Ex Parte Weydanz et al

Patent Trial and Appeal Board

Mar 25, 2014

11991953 (P.T.A.B. Mar. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WOLFGANG WEYDANZ and CHRISTOPHER FIETZEK
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Appeal 2012-007618
Application 11/991,953
Technology Center 1700
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Before BRADLEY R. GARRIS, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of manufacturing a lithium battery. The Examiner has rejected claims 1-4,
6, 7, 9, and 10 as obvious.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Claims 5 and 8 have been cancelled.
Appeal 2012-007618
Application 11/991,953

2
CLAIMED SUBJECT MATTER
Appellants’ claims are directed to a method of manufacturing a
lithium battery. Claim 1 is the only independent claims on appeal and is
illustrative of the subject matter on appeal. It recites:
1. A method of preparing a lithium secondary battery,
comprising a negative electrode, a positive electrode, an
electrolyte and an additive for improving the stability of the
solid electrolyte interface (SEI) film forming on the negative
electrode, characterized in that at least part of said additive is
applied to said negative electrode before the battery is
assembled, and
wherein said additive is vinylene carbonate and the
negative electrode contains silicon or a silicon-containing alloy.
REJECTIONS
1) Claims 1-4, 6, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Peled et al. (US 6,337,159 B1, patented Jan.
8, 2002) in view of Okamoto et al. (US 2003/0027050 A1, published
Feb. 6, 2003) further in combination with Kohno et al. (US 7,235,335
B2, patented Jun. 26, 2007).
2) Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Peled et al. in view of Okamoto et al. in view of Kohno et al.
further in view of Kawakami et al. (US 2005/0175901 A1, published
Aug. 11, 2005).
ANALYSIS
Rejection of claims 1-4, 6, 7, 9, and 10 under 35 U.S.C. § 103(a)
The Examiner finds that Peled, Okamoto, and Kohno collectively
teach or would have suggested claim 1, including that Kohno discloses the
limitation wherein “an additive [vinylene carbonate] for improving the
Appeal 2012-007618
Application 11/991,953

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stability of the solid electrolyte interface (SEI) film forming on the negative
electrode . . . is applied to said negative electrode before the battery is
assembled.” (Claim 1.)
Appellants argue that Kohno teaches only combining vinylene
carbonate, as an additive, with “nonaqueous solvents in a nonaqueous
electrolyte” (App. Br. 7-8) and the art does not disclose that vinylene
carbonate “is interchangeable with the compounds used in Peled for forming
an SEI film on a negative electrode before assembling the battery.” Id. at 8.
Thus, according to Appellants, “the person of ordinary skill in the art would,
at best, only have added VC to an electrolyte as taught by Kohno - not to the
negative electrode as taught by Peled.” Id.
The Examiner agrees with Appellants that Kohno “teaches
incorporation of VC (vinylene carbonate) in the electrolyte and not the
negative electrode.” (Ans. 9.) Nevertheless, the Examiner determines the
limitation of applying the additive to the electrode before the battery is
assembled is met when the electrolyte containing vinylene carbonate is
applied to the electrode: “the limitation is met when the electrolyte is applied
to the electrode as the battery is not assembled and therefore the advantages
associated with having the VC (vinylene carbonate) in the electrolyte is
obtained since it is ‘applied to the electrode.’” Id. To support this
determination, the Examiner relies on Peled, stating that it discloses the step
wherein “electrolyte is formed on the negative electrode prior to assembling
the battery.” Id. (citing Peled, col. 3, ll. 62-67.). We agree with Appellants
that the Examiner’s above position regarding the disclosure of Peled is
incorrect (Reply Br. ¶ bridging 6-7).
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Application 11/991,953

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Peled does not disclose forming the electrolyte on the negative
electrode prior to assembling the battery. Rather, Peled discloses that the
solid electrolyte interface is formed on the surface of the carbon particles by
coating the negative electrode by a very thin layer of Li+-conducting film.
(Peled, col. 3, ll. 62-67.) We find that the Examiner has not shown that it is
reasonable to interpret forming the solid electrolyte interface on the
electrode to be the same as applying the electrolyte containing vinylene
carbonate to the electrode.
DECISION
The Examiner’s rejection of claims 1-4, 6, 9, and 10 under 35 U.S.C.
§ 103(a) is reversed. The Examiner’s rejection of claim 7 also is reversed
inasmuch as it relies on the Examiner’s incorrect position discussed above.

REVERSED

cdc