Ex Parte ZAGHIB et al

Patent Trials and Appeals Board

Apr 25, 2019

13724058 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/724,058 12/21/2012
21839 7590 04/29/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE 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.
1022942-000018 9520
EXAMINER
ARCIERO, ADAM A
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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, MARTIN DONTIGNY,
MICHEL PETITCLERC, and MICHEL GAUTHIER
Appeal2017-009337
Application 13/724,058
Technology Center 1700
Before MARK NAGUMO, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 5, 7-9, 13-15, 21, 23, 25-27, 31-38, 43, and
54--77. A hearing was held April 2, 2019. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We refer to the Specification ("Spec.") filed December 21, 2012, as
amended; Final Office Action ("Final Act.") dated August 12, 2016;
Appellant's Appeal Brief ("App. Br.") filed December 15, 2016; Examiner's
Answer ("Ans.") dated April 24, 2017; and Appellant's Reply Brief ("Reply
Br.") filed June 20, 2017.
2 Appellant is the Applicant, Hydro-Quebec, which is identified as the real
party in interest. App. Br. 2.
Appeal2017-009337
Application 13/724,058
BACKGROUND
The subject matter on appeal relates to fabrication of an active lithium
based multilayer material and its use in electrochemical batteries.
Spec. 1: 15-16. According to the Specification, lithium batteries undergoing
charging cycles form dendrites on the thin film lithium anode surface, which
may perforate the separator and touch the cathode. Id. 2:3-6. To address
that problem, the lithium film is deposited on a protective layer, such as
glass. Id. 2:7-12. It is said that depositing the lithium layer by cathode
sputtering or vapor deposition requires operation under vacuum, which adds
complexity and cost. Id. 2: 13-15. Appellant claims a process in which a
lithium film of reduced thickness is produced by a first pair of rollers and
laminated to a protective layer by a second set of rollers. Claim 1 is
illustrative:
1. A method for preparing a multilayer material which
comprises at least one layer of a film of active lithium, said
method comprising at least the steps of:
producing a film of active lithium which comprises a first
and a second surface by laminating and reducing thickness of a
lithium sheet between a first set of two rolls;
laminating between a second set of two rolls directly to
the first surface of the film of active lithium a first protective
layer at a sufficient speed so that substantially no oxidation of
the first surface of the film of active lithium occurs, and during
a sufficient time for the adhesion of the first surface of the film
of active lithium to the first protective layer to develop after
contact with said first protective layer, wherein said first
protective layer consisting essentially of an ion-conducting
protective layer.
App. Br. (Claims Appendix).
2
Appeal2017-009337
Application 13/724,058
REJECTIONS
I. Claims 1, 7, 13, 15, 21, 23, 25, 31, 43, 52, 57---60, 62, 67-69, and 71-
77 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Visco, 3
Bauerlein, 4 Bouchard, 5 and Miyazaki. 6
II. Claims 5, 14, 26, and 63 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Visco, Bauerlein, Bouchard, Miyazaki, and Park. 7
III. Claim 8 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Visco, Bauerlein, Bouchard, Miyazaki, and Laliberte. 8
IV. Claims 9, 34, 35, and 37 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Visco, Bauerlein, Bouchard, Miyazaki, and Bryan. 9
V. Claim 27 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Visco, Bauerlein, Bouchard, Miyazaki, and Harada. 10
VI. Claim 32 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Visco, Bauerlein, Bouchard, Miyazaki, and Prater. 11
VII. Claims 36 and 38 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Visco, Bauerlein, Bouchard, Miyazaki, Park, and Bryan.
VIII. Claims 54 and 64 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Visco, Bauerlein, Bouchard, Miyazaki, and Tomiyama. 12
3 US 6,432,584 Bl, issued August 13, 2002.
4 US 6,103,416, issued August 15, 2000.
5 US 5,528,920, issued June 25, 1996.
6 US 5,804,330, issued September 8, 1998.
7 US 4,615,961, issued October 7, 1986.
8 US 2005/0061047 Al, published March 24, 2005.
9 US 5,916,515, issued June 29, 1999.
10 US 6,413,675 Bl, issued July 2, 2002.
11 US 4,520,083, issued May 28, 1985.
12 US 6,053,953, issued April 25, 2000.
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Appeal2017-009337
Application 13/724,058
IX. Claims 55, 56, 61, 65, and 66 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Visco, Bauerlein, Bouchard, Miyazaki, and Chu. 13
X. Claim 70 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Visco, Bauerlein, Bouchard, Miyazaki, and West. 14
OPINION
Rejection I
With regard to Rejection I, Appellant argues the rejected claims as a
group, except claim 8 which is separately argued. See App. Br. 6-14. We
select claim 1 as representative of the grouped claims. Claim 8 is separately
addressed.
Claim 1
Relevant to Appellant's arguments, the Examiner finds that Visco
discloses a laminating a protective layer to an active lithium layer by passing
the layers through a set of two rollers, but that Visco does not teach forming
the lithium layer by passing it through a set of two rollers to provide a
lithium layer of reduced thickness prior to lamination. Final Act. ,r 13.
However, the Examiner finds that Visco teaches that the lithium layer may
be formed by evaporation, sputtering, or other suitable processes for forming
a lithium layer. Ans. 20. The Examiner finds that Bouchard teaches that an
active lithium layer suitable for use in lithium batteries may be formed by
passing a lithium film through a set of two rollers to reduce its thickness.
Final Act. ,r 13. The Examiner determines that the collective teachings of
Visco and Bouchard would have provided a reason to use Bouchard' s roller
13 US 6,413,284 Bl, issued July 2, 2002.
14 US 2006/0062904 Al, published March 23, 2006.
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Appeal2017-009337
Application 13/724,058
technique to form the lithium layer to be laminated to a protective layer in
Visco. Id.; Ans. 20.
Appellant argues that Visco discourages use of commercially
available lithium sheets when applying a protective layer, whereas "[t]he
claimed subject matter may involve the use of commercially available
lithium sheets." App. Br. 7. However, claim 1 lacks any recitation of
commercially available lithium sheets. As such, irrespective of whether
Visco discourages use of commercially available material, Appellant's
argument does not distinguish the claim from the prior art teachings relied
upon by the Examiner.
Appellant also argues that modifying Visco' s method to produce
active lithium films with techniques other than physical or chemical vapor
deposition techniques would change the principle of operation of Visco.
App. Br. 8-11. Particularly, Appellant states that Visco requires vacuum
deposition of the lithium layer to "ensure[] a high throughput for
manufacturing and clean fresh surfaces for forming each layer of the
laminate." Id. at 8 (citing Visco 4:34--42). We are not persuaded that Visco
teaches a requirement that the lithium layer be formed by vacuum
deposition. To the contrary, Visco states that "[l]aminate 204 is formed by
depositing lithium on current collector 208 via evaporation or other suitable
process." Visco 5:41--42 (emphasis added). 15 See also Visco 4:20-23 ("[A]
15 Appellant argues in the Reply Brief that "other suitable process" in Visco
should be read to mean other suitable vacuum deposition processes. See
Reply Br. 1-5. Appellant does not direct our attention to any disclosure in
Visco that would require such a narrow interpretation of Visco' s broad
terminology. Moreover, even if Visco were read as disclosing only certain
deposition techniques for forming the lithium layer, Appellant does not
explain why that alone would serve as persuasive evidence that one of
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Appeal2017-009337
Application 13/724,058
layer of lithium 18 ... is deposited on protective glass layer 16 by
evaporation for example.") ( emphasis added). Appellant does not present
persuasive evidence that Visco's reference to other suitable processes for
forming a lithium layer would have precluded Bouchard's roller technique.
Nor does Appellant persuade us that applying Bouchard's film forming
technique in Visco' s process would have changed Visco' s principle of
operation. Visco teaches depositing a first lithium layer on a pre-formed
protective layer, depositing a second lithium layer on a pre-formed current
collector, and bonding these components by passing the two laminates
through rollers. Visco 5:15-18, 6:29-34. Appellant does not present
persuasive evidence that pre-forming one or both lithium layers by passing
through a thickness-reducing set of rollers, as in Bouchard, would have
materially affected the resulting bonded article adversely for the purposes
taught by Visco.
Appellant also argues that one of ordinary skill would have had no
reasonable expectation of success in applying Bouchard's lithium film
forming technique to Visco' s method because Bouchard' s technique "would
not produce 'clean and fresh' surfaces in accordance with Visco and would
not be able to meet the requirements described in Visco related to sufficient
continuous or intimate interfaces of the lithium films." App. Br. 12.
However, Appellant does not point to evidence of record that would
substantiate these contentions. As such, they are unsupported attorney
argument and unpersuasive of reversible error.
ordinary skill in the art would not have considered Baurlein's roller
technique a suitable alternative.
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Application 13/724,058
For the foregoing reasons, Rejection I as applied to claim 1 is
sustained.
Claim 8
With regard to claim 8, Appellant separately argues that Visco teaches
away from "forming the lithium in a dry air atmosphere, in a chamber
with a specific dew point" because Visco teaches performing the disclosed
process in an inert atmosphere under vacuum. App. Br. 13. However,
Appellant does not point us to any teaching in Visco that the process is
performed in an inert atmosphere. Nor does Appellant explain how the
language recited in claim 8 precludes application of a vacuum. Moreover,
Visco characterizes the application of vacuum during the process as merely
preferred. See Visco 4:34--35 (Preferably, the entire process is conducted in
a continuous fashion and under a vacuum.). As such, Appellant does not
persuade us that Visco criticizes, discredits, or otherwise discourages any
feature recited in claim 8. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Rejection I as applied to claim 8 also is sustained.
Rejections 11-X
Appellant does not present separate argument directed to any of
Rejections II-X, relying instead on the arguments presented against
Rejection I. Because we find Appellant's arguments against Rejection I
unpersuasive, each of Rejections II-X are sustained for the reasons set forth
above.
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Appeal2017-009337
Application 13/724,058
DECISION
The Examiner's decision rejecting claims 1, 5, 7-9, 13-15, 21, 23,
25-27, 31-38, 43, and 54--77 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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