Ex Parte Yakovleva et al

Patent Trial and Appeal Board

Nov 24, 2014

11870544 (P.T.A.B. Nov. 24, 2014)

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.
11/870,544 10/11/2007 Marina Yakovleva 208-6185 5099
20792 7590 11/25/2014
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
FERRE, ALEXANDRE F
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
11/25/2014 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 MARINA YAKOVLEVA, YUAN GAO,
KENNETH BRIAN FITCH, B. TROY DOVER,
PRAKASH THYAGA PALEPU, JIAN-XIN LI,
BRIAN ANTHONY CHRISTOPHER CARLIN, and YANGXING LI
____________

Appeal 2013-002344
Application 11/870,544
Technology Center 1700
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–5, 10, and 11. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a stabilized lithium metal
powder coated with wax.
Claim 1 is illustrative and reproduced below:
1. A stabilized lithium metal powder coated with a wax.

Appeal 2013-002344
Application 11/870,544

2
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Marshall, “Microencapsulation of Lithium”, U.S. Dept. of Commerce
National Technical Information Service, Technical Report ADA162987
(December 31, 1985).

Hong, “Surface Characterization of Emulsified Lithium Powder Electrode”,
Electrochimica Acta 50 pp. 535-539 (2004).

The Examiner maintains the following grounds of rejection:
Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Marshall. Claims 2, 10, and 11 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Marshall. Claims 4 and 5 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Marshall in
view of Hong.
We affirm the stated rejections for substantially the fact findings,
reasons and rebuttals set forth by the Examiner in the Answer. We offer the
following for emphasis.
Concerning the anticipation rejection, Appellants argue the rejected
claims together as a group. Accordingly, we select claim 1 as the
representative claim on which we decide this appeal as to this ground of
rejection.
The Examiner has found that Marshall describes the preparation of
lithium powder encapsulated in (coated with) wax (Ans. 3; Marshall, pp. 2,
4, 9, and Tables 1 through 6).
Appellants maintain that Marshall discloses microspheres comprising
lithium particles embedded or encapsulated in wax, wherein each of the
microspheres of Marshall comprises numerous lithium particles embedded
Appeal 2013-002344
Application 11/870,544

3
in a single mass of wax, which is in contrast to the individual lithium
particles that are coated/encapsulated with wax as urged to be required by
appealed claim 1 (App. Br. 3–5; Reply Br. 2–3).
Contrary to Appellants’ argument, however, representative claim 1
does not limit the claimed stabilized lithium metal powder coated with a wax
to a product that includes only a single lithium particle coated with wax, as
argued by Appellants to be the distinguishing claimed feature. In this
regard, we concur with the Examiner’s assessment that a wax microsphere
containing multiple individual lithium particles coated/surrounded by wax,
as disclosed by Marshall, is embraced by the claim 1 language when claim
1is given its broadest reasonable construction when read in light of the
subject specification as it would have been understood by one of ordinary
skill in the art (Ans. 5–6). Claim 1 does not specify any thickness for the
wax coating on the powder and therefore reads on the individual 30 micron
dispersed lithium particle that is surrounded by wax as shown in Figure 1 of
Marshall, although the particle is adjacent to other coated lithium particles.
In particular, we observe that the subject Specification describes
embodiments wherein stabilized lithium metal powder can be dispersed in a
wax coating wherein the lithium dispersions can have metal particle sizes in
the range of 10 through 500 microns (Spec. ¶¶ 0020–0023). Moreover,
Appellants acknowledge that the claimed invention is not limited to the
described embodiments set forth in the Specification (Spec. ¶ 10). Given
such disclosures, we determine that representative claim 1 is not limited so
as to exclude the 500 micron size wax microsphere of embedded/coated 30
micron lithium particles disclosed by Marshall (Ans. 3; Marshall, Fig. 1, p.
23).
Appeal 2013-002344
Application 11/870,544

4
On this record, Appellants have not indicated reversible error in the
Examiner’s anticipation holding based on the unclaimed features argued.
It follows that we shall affirm the Examiner’s anticipation rejection.
Concerning the obviousness rejection of claims 2, 10, and 11, we
concur with the Examiner that Appellants’ arguments lack persuasive merit
(Ans. 6– 7).
Concerning the separate obviousness rejection of claims 4 and 5,
Appellants argue the rejection of these dependent claims together and
merely assert that Hong does not cure the deficiencies of Marshall (App. Br.
7). However, for reasons advanced above and in the Answer, the repeated
assertion as to a deficiency in the teachings of Marshall as to the base
anticipation rejection of independent claim 1 lacks merit.
It follows that we shall sustain the Examiner’s obviousness rejections.

CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims 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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