanical power" (Reply Br. 4, pointing to Spec. 7). Appellants' Specification describes that mechanical power in the range from 50 to 10,000 W /I may be used in a proportion of the suspension (Spec. 7). This falls short of the necessary evidence, or persuasive technical reasoning, to explain why one of ordinary 4 Appeal2017-002711 Application 13/344,802 skill would have been unable to attain the claimed physical parameters which are all taught to be desirable in the pertinent applied prior art. It is noted that Appellants do not rely upon any evidence of unexpected results. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 5