Ex Parte Xu et al

Board of Patent Appeals and Interferences

May 8, 2012

11138905 (B.P.A.I. May. 8, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/138,905 05/26/2005 Wu Xu NOV-16093 9440
7609 7590 05/09/2012
RANKIN, HILL & CLARK LLP
23755 Lorain Road - Suite 200
North Olmsted, OH 44070-2224
EXAMINER
ALEJANDRO, RAYMOND
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
05/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WU XU, ZHONGYI DENG, and PASCAL BOLOMEY
____________

Appeal 2010-010552
Application 11/138,905
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010552
Application 11/138,905

2
Wu Xu, Zhongyi Deng, and Pascal Bolomey (collectively the
“Appellants”) seek our review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 4, and 7-11.1,2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The invention relates to a secondary battery in which a nitrogen
silylated compound acts as a scavenger of undesirable moisture and free acid
that may be present in the non-aqueous electrolytic solution. Specification
(“Spec.”) ¶¶ [0002]-[0005]. Specifically, the Appellants explain that non-
aqueous electrolytic solutions, which are used in lithium and lithium ion
batteries, are made by dissolving lithium salts in a variety of organic
solvents. Id. ¶ [0002]. The Appellants further explain that, “[i]n particular,
nonaqueous electrolytes comprising lithium hexafluorophosphate (LiPF6)
exhibit very good electrochemical stability and conductivity,” but that
“LiPF6 is not thermally stable and readily decomposes by hydrolysis” in the
presence of moisture and acidic impurities to form strong acid hydrogen
fluoride (HF), which “is especially harmful to batteries because it reacts with
electrode active materials and corrodes the sold electrolyte interface (SEI),
which results in poor battery performance.” Id. ¶¶ [0002]-[0003].

1 The Appellants identify the real party in interest as Novolyte Technologies,
Inc.
2 Appeal Brief filed March 1, 2010 (“Br.”) at 5; Final Office Action mailed
October 8, 2009.
App
App

subje
eal 2010-0
lication 11
Claim 1,
ct matter
1.
a.
b.
c.

formula

w
independ
halogen,
X and Y
consistin
aryl, –O
–PR12–,
independ
halogen,
is selecte
between
N(R15)–,
wherein
group co
alkenyl,

10552
/138,905
the sole in
on appeal
A second
an anode
a cathode
an electro
i. a n
ii. a s
iii. a
herein R1,
ently sele
C1-C20 alk
are each i
g of hydro
–, –S–, –C
and –Si(R
ently sele
C1-C20 alk
d from th
X and Y,
–NR16R17
R15 to R21
nsisting o
and aryl, a
dependen
and is repr
ary battery

comprisin
lytic solut
on-aqueou
alt, and
nitrogen si
R2, and R3
cted from
yl, C1-C20
ndependen
gen, halog
O–, –CO2–
13R14)–, wh
cted from
yl, C1-C20
e group co
–O–, –S–,
, –PR18–, –
are each i
f hydrogen
nd m is a
3
t claim on
oduced be
comprisi
g lithium
ion compr
s solvent,
lylated ad

[sic, R1, R
the group
alkenyl, a
tly selecte
en, C1-C2
, –SO–, –
erein R9 t
the group
alkenyl, a
nsisting of
–CO–, –C
Si(R19R20
ndependen
, halogen,
number fro
appeal, is
low:
ng
, and
ising
ditive hav
2, and R3
consisting
nd aryl re
d from the
0 alkyl, C1
SO2–, –NR
o R14 are e
consisting
nd aryl, an
nothing,
O2–, –SO
)–, and [C
tly selecte
C1-C20 alk
m 1 to 6.
illustrativ
ing the
] are each
of hydrog
sidue, whe
group
-C20 alken
9–, –NR1
ach
of hydrog
d wherein
a direct bo
–, –SO2–,
(R21)2]m–,
d from the
yl, C1-C20
e of the
en,
rein
yl,
0R11,
en,
Z
nd
–

Appeal 2010-010552
Application 11/138,905

4
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 4, and 7-11 as unpatentable over Kim3 in view
of Oestreich4;
II. Claims 1, 4, and 7-11 as unpatentable over Kim in view
of Orr5; and
III. Claims 1, 4, and 7-11 as unpatentable over Kim in view
of Pandey.6
Examiner’s Answer mailed April 27, 2010 (“Ans.”) at 4-10.

ISSUES
The Examiner found that Kim describes a lithium secondary battery
comprising: (i) an anode: (ii) a cathode; and (iii) an electrolyte including a
lithium salt, organic solvents, and additive compounds. Ans. 4. The
Examiner acknowledged, however, that Kim does not disclose the nitrogen
silylated additive specified in claim 1. Id. at 5. To account for this
difference, the Examiner relied on the teachings of Oestreich, Orr, or
Pandey. Id. at 5, 7, and 9. The Examiner found that “it is commonplace to
use the claimed nitrogen silylated compound as an additive to chemical
compositions or materials independently of the final use of those chemical
compositions or materials.” Id. at 11. The Examiner concluded that the

3 U.S. Patent Application Publication published December 23, 2004, based
on Application 10/817,761 filed April 2, 2004.
4 U.S. Patent 6,365,643 B1 issued April 2, 2002.
5 U.S. Patent Application Publication published March 3, 2005.
6 U.S. Patent 5,654,439 issued August 5, 1997.
Appeal 2010-010552
Application 11/138,905

5
“simple substitution of one known equivalent element for another to obtain
predictable results is prima-facie obvious.” Id.
The Appellants contend that the Examiner’s rejections are in error
because the teachings of Oestreich, Orr, and Pandey bear no relation to those
of Kim and thus a person of ordinary skill in the art would have had no
reason to combine the prior art elements in the manner claimed. Br. 11, 14,
and 16.
Thus, a dispositive issue arising from these contentions is:
Did the Examiner articulate acceptable reasoning with some rational
underpinning to support a conclusion that a person of ordinary skill in the art
would have been prompted to include the specified nitrogen silylated
additive as part of Kim’s electrolytic solution in view of the teachings of
Oestreich, Orr, or Pandey?

DISCUSSION
We agree with the Appellants that the Examiner’s rejections are not
well founded. Our analysis is as follows.
The Examiner’s finding, Ans. 4, that Kim describes a lithium
secondary battery comprising an anode, a cathode, and an electrolyte
including a lithium salt, an organic solvent, and additive compounds in the
electrolyte is undisputed. Br. 10; see also, e.g., Kim’s Abst. Kim, however,
does not teach a nitrogen silylated compound as an additive but rather
compounds such as bisphenol A, 2,5-dimethylfuran, and 2,3-dichloro-1,4-
naphthoquinone. ¶ [0040]. Kim also discloses an organo sulfone-based
compound having a particular formula as a co-additive. ¶¶ [0051]-[0053].
According to Kim, the additive compound is used to form a passivation layer
Appeal 2010-010552
Application 11/138,905

6
on the surface of the positive electrode to prevent oxidative decomposition
of the electrolyte, which would otherwise occur at high temperatures and
cause an increase in internal pressure for the battery, while the organo
sulfone-based co-additive inhibits gas generation on the negative electrode at
high temperatures and improves cycle life and capacity characteristics.
¶¶ [0035], [0054].
Oestreich discloses a process for preparing cationic photoinitiators
having reduced crystallization tendency comprising reacting a particular
hydroxyl-containing photoinitiator (iodonium salts) with a chlorosilane, a
silanol, a silylamine, a silyl vinyl ether, a silazane, and/or a cyclic siloxane.
Col. 2, ll. 34-38; col. 6, l. 40 to col 7, l. 65; col. 9, ll. 19-33. According to
Oestreich, the photoinitiator is useful in the cationic polymerization of
organic substances such as epoxides, vinyl ethers, organopolysiloxanes
containing epoxy groups, organopolysiloxanes containing alkenyloxy
groups, and olefins. Col. 9, ll. 41-48.
Orr describes metallic vapor phase fuel compositions for use in jet,
aviation, turbine, diesel, gasoline, and other combustion applications.
¶ [0001]. Orr states that the fuel composition includes an enhanced
combustion structure (ECS) additive such as 1-trimethyl(silyl)-pyrrolidone
for the purpose of achieving pollution reduction, improving combustion
performance, and enhancing the stability of the fuel composition. Abst.;
¶¶ [0005], [0113].
Pandey teaches a process for synthesizing epibatidine – a potent non-
opioid analgesic. Col. 1, ll. 11-14. Specifically, the epibatidine is prepared
by reacting 6-chloro-3-vinyl pyridine having a particular formula with N-1-
Appeal 2010-010552
Application 11/138,905

7
alkyl-2.5-di(trialkyl silyl) pyrrolidone having a particular formula. Col. 1, ll.
44-52; Figure 1.
These facts plainly reveal that the Examiner’s reasoning lacks any
rational underpinning. The compounds described in Oestreich, Orr, and
Pandey are unrelated in terms of either structure or function to the additive
compounds described in Kim. Nor has the Examiner established any
plausible chemical similarity between the systems disclosed by the
secondary references and the lithium secondary battery disclosed by Kim.
Thus, the Examiner has failed to show any connection between Kim and any
one of Oestreich, Orr, and Pandey. KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (“Often, it will be necessary . . . to look to interrelated
teachings of multiple patents; the effects of demands known to the design
community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known
elements in the fashion claimed . . . .”).
While the Examiner argues that the compounds described in
Oestreich, Orr, and Pandey are interchangeable with Kim’s additives as
equivalents, Ans. 11, no evidence has been offered to support such a finding.
KSR, 550 U.S. at 418 (“[A] patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently known in the prior art.”).
For these reasons, we cannot uphold the Examiner’s rejections.

ORDER
The Examiner’s decision to reject claims 1, 4, and 7-11 is reversed.
Appeal 2010-010552
Application 11/138,905

8

REVERSED

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