Ex Parte Zaghib et al

Patent Trial and Appeal Board

Jun 22, 2018

11991270 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111991,270 02/29/2008
75493 7590 06/26/2018
Morin
BUCHANAN, INGERSOLL & ROONEY, PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Karim Zaghib
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.
0082085-000003 6204
EXAMINER
CARRICO, ROBERT SCOTT
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARIM ZAGHIB, JOCELYN JALBERT,
ABDELBAST GUERFI, CHRISTOPHE MICHOT,
MICHEL GAUTHIER, MARTIN DONTIGNY, and
PATRICK CHAREST
Appeal2016-008555
Application 11/991,270
Technology Center 1700
Before TERRY J. OWENS, JENNIFER R. GUPTA, JANEE. INGLESE,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In this Decision, we refer to the Specification filed May 23, 2008
("Spec."), the Final Office Action dated August 28, 2015 ("Final Act."), the
Appeal Brief filed March 1, 2016 ("Appeal Br."), the Examiner's Answer
dated July 15, 2016 ("Ans."), and the Reply Brief filed September 14, 2016
("Reply Br.").
Appeal2016-008555
Application 11/991,270
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 73, 75-80, and 83. 3 A hearing was held on
June 19, 2018. 4 We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
The subject matter on appeal relates to a method for purifying a liquid
ionic electrolyte that includes at least one alkali metal salt using a calcium
salt, such as calcium carbide. Spec. 1, 11. 2--4, 11, 11. 10-11. Independent
claim 73, the sole independent claim reproduced below from the Claims
Appendix, is illustrative of the claims on appeal.
73. A method for the purification of a liquid ionic electrolyte,
said method comprising at least one step in which particles of at
least one calcium salt are brought into contact with the
electrolyte, wherein:
the electrolyte comprises at least one alkali metal salt
dissolved in a liquid solvent,
the alkali metal salt is LiFSI, LiTFSI, LiBETI, LiPF 6,
LiCl04, LiBF4, LiCF3SQ3, LIBOB, LiDCTA or a mixture
thereof, and
said calcium salt is CaC2.
Appeal Br. 24 (Claims App. 1 ).
2 Appellants identify the real party in interest as Hydro-Quebec. Appeal
Br. 2.
3 Claims 85, 87, and 89-100 are withdrawn from consideration by the
Examiner. Final Act. 1. The rejection of pending claim 84 under
35 U.S.C. § 103(a) set forth at pages 7-8 of the Final Office Action was
withdrawn by the Examiner in the Answer. Ans. 2. Thus, claim 84 is
pending, but not included in any of the rejections before us in this appeal.
See Ans. 3 (indicating that claim 84 is objected to as being dependent from a
rejected base claim, but would be allowable if rewritten in independent form
including all the limitations of the base claim and any intervening claims).
4 The record will include a transcript of the oral hearing when it becomes
available.
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Appeal2016-008555
Application 11/991,270
DISCUSSION
The Examiner maintains the rejections under 35 U.S.C. § 103(a) of:
(1) claims 73, 78, 79, and 83 over Watanabe et al. 5 (JP 59-009874 A,
published January 19, 1984) in view of Jalbert et al. (US 6,423,210 Bl,
issued July 23, 2002) ("Jalbert"); (2) claims 75, 76, and 77 over Watanabe in
view of Jalbert and Hasegawa et al. (JP 2000-357537 A, published
December 26, 2000) ("Hasegawa"), and (3) claim 80 over Watanabe in view
of Jalbert, and Evans et al. (US 3,072,567, issued January 8, 1963)
("Evans"). Ans. 2.
We focus our discussion on representative claim 73.
The Examiner finds that Watanabe teaches a battery that uses an
organic electrolyte solution containing an alkali metal salt, such as LiC104,
dissolved in a liquid solvent, such as propylene carbonate, as recited in
Appellants' claim 73. Final Act. 3 (citing Watanabe 3, 11. 5-8, 4, 11. 13-19).
In addition, the Examiner finds that Watanabe teaches that a desiccant is
mixed into its electrolyte solution to remove moisture. Final Act. 3 (citing
Watanabe 3, 11. 6-8). As examples of desiccants for use in its electrolyte
solution, Watanabe discloses "molecular sieves, P20s, CuS04, activated
alumina, CaO, BaO, CaH2, NaH, or the like." Final Act. 3 (citing Watanabe
3, 11. 12-13).
For claim 73 's calcium salt CaC2, the Examiner relies on Jalbert.
Final Act. 3. The Examiner finds that Jalbert teaches a process of
dehydrating mineral oils, and aliphatic or aromatic solvents, which the
Examiner deems as "a variety of liquids," using calcium carbide (CaC2). Id.
5 We refer to the translation of record of Watanabe as cited by the Examiner.
Final Act. 3.
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Appeal2016-008555
Application 11/991,270
(citing Jalbert 2 :40-51 ). The Examiner finds that one of ordinary skill in the
art would have been led to use calcium carbide to remove water from
Watanabe's electrolyte solution "because Jalbert teaches that CaC2 can be
used to substantially dehydrate a variety of liquids." Final Act. 3 (citing
Jalbert 2:44--50). Additionally the Examiner finds that "substitution of one
known element for another yields predictable results to one of ordinary skill
in the art." Final Act. 3--4 (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398 (2007)).
Appellants argue that a person of ordinary skill in the art would not
have been motivated to select, modify, and combine Watanabe and Jalbert,
let alone arrive at the claimed subject matter with a reasonable expectation
of success, absent impermissible hindsight. Appeal Br. 5.
Appellants' argument is persuasive of reversible error. Although
Jalbert teaches using calcium carbide to remove water from a mineral oil,
and an aliphatic or aromatic solvent, on this record, the Examiner has not
identified an apparent reason supported by the requisite factual findings to
establish that a person of ordinary skill in the art would have used calcium
carbide (CaC2) to dehydrate Watanabe's electrolyte solution. Likewise, the
Examiner has not established that Watanabe's desiccants and CaC2 are
interchangeable equivalents for removing moisture from an electrolyte
solution. Nor has the Examiner established that one of ordinary skill in the
art would have had a reasonable expectation of success in using calcium
carbide to dehydrate an electrolyte solution without affecting the operation
of the battery.
Each of the Examiner's rejections under 35 U.S.C. § 103(a) are
premised on the same deficient factual findings and reasoning regarding
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Appeal2016-008555
Application 11/991,270
Watanabe and Jalbert. See Final Act. 3-5. The Examiner does not rely on
Hasegawa or Evans to cure the deficiencies of Watanabe and Jalbert
discussed above. See id. 4--5. Thus, for the reasons discussed above, we do
not sustain the§ 103(a) rejections of claims 73, 75-80, and 83.
DECISION
For the above reasons, the rejections of claims 73, 75-80, and 83 are
reversed.
REVERSED
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