Ex Parte Venkatachalam et al

Patent Trial and Appeal Board

Oct 30, 2017

13755263 (P.T.A.B. Oct. 30, 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.
13/755,263 01/31/2013 Subramanian Venkatachalam 5024.05US02 2091
62274 7590 10/30/2017
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
33 South Sixth Street
Suite 3950
Minneapolis, MN 55402
EXAMINER
BUCHANAN, JACOB
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
10/30/2017 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 SUBRAMANIAN VENKATACHALAM, HERMAN LOPEZ, and
SUJEET KUMAR
(Applicant: ENVIA SYSTEMS INC.)1
Appeal 2016-002835
Application 13/755,263
Technology Center 1700
Before MARK NAGUMO, MONTE T. SQUIRE, and LILAN REN,
Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision rejecting claims 1—4, 6—10,
and 12—20, which constitute all the claims pending in this application.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify Envia Systems Inc. as the real party in interest.
App. Br. 3.
2 In our Decision, we refer to the Specification filed January 31, 2013
(“Spec.”); Final Office Action dated January 9, 2015 (“Final Act.”); Appeal
Brief dated June 9, 2015 (“App. Br.”); Examiner’s Answer to the Appeal
Brief dated November 3, 2015 (“Ans.”); and Reply Brief dated December
31,2015.
Appeal 2016-002835
Application 13/755,263
We AFFIRM.
The Claimed Invention
Appellants’ disclosure relates to a method for the synthesis of a
layered lithium metal oxide composition comprising precipitating a mixed
metal hydroxide composition from a solution comprising +2 cations wherein
the hydroxide composition has a selected composition. Spec. 2; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (App. Br.
22) (key disputed claim language italicized and bolded):
1. A method for the synthesis of a layered lithium
metal oxide composition, the method comprising,
precipitating a mixed metal hydroxide
composition from a solution comprising +2 metal
cations in an oxygen free atmosphere wherein the mixed
metal hydroxide composition has a selected composition;
drying the mixed metal hydroxide composition in
an oxygen free atmosphere to form a dry mixed metal
hydroxide composition;
mixing a lithium source in powder form with the
dry mixed metal hydroxide composition to form a
mixture;
heating the mixture of the lithium source and the
dry mixed metal hydroxide composition in an oxygen
containing atmosphere to a temperature from about
300°C to about 700°C to form a metal oxide
composition; and
heating the metal oxide composition in an oxygen
containing atmosphere to a temperature from about
750°C to about 1200°C to form a crystalline layered
lithium metal oxide composition, which is lithium rich
relative to a LiMCC reference composition where M
represents metal cations.
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The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Kweon et al.,
(hereinafter “Kweon”)
Yang et al.,
(hereinafter “Yang”)
Kang et al.,
(hereinafter “Kang”)
Matsumoto
Sun
US 2001/0031397 Al Oct. 18, 2001
US 2002/0006550 Al Jan. 17,2002
US 2004/0091779 Al May 13,2004
JP 2699176 B2 Jan. 19, 1998
WO 2006/109930 Al Oct. 19, 2006
Lee et al., Synthetic optimization ofLi[Nii/3Coi/3Mni/3]02 via co-precipitation,
Electrochimica Acta 50, 939—948 (2004) (hereinafter “Lee”).
Thackeray et al., Li2MnO 3-stabilized Li MO 2 (M = Mn, Ni, Co) electrodes for
lithium-ion batteries, Journal of Materials Chemistry 17, 3112—3125 (2007)
(hereinafter “Thackeray”).
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 6—8, 10, 12, and 17—20 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Kang in view of Lee and
Matsumoto3 (“Rejection 1”). Final Act. 3; Ans. 2.
2. Claims 3 and 4 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Kang in view of Lee and Matsumoto, as applied
to claim 1 above, and further in view of Yang (“Rejection 2”). Final Act. 6;
Ans. 2.
3 For each of the rejections, the Examiner refers and cites to the English
machine translation of the Matsumoto reference docketed August 13, 2014.
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3. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kang in view of Lee and Matsumoto, as applied to claim
1 above, and further in view of Thackeray and in evidence of Kweon
(“Rejection 3”). Final Act. 8—9; Ans. 2.
4. Claim 13 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kang in view of Lee and Matsumoto, as applied to claim
12 above, and further in view of Sun (“Rejection 4”). Final Act. 9; Ans. 2.
5. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kang in view of Lee and Matsumoto, as applied to claim
12 above, and further in view of Thackeray and Sun (“Rejection 5”). Final
Act. 10; Ans. 2.
6. Claims 15 and 16 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Kang in view of Lee and
Matsumoto, as applied to claim 12 above, and further in view of Thackeray
(“Rejection 6”). Final Act. 11; Ans. 2.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action, which we adopt as our own.
We highlight and address specific findings and arguments below for
emphasis.
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Application 13/755,263
Rejection 1
Claims 1, 2, 6—8, 10, 12, and 17—20
Appellants argue claims 1, 2, 6—8, 10, 12, and 17—20 as a group. App.
Br. 11—12. We select claim 1 as representative of this group and the
remaining claims subject to this rejection stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that the combination of Kang, Lee, and
Matsumoto suggests a method for synthesis of a layered lithium metal oxide
composition satisfying all of the steps of claim 1 and concludes that the
combination would have rendered claim 1 obvious. Final Act. 3^4.
The Examiner finds that the combination of Kang and Lee suggests
the majority of the steps of claim 1, but that the combination does not
explicitly disclose drying the mixed hydroxide composition in an oxygen
free atmosphere to form a dry metal hydroxide composition, as required by
the claim. Final Act. 3^4 (citing Kang, Abstract, 125; Lee, Abstract, p. 940
(Experimental Section)). The Examiner, however, relies on Matsumoto for
disclosing this missing claim step. Id. at 4.
In particular, the Examiner finds that Matsumoto discloses a lithium
secondary battery comprising a positive active material of the formula
Lix(Coi.yNiy)02 and the positive active material formed by co-precipitation
of cobalt and nickel is a carbonate. Final Act. 4 (citing Matsumoto 12,11.
11—17,13,11. 3, 35—41). The Examiner further finds that the resulting
precipitate is dried at 140°C in argon (an oxygen free atmosphere) before it
is mixed with a lithium source and subsequently heat treated. Id. at 4 (citing
Matsumoto 13,11. 37-41).
Based on the above findings, the Examiner concludes that:
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It would have been obvious to one of ordinary skill in the
art at the time the invention was made to combine the argon
drying of the precipitate of Matsumoto with the drying step of
modified Kang for the purpose of preventing contamination or
reactivity of the precipitate with external species by using an
inert gas.
Final Act. 4.
Appellants argue that the Examiner’s rejection should be reversed
because the combined teachings of Kang, Lee, and Matsumoto do not render
the claimed inventionprima facie obvious. App. Br. 12. In particular,
regarding claim 1, Appellants argue that none of the references, whether
alone or in combination, teach or suggest: (1) co-precipitation of a mixed
metal hydroxide in an oxygen free atmosphere for a lithium rich
composition; (2) drying of any lithium metal hydroxide under an oxygen
free atmosphere; and (3) drying of a lithium rich metal hydroxide under an
oxygen free atmosphere, as claimed. Id. at 13. Appellants also argue that
“there is no motivation to combine the references as suggested by the
Examiner.” Id. at 13; see also id. at 15 (same).
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination that the combination of Kang, Lee,
and Matsumoto suggests all of the steps of claim 1 and conclusion that the
combination would have rendered the claimed method obvious. Kang,
Abstract, 125; Lee, Abstract, 939-940 (Introduction section), 940
(Experimental section); Matsumoto 12,11. 11—17,13,11. 3, 35—41.
Contrary to what Appellants argue, the cited art does suggest co­
precipitation of a mixed metal hydroxide in an oxygen free atmosphere for a
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lithium rich composition. In particular, as the Examiner finds (Ans. 2—3),
Lee teaches that the lithium metal oxide powder can be made by using a co­
precipitation process that occurs under a nitrogen atmosphere. Lee, 940-941
(Experimental section). As the Examiner further finds (Ans. 3), Kang
teaches a lithium rich composition (Kang | 8) which, in combination with
Lee, suggests co-precipitating a mixed metal hydroxide in an oxygen free
atmosphere for a lithium rich composition.
Moreover, we concur with the Examiner’s finding that the prior art
suggests the claim step of drying the mixed metal hydroxide composition in
an oxygen free atmosphere. In particular, as the Examiner finds (Ans. 4),
Matsumoto discloses a lithium battery material formed by the co­
precipitation of cobalt and nickel and that the resulting precipitate is dried at
140°C in argon (an oxygen free atmosphere) before it is mixed with a
lithium source and subsequently heat treated. Matsumoto 12,11. 11—17,13,
11. 3, 35—41.
Appellants have not come forward with specific evidence and
argument demonstrating reversible error in any of the Examiner’s findings
of fact.
The Examiner also provides a reasonable basis and identifies a
preponderance of the evidence in the record to evince why one of ordinary
skill would have combined the teachings of the references to arrive at
Appellants’ claimed invention. Ans. 3^4 (explaining that one of ordinary
skill would have been motivated to use an inert (nitrogen) atmosphere in the
co-precipitation step of Kang because Lee teaches that a nitrogen
atmosphere plays an important role in the purity of the metal hydroxide);
Final Act. 4 (finding that one of ordinary skill would have had reason to
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combine the Matsumoto’s argon drying of the precipitate step with modified
Kang’s drying step for the purpose of preventing contamination or reactivity
of the precipitate with external species by using an inert gas); Ans. 4
(explaining that it would have been obvious to one of ordinary skill to “use
an inert gas, like argon of the drying step of Matsumoto, with the drying step
of Kang for the purpose of preventing undesired reactions or contamination
that may occur with reactive gases, such as oxygen”).
Appellants fail to direct us to sufficient evidence or provide an
adequate technical explanation to establish why the Examiner’s articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
We do not find Appellants’ argument that “Matsumoto does not teach
anything of relevance for the processing by hydroxide co-precipitation of
lithium rich metal oxide compositions” (App. Br. 13) persuasive because it
is premised on what Appellants contend the Matsumoto reference teaches
individually, and not on the combined teachings of the references as a whole
and what the combined teachings would have suggested to one of ordinary
skill in the art. One cannot show non-obviousness by attacking references
individually where the rejection is based on a combination of references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Contrary to what Appellants’ argument suggests, and as the Examiner
explains at page 4 of the Answer, the Examiner relies on Kang—not
Matsumoto—for teaching the hydroxide co-precipitation of lithium rich
metal oxide compositions.
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Appellants’ contentions that “the references do not teach or suggest
that the atmosphere during co-precipitation is relevant for anything” (App.
Br. 14) and “none of the cited references recite a relevant problem” (id. at
15) are not well taken because the references and Examiner’s reasoning for
combining the references does not have to address the same problem that
Appellants’ claimed invention addresses. KSRInt’l Co. v. Teleflex, Inc., 550
U.S. 398, 420 (2007) (explaining that any need or problem known in the art
can provide a reason for combining the elements in the manner claimed); Ex
parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise [have been] obvious.”).
Appellants’ assertions that “there is no description of the reasoning
behind the processing parameters in the secondary references” (App. Br. 14)
and “the differences in the compositions ... are significant” (id. at 15) are
not persuasive of reversible error because they are conclusory and
Appellants do not provide an adequate technical explanation or direct us to
sufficient evidence in the record to support them. Attorney argument is not
evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Claim 12
Claim 12 depends from claim 1 and recites:
The method of claim 1 further comprising applying a
stabilization coating composition to the lithium metal oxide
composition to form a positive electrode active material.
App. Br. 23 (Claims App’x).
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The Examiner determines that the combination of Kang, Lee, and
Matsumoto suggests all of the steps of claim 12 and concludes that the
combination would have rendered claim 12 obvious. Final Act. 3—6.
Appellants present an additional argument for the patentability of
claim 12 based on unexpected results. App. Br. 16; Reply Br. 8. It is well
established that the burden of showing unexpected results rests on the person
who asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of
unexpected results must be commensurate in scope with the claims. See In
re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
We do not find Appellants’ unexpected results argument persuasive
for the well-stated reasons provided by the Examiner at pages 6—8 of the
Answer. In particular, we find that Appellants have not shown reversible
error in the Examiner’s findings that the evidence relied upon by Appellants
is not compared to the closest prior art (Kang) and is not commensurate in
scope with the breadth of claim 1 and, thus, is not persuasive evidence of
nonobviousness.
Appellants’ assertion that they have “established unexpected
improved results associated with claim 12” (App. Br. 16) is conclusory and,
without more, insufficient to establish unexpected results. De Blauwe, 736
F.2d at 705 (Fed. Cir. 1984) (“It is well settled that unexpected results must
be established by factual evidence. Mere argument or conclusory statements
in the specification does not suffice.”).
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Claims 17—20
Appellants additionally argue claims 17—20 as a group. App. Br. 16.
We select claim 17 as representative and claims 18—20 stand or fall with
claim 17. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 17 depends from claim 12 and recites:
The method of claim 12 wherein the positive electrode active
material having a discharge capacity at a 10th discharge cycle
of at least 250 mAh/g at room temperature at a discharge rate of
C/3 when discharged from 4.6 volts to 2.0 volts after the
material is activated in the first cycle through a charge to 4.6V
at a rate of C/10.
App. Br. 24 (Claims App’x).
The Examiner determines that the combination of Kang, Lee, and
Matsumoto suggests all of the steps of claim 17 and concludes that the
combination would have rendered claim 17 obvious. Final Act. 3—6.
Appellants argue that the Examiner rejection of claim 17 should be
reversed because the rejection “does not provide a reasonable expectation of
success.” App. Br. 17. In particular, Appellants contend that the secondary
references “do not provide any reason that the combination would be helpful
to improve the performance of the Kang material” and “do not identify any
problem to solve related to the processing differences for lithium rich
materials.” Id. at 17; see also Reply Br. 9.
We do not find Appellants’ argument persuasive of reversible error in
the Examiner’s rejection because, as discussed above, the prior art
references and Examiner’s reasoning for combining the references need not
address or be directed to the same problem as the claimed invention. KSR,
550 U.S. at 420; Obiaya, 227 USPQ at 60. Contrary to what Appellants’
argument suggests, there is no requirement that the combination be helpful
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to improve the performance of the Kang material or identify a problem to
solve related to the processing differences for lithium rich materials.
Moreover, as with the other rejections, we find that the Examiner
provides a reasonable basis and identifies a preponderance of the evidence in
the record to evince why one of ordinary skill would have combined the
teachings of the cited references to arrive at Appellants’ claimed invention.
Final Act. 2—6; Ans. 3^4. Appellants’ disagreement with the Examiner’s
reason for combining the references, without more, is insufficient to
establish reversible error.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 6—8,
10, 12, and 17—20 under 35 U.S.C. § 103(a) as obvious over the combination
of Kang, Lee, and Matsumoto.
Rejections 2, 3, 4, 5, and 6
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejections 2 through 6, stated above. Rather,
Appellants principally rely on the same arguments presented above in
response to the Examiner’s Rejection 1 regarding claims 1, 12, and 17—20
and the combination of Kang, Lee, and Matsumoto. App. Br. 17—20; Reply
Br.
In particular, Appellants’ traversals of the above-listed, second, third,
fourth, fifth, and sixth grounds of rejection are largely limited to general
assertions that the additional references relied on by the Examiner fail to
cure the deficiencies in the Examiner’s rejection of claims 1, 12, and 17
respectively as unpatentable over the combination of Kang, Lee, and
Matsumoto, and that the applied prior art fails to disclose or suggest the
recited limitations.
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Accordingly, based on the findings and technical reasoning provided
by the Examiner in the Answer and Final Office Action and for the same
reasons discussed above for affirming Rejection 1, we affirm Rejections 2—
6.
DECISION/ORDER
The Examiner’s rejections of claims 1—4, 6—10, and 12—20 are
affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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