FMC LITHIUM USA CORP.

Patent Trials and Appeals Board

Dec 30, 2021

2021000228 (P.T.A.B. Dec. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
16/423,843 05/28/2019 Marina Yakovleva 073396.1237 1015
45309 7590 12/30/2021
Williams Mullen
301 Fayetteville Street
Suite 1700
Raleigh, NC 27601
EXAMINER
HERNANDEZ-KENNEY, JOSE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
12/30/2021 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):
ip@williamsmullen.com
jassenza@williamsmullen.com
khotz@williamsmullen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARINA YAKOVLEVA, YUAN GAO, YANGXING LI, and
KENNETH BRIAN FITCH
____________

Appeal 2021-000228
Application 16/423,843
Technology Center 1700
____________

Before JAMES C. HOUSEL, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed May 28, 2019
(“Spec.”), the Final Office Action dated Feb. 10, 2020 (“Final Act.”), the
Appeal Brief filed July 16, 2020 (“Appeal Br.”), the Examiner’s Answer
dated Aug. 6, 2020, the Reply Brief filed Oct. 5, 2020 (“Reply Br.”), and a
Decision in parent Application No. 14/496,453 dated Mar. 29, 2019 (“Dec.”
or “Decision”).
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Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–9. Final Act. 1. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a method of finely depositing
lithium metal powder onto a substrate while avoiding the use of a solvent.
Abstract. Such finely deposited lithium metal powder is said to be useful, for
example, in forming an electrode for a primary or secondary battery. Spec.
¶ 2. The claimed method involves (1) depositing lithium metal powder onto
a carrier, (2) contacting the carrier with a substrate having a higher affinity
for the lithium metal powder as compared to the affinity of the carrier for the
lithium metal powder, (3) subjecting the substrate while in contact with the
carrier to conditions sufficient to transfer the lithium metal powder deposited
on the carrier to the substrate, and (4) separating the carrier and substrate so
as to maintain the lithium metal powder or lithium metal foil deposited on
the substrate. Independent claims 1 and 9, are illustrative of the claimed
subject matter and reproduced below from the Claims Appendix of the
Appeal Brief:
1. A method of depositing lithium metal powder onto a
substrate without the use of a solvent, said method consisting
essentially of the steps of:

2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies FMC Lithium USA Corporation as the real party in interest.
Appeal Br. 3.
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a) depositing stabilized lithium metal powder onto a
carrier to form a single layer, wherein the carrier has an
affinity for the lithium metal powder;
b) contacting the carrier with a substrate having a higher
affinity for the lithium metal powder as compared to the affinity
of the carrier for the stabilized lithium metal powder;
c) transferring the stabilized lithium metal powder foil3
deposited on the carrier to the substrate; and
d) separating the carrier and substrate so as to maintain
the stabilized lithium metal powder deposited on the substrate.

9. A method of depositing lithium metal powder onto a
substrate without the use of a solvent, said method consisting
essentially of the steps of:
a) depositing stabilized lithium metal powder onto a
carrier to form a single layer;
b) adhering the single layer of stabilized lithium metal
powder onto the carrier;
c) contacting the carrier with a substrate;
d) transferring the single layer of stabilized lithium metal
powder adhered onto the carrier to a substrate; and
e) separating the carrier and substrate so as to maintain
the single layer of stabilized lithium metal powder transferred
to the substrate.

3 We note the recited “foil” lacks an antecedent basis in claim 1. For
purposes of this decision, we interpret “stabilized lithium metal powder foil”
to mean the “single layer” of “stabilized lithium metal powder” recited in
step a).
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REJECTIONS

Claims 1–9 are rejected under 35 U.S.C. § 103 as unpatentable over
Honjo4 in view of Dover5 alone or in further view of additional prior art
references6 as listed below. Final Act. 2–7.
Claim(s) 35 U.S.C. § Reference(s)/Basis
1, 2, 7, 9 103 Honjo, Dover
3, 4 103 Honjo, Dover, Aramata
3–5 103 Honjo, Dover, Takezawa
6 103 Honjo, Dover, Takezawa, Fauteux
8 103 Honjo, Dover, Sunagawa

DISCUSSION
We address below each rejection Appellant separately argues.
Rejection of Claim 1 over Honjo and Dover
The Examiner finds that Honjo discloses a system in which lithium
powder 1 is deposited by hopper 2 onto release paper 6, as shown in Honjo’s
Fig. 1, which is reproduced below.

4 Honjo et al., JP08-250113A, pub. Sept. 27, 1996 (machine translation of
record) (referred to as either “Honjo” or “JP113” in the rejections and the
arguments).
5 Dover et al., US 5,776,369, iss. July 7, 1998.
6 Aramata et al., US 2008/0057385 A1, pub. Mar. 6, 2008; Takezawa et al.,
US 2007/0218365 A1, pub. Sept. 20, 2007; Fauteux et al., US 5,589,300, iss.
Dec. 31, 1996; Sunagawa et al., US 2005/0233066 A1, pub. Oct. 20, 2005.
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Honjo’s Fig. 1 above is a schematic version of Honjo’s apparatus. Deposited
powder 1 is transported on release paper 6 to a pressure nip between rollers
7 and against copper foil 10, onto which the powder is transferred to form a
uniform thin film of lithium metal on the copper metal foil. Final Act. 2–3
(citing Honjo ¶ 15, Figs. 1, 2, Abstract).
The Examiner further finds that because Honjo describes the lithium
powder being transferred from the release paper to the copper metal foil, a
person having skill in the art would have understood that the copper metal
foil has a greater affinity for the lithium powder than the release paper.
Final Act. 2–3.
The Examiner finds that Honjo does not specifically disclose the use
of stabilized lithium metal powder, but that Dover is directed to a process for
producing atmospherically stable dispersions of alkali metal particles, such
as lithium. Final Act. 3 (citing Dover 4:19–25, Abstract). The Examiner
determines that it would have been obvious to use a stabilized lithium
powder in Honjo’s method to allow for safer usage of lithium powder. Id.
Appellant argues that the cited references do not teach or suggest all
of claim 1’s limitations because Honjo’s release paper “does not have any
affinity for lithium metal powder, and merely serves as a means for carrying
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granular lithium to the roller to be press-fitted against the copper foil
substrate.” Appeal Br. 5–6. Appellant contends the Examiner’s interpretation
of “affinity” to read on Honjo’s release paper is unreasonably broad because
particles deposited on release paper does not imply the release paper has an
actual affinity for the deposited particles. Id. at 6. According to Appellant,
the only affinity taught or suggested by Honjo is the affinity caused by
gravity, which, Appellant argues, “is not the affinity clearly recited in the
present claims.” Id. at 7.
Appellant has not identified harmful error in the Examiner’s rejection.
Even if “affinity” in the context of claim 1 is understood to be “an attraction
or force between particles or chemicals that causes them to combine” (as
defined by the American Heritage Dictionary (Ans. 11)) while excluding
gravitational forces, the Examiner correctly recognizes that claim 1 does not
“require a minimum level of adhesion (affinity) between the stabilized
lithium metal powder and the carrier.” Ans. 13. Appellant does not
persuasively argue to the contrary, identify how “affinity” should be
quantified in this context, or identify what minimum affinity is required.
Indeed, if affinity were quantified, affinity could be zero or could even be
negative to indicate a repulsion between materials while still satisfying the
recitation that “the carrier has an affinity for the lithium metal powder.”
Although broad, the recitation “the carrier has an affinity for the
lithium metal powder” has purpose. The recitation provides an antecedent
basis and context for claim 1’s later recitation of “a substrate having a higher
affinity for the lithium metal powder as compared to the affinity of the
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carrier.” These two recitations, combined, require that the lithium metal
powder must be more attracted to the substrate than to the carrier.
Appellant does not dispute the Examiner’s position that Honjo’s
substrate has a higher affinity for lithium metal powder than Honjo’s carrier.
Appeal Br. 5–6. This higher relative affinity is enough to satisfy the affinity
recitations of claim 1, and Appellant, therefore, does not identify harmful
error in the Examiner’s analysis. Accordingly, we affirm the rejection of
claim 1.
Appellant does not separately argue claims 2 and 7, which depend
from claim 1. Therefore, we likewise affirm the rejection of claims 2 and 7
in accordance with 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Rejection of Claim 9 over Honjo and Dover
Claim 9 recites, inter alia, “adhering the single layer of stabilized
lithium metal powder onto the carrier.” Appeal Br. 15 (Claims Appendix). In
the Final Office Action, the Examiner equates “adhering” with “affinity” as
used in independent claim 1. Final Act. 3 (“adhesion (i.e. affinity)”).
Appellant contends that placing any object onto a surface would not result in
that object adhering to a surface. Appeal Br. 7. In response, the Examiner
directs us to a decision in a parent application which the Examiner states
“affirmed in particular that ‘. . . the term “affinity” as used in the claim,
means “adhesion.”’” Ans. 12 (quoting Dec. 6). The Examiner also notes that
the Specification discloses embodiments that adhere particles to the carrier,
specifically, one embodiment uses an adhesion promoting coating and
another uses a roller to adhere stabilized lithium metal powder onto a
polypropylene carrier. Id. at 14 (citing Spec. ¶¶ 30–32). However, the
Examiner finds the disclosure is not a definition of the action of adhering,
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but merely embodiments that are not to be read into claim 9. Id. The
Examiner concludes that Honjo’s disclosure of forming a film layer on the
release layer satisfies the step of adhering a layer of lithium powder onto the
carrier “by natural action of adhesion between the lithium powder and the
release paper.” Id.
We agree with Appellant that the Examiner’s position that “adhering”
is synonymous with “affinity” lacks adequate support. We give the claim
terms the broadest reasonable interpretation consistent with the Specification
as it would be interpreted by one of ordinary skill in the art. See, e.g., In re
Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010); In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007); In re Am.
Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris,
127 F.3d 1048, 1054–55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321–22
(Fed. Cir. 1989). A dictionary definition for “adhere” confirms that the term
is not synonymous with “affinity.” MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY 15 (11th ed. 2003), defines “adhere” to mean “to hold fast or
stick by or as if by gluing, suction, grasping, or fusing.” This definition is
consistent with the Specification’s use of the word “adhere” when describing
additional steps for adhering particles to the carrier film after depositing the
particles. See, e.g., Spec. ¶¶ 27, 28.
Regarding the Decision in the parent application, the disputed claim
term was “affinity” rather than “adhering” and the issue decided was
whether the use of pressure in the process imparts “enough affinity to meet
the claim requirement that the carrier (the release paper) has an affinity for
the lithium powder.” Dec. 6. As discussed above in connection with claim 1,
the requirement that the carrier have an affinity for the lithium metal powder
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reads on Honjo’s release paper on which the lithium powder is retained.
Thus, we interpret “affinity” consistent with the prior Decision in the parent
application to mean an attraction or force between two bodies, such as a
particle and a carrier. While “affinity” refers to some amount of attraction
between two bodies, it does not require the degree of attraction that adhesion
imposes between the two bodies to hold fast or stick as if by gluing, suction,
grasping, or fusing.
Because the Examiner does not find more than a mere attraction
between Honjo’s release paper and the lithium powder, that is, the lithium
powder adhering or holding fast to the release paper, we determine the
preponderance of the evidence cited in this Appeal record does not support
the rejection of claim 9. Accordingly, we reverse the Examiner’s rejection of
claim 9 over Honjo in view of Dover.
Rejection of Claims 3 and 4 over Honjo, Dover, and Aramata
Claim 3 depends from claim 1 and recites “wherein the carrier
comprises a separator material selected from an amorphous solid resin,
glass, or metallic separator material.” Appeal Br. 14 (Claims Appendix).
Claim 4 depends from claim 3 and further recites “the amorphous solid resin
is selected from polypropylene, polyethylene, polyester or a combination
hereof.” Id.
The Examiner finds Aramata discloses a carrier made of
polypropylene film or polyethylene-laminated paper in making a secondary
battery separator. Final Act. 4 (citing Aramata Abstract, ¶¶ 2, 21, 22). The
Examiner determines it would have been obvious to substitute Honjo’s
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release paper for Aramata’s carrier because it would have been a substitution
of a known carrier material yielding predictable results. Id.
Appellant argues that the proposed modification with Aramata’s
carrier would make Honjo unsatisfactory for its intended purpose because
Honjo teaches against using release agents and Aramata’s carriers are coated
with silicone parting agents. Appeal Br. 8 (citing Aramata ¶ 22). Appellant
directs us to Honjo’s disclosure in paragraph 5 in this regard and states such
release agents pollute the work environment, have an adverse effect on the
battery material, and may have adverse effects on the human body. Id.
Appellant’s argument is not persuasive of error because Honjo’s
release paper is analogous to Aramata’s substrates having parting properties
as the Examiner finds. Ans. 15. The Examiner also points out that Honjo’s
criticism of “release agents” is directed to extrusion molding followed by
compression rolling to form thinner foils where the detrimental adhesion is
the adhesion of lithium foil to repeated rolling rollers. Id. (citing Honjo ¶ 7).
The Examiner’s finding is supported by the record. Honjo ¶ 7. In the Reply
Brief, Appellant argues that Honjo’s concerns are not specific to extrusion
molding and compressing rolling, but to the use of release agents at other
steps of the battery manufacturing process as well. Reply Br. 6–7. However,
Honjo’s paragraph 5 specifically addresses use of release agents between a
roller and foil. Moreover, Appellant does not adequately explain how
Aramata’s substrates coated with silicone parting agents might pollute the
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work environment if it is not present between a roller and foil, but rather
between a substrate or carrier and lithium powder.
In sum, the preponderance of the evidence supports the Examiner’s
rejection of claims 3 and 4 over Honjo, Dover, and Aramata.
Rejection of Claims 3–5 over Honjo, Dover, and Takezawa
The Examiner finds Takezawa discloses a carrier substrate made of a
metal foil of a transition metal or a polymeric film of polypropylene as
required by clam 3. Final Act. 5 (citing Takezawa ¶¶ 2, 16–19). The
Examiner determines it would have been obvious to substitute a known
carrier, such as Takezawa’s carrier, for Honjo’s carrier because Takezawa
teaches that such carriers are stable for lithium metal. Id.
Appellant argues that the Examiner erred because Takezawa’s carriers
require additional components and steps to separate the lithium metal layer
from the carrier that are not compatible with Honjo’s process. Appeal Br. 9
(citing Takezawa ¶¶ 73, 75–77). Specifically, Appellant argues that
Takezawa’s carriers require forming a lithium metal layer onto the carrier
using a gas phase deposition method then placing the carrier in a reaction
tank for a duration of time, which would not be possible with Honjo’s belt
conveyor system. Id.
Appellant’s argument is not persuasive of error because “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be
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physically combinable to render obvious the invention under review.”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Rather, “if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). The rejection is based on a substitution of carrier
materials used in Takezawa for that used in Honjo’s process, rather than
features of Takezawa’s process. Moreover, Takezawa’s disclosure conveys
that a variety of processes may be used to form the lithium metal layer on
carrier substrates and that metal foil made of transition metal is a suitable
carrier substrate because it is chemically stable for lithium metal. Takezawa
¶¶ 73, 74. Therefore, Takezawa’s disclosure of a suitable carrier substrate
for lithium particles is generally applicable to Honjo’s process.
Accordingly, we determine the preponderance of the evidence
supports the Examiner’s rejection of claim 3 over Honjo, Dover, and
Takezawa. Appellant does not separately argue the patentability of
dependent claims 4 and 5. Appeal Br. 8–9. Therefore, we likewise affirm the
rejection of claims 4 and 5. See 37 C.F.R. § 41.37(c)(1)(iv).
Rejection of Claim 6 over Honjo, Dover, Takezawa, and Fauteux
Claim 6 depends from claim 1 and recites the further step of “applying
a binder to the carrier, wherein the stabilized lithium metal powder is
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electrostatically deposited onto the carrier.” Appeal Br. 14 (Claims
Appendix).
The Examiner finds Fauteux discloses collecting powders onto solid
substrates such as metal plates or foils and that electrostatic precipitation is
among the known conventional means of collecting powders within the
electrode art, especially those with binders. Final Act. 6 (citing Fauteux
5:24–35, 5:50–60).
Appellant argues that Fauteux’s method requires one or more heat
treatment steps, which are suitable for converting lithium metal oxides into
electrode materials, but not suitable for lithium metal powder because the
furnace temperature range between 450ºC to 750ºC is beyond the 180ºC
melting point of lithium metal. Appeal Br. 10 (citing Fauteux 5:58–61, 5:66–
6:9).
Appellant’s argument is not persuasive of error because Fauteux
provides a general teaching that electrostatic precipitation is a conventional
means of powder collection. Fauteux 5:28–32 (“[A]ny conventional means
of powder collection is within the scope of the present invention. Such
methods include . . . electrostatic precipitation.”). Fauteux’s disclosure
indicates electrostatic precipitation as a technique for powder deposition is
obvious in the electrode fabrication art. See KSR, 550 U.S. at 417. It is not
necessary for Fauteux’s entire process to be combinable with Honjo’s
process to render obvious claim 6’s method. See In re Keller, 642 F.2d at
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425. Accordingly, we affirm the rejection of claim 6 over the Honjo, Dover,
Takezawa, and Fauteux.
Rejection of Claim 8 over Honjo, Dover, and Sunagawa
Claim 8 depends from claim 1 and recites “depositing the stabilized
lithium metal powder onto the carrier using high pressure vapor flow
technology or gas flow technology.” Appeal Br. 15 (Claims Appendix).
The Examiner finds Sunagawa discloses dispersing active material
particles in gas flow without melting or evaporating, and then cold spraying
the gas flow to a current collector substrate without the use of solvent to
manufacture chemical battery electrodes. Final Act. 7 (citing Sunagawa
Abstract, ¶¶ 12–13, 15). The Examiner determines it would have been
obvious to modify the method of Honjo and Dover with Sunagawa’s vapor
deposition method to simplify production without the use of solvent as
taught by Sunagawa. Id.
Appellant argues that Sunagawa’s gas flow method is unsuitable for
depositing lithium metal powder because it involves heating to about 300ºC–
500ºC, then discharging through a nozzle which would smash lithium
particles while in flight causing them to fuse together and agglomerate, thus
preventing them from binding to the substrate target. Appeal Br. 11 (citing
Sunagawa ¶¶ 11, 26). Appellant also contends that none of the gases
disclosed by Sunagawa are compatible with lithium metal and would pose a
significant safety hazard. Id. at 12 (citing Sunagawa ¶¶ 28–30).
Appellant’s arguments are not persuasive of error because Sunagawa
teaches that materials can be deposited with inert gases and its preferred
embodiments and examples do not teach away from use with lithium metal.
Appellant does not adequately explain why it would have been outside the
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level of skill of a person having ordinary skill in the art to provide
appropriate conditions for the vapor deposition of lithium metal specifically.
Sunagawa teaches that its method is not limited to any particular active
material. Sunagawa ¶ 15 (“As the active material particle used in the present
invention, it is not particularly limited as long as it can be used in the
chemical battery.”). Accordingly, the preponderance of the evidence cited in
this Appeal record supports the Examiner’s rejection of claim 8 over Honjo,
Dover, and Sunagawa.
CONCLUSION
We AFFIRM the rejections of claims 1–8 and REVERSE the rejection
of claim 9 under 35 U.S.C. § 103(a) over the cited prior art references.
DECISION SUMMARY
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 7, 9 103 Honjo, Dover 1, 2, 7 9
3, 4 103 Honjo, Dover, Aramata 3, 4

3–5 103 Honjo, Dover, Takezawa 3–5

6 103 Honjo, Dover, Takezawa, Fauteux 6

8 103 Honjo, Dover, Sunagawa 8

Overall
Outcome 1–8 9

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART