LG CHEM, LTD.

Patent Trials and Appeals Board

Aug 27, 2020

14441580 - (D) (P.T.A.B. Aug. 27, 2020)

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.
14/441,580 05/08/2015 Jinhyung Lim LGCHEM 3.3-669 (E) 9034
86765 7590 08/27/2020
LGCHEM
Lerner, David, Littenberg, Krumholz & Mentlik, LLP
20 Commerce Drive
Cranford, NJ 07016
EXAMINER
ZHANG, HAIXIA
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
eOfficeAction@lernerdavid.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JINHYUNG LIM,
SUNG-KYUN CHANG, WON SEOK CHANG,
SIN YOUNG PARK, HO SUK SHIN, HYUN JIN OH,
JUNG MIN HAN, IN SUNG UHM, WANG MO JUNG,
and DONG HUN LEE
____________

Appeal 2019-004950
Application 14/441,580
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 7, and 8 of Application
14/441,580 under 35 U.S.C. § 103(a) as obvious and provisionally and non-
provisionally rejected those claims on the ground of nonstatutory
obviousness-type double patenting (OTDP). Final Act. (June 29, 2018).
Appeal 2019-004950
Application 14/441,580
2
Appellant1 seeks reversal of the rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm the obviousness and the
non-provisional OTDP rejections. We decline to review the provisional
OTDP rejection.
I. BACKGROUND
The ’580 Application describes a transition metal precursor for
preparation of a lithium transition metal oxide, which can be used as a
positive electrode active material in secondary batteries. Spec. 1:7–10. The
’580 Application describes mixing the transition metal precursor and a
lithium precursor and then sintering the mixture to prepare the lithium
transition metal oxide. Id. at 6:9–10.
Claim 1 is representative of the ’580 Application’s claims and is
reproduced below from the claims listing in the Claims Appendix to the
Appeal Brief:
1. A transition metal precursor for preparation of a lithium
transition metal oxide,
wherein precursor particles constituting the transition
metal precursor are transition metal hydroxide particles,
wherein the transition metal hydroxide particles are a
compound represented by Formula 2 below:
M(OH1-x)2 (2)
wherein M is at least two selected from the group
consisting of nickel (Ni), cobalt (Co), manganese (Mn),

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as LG Chem,
LTD. Appeal Br. 2.
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Application 14/441,580
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aluminum (Al), copper (Cu), iron (Fe), magnesium (Mg), boron
(B), chromium (Cr), titanium (Ti), zirconium (Zr) and hafnium
(Hf); and 0≤x≤0.5; and
wherein a tap density of the transition metal precursor is
from 1.3 g/cc to 1.6 g/cc, and a ratio of tap density to average
particle diameter D50 of the precursor satisfies a condition
represented by Equation 1 below:
2000 <
Tap density
< 3500 (g/cc · cm) (1) Average particle diameter D50 of
(7–13 or 3–30 microns)
Appeal Br. (Claims App.) 16 (emphasis added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Niittykoski.2 Final Act. 9; Answer 10.
2. Claims 1, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Shin3 and Niittykoski.
Final Act. 11; Answer 12.
3. Claims 1, 7, and 8 are provisionally rejected for OTDP over
claims 1–8 of Application 14/559,155. Final Act. 3; Answer 4.
4. Claims 1, 7, and 8 are rejected for OTDP over the combination
of claims 1–8 of Shin and Niittykoski. Final Act. 4; Answer 5.

2 WO 2012/037975 A1, published Mar. 29, 2012. The Examiner cited US
2013/0168600 A1, published July 4, 2013, as the U.S. national stage filing
of this international application. Because Appellant did not object to this
practice, we also shall do so.
3 US 8,394,299 B2, issued Mar. 12, 2013.
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5. Claims 1, 7, and 8 are rejected for OTDP over the combination
of claims 1–6 of Park ’1434 and Niittykoski. Final Act. 5;
Answer 6.
6. Claims 1, 7, and 8 are rejected for OTDP over the combination
of claims 1–5 of Park ’7705 and Niittykoski. Final Act. 7;
Answer 8.
III. DISCUSSION
Appellant argues for reversal of all of the rejections at issue based
upon the limitations in independent claim 1. Appeal Br. 5–15. We, therefore,
select claim 1 as representative of the claims subject to this ground of
rejection and limit our discussion to this claim. 37 C.F.R. § 41.37(c)(1)(iv).
A. Rejections of claims 1, 7, and 8 as unpatentable under § 103(a)
over Niittykoski, either with or without Shin.
According to Appellant, the Examiner reversibly erred in rejecting
independent claim 1 for four reasons: (1) contrary to the “claimed low tap
density,” the prior art “suggested using a precursor with higher tap density to
prepare a lithium transition metal oxide” (Appeal Br. 5); (2) through use of
the claimed transition metal precursor, Appellant solved the previously
unknown problem of undesirable side reactions caused by crushed active
material (id. at 8–9); (3) Appellant has demonstrated the criticality of the
claimed precursor’s tap density 1.3–1.6 g/cc, which provides unexpected
results (id. at 9–12); and (4) the Examiner failed to articulate why additional
tests are needed to show criticality. Id. at 12–13.

4 US 9,431,143 B2, issued Aug. 30, 2016.
5 US 9,601,770 B2, issued Mar. 21, 2017.
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Application 14/441,580
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First, we are not persuaded by Appellant’s attempt to distinguish the
claimed tap density as lower than allegedly higher tap densities known in the
art. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of Appellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”). The Examiner found that Niittykoski teaches that
a transition metal precursor’s tap density was controllable within the range
of 0.8–2.8 g/cc. Final Act 9 (citing Niittykoski ¶¶ 12, 39). Thus, the
Examiner has made findings that the applied prior art discloses a tap density
range that overlaps and encompasses the claimed transition metal
precursor’s tap density. Final Act. 10. This is sufficient to create a prima
facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003) (a prima facie case of obviousness typically exists when the ranges of
a claimed composition overlap the ranges disclosed in the prior art).
Second, even assuming that the problem of undesirable side reactions
caused by broken or crushed active material was previously unknown,
Appellant’s purported discovery of the solution is not dispositive. See Cross
Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323
(Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical
problem addressed in a prior art reference to be motivated to apply its
teachings.”); see also In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992)
(Nies, C.J., concurring).
Third, Appellant’s arguments have not identified reversible error in
the Examiner’s prima facie case of obviousness. Once established, a prima
facie case can be overcome if Appellant shows either (i) that the prior art
teaches away from the claimed invention or (ii) that there are new and
unexpected results relative to the closest prior art. Iron Grip Barbell Co. v.
USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (citing In re Geisler,
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Application 14/441,580
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116 F.3d 1465, 1471 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990)).
Here, Appellant does not argue that any of the references relied upon
by the Examiner teaches away from the claimed subject matter. Rather,
Appellant asserts that “[t]he record includes data showing the criticality of
the claimed range of 1.3 to 1.6 g/cc for the tap density of the precursor.”
Appeal Br. 9; see generally id. at 10–12 (contending that both the
Specification and the Declaration of Byunchun Park under 37 C.F.R. § 1.132
(“Park Declaration”) establish that the claimed tap density range provides
unexpectedly smaller changes in D50 particle sizes after pulverization or
calcination treatments).
The Examiner, however, concluded that Appellant’s relied upon data
was not commensurate in scope with claim 1 because the tested precursor
material only contained nickel, cobalt, and manganese. Answer 22; see Spec.
16. The Examiner found that “[i]t is unclear if Formula 2 having M being,
for example, copper (Cu) and iron (Fe) would have the same data [or not] as
that of the Examples 1–3, Comparative Examples 1–2 and Additional
Comparative Examples A and B.” Answer 22.
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness as Niittykoski “is specifically directed to the
precursor material containing nickel, cobalt and manganese, the same metals
as data shown in Tables 1–3 of the Appellant’s specification and Tables 2–3
of the [Park] Declaration.” Reply Br. 6. Appellant argues that claim 7 recites
a smaller Markush group of metals in which “M comprises at least two
transition metals selected from Ni, Co or Mn.” Appeal Br. (Claims App.) 16;
see also Reply Br. 6.
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We are not persuaded by these arguments because M in Formula 2 “is
written in Markush form, such that the entire element is disclosed by the
prior art if one alternative in the Markush group is in the prior art.”
Fresenius USA, Inc. v. Baxter Intern., Inc., 582 F.3d 1288, 1298 (Fed. Cir.
2009). Appellant admits that Niittykoski discloses one alternative in the
claimed Markush group. Reply Br. 6.
Appellant, furthermore, has not provided any evidence or persuasive
reasoning showing that the ratios of D50 pre-/post-treatment resulting from
testing the remaining metals recited in claim 1 would have been similar to
the D50 ratios obtained from the tested precursor material containing nickel,
cobalt, and manganese. In other words, Appellant has not proffered any
evidence establishing unexpected results with a precursor material
containing at least two metals selected from the group of aluminum, copper,
iron, magnesium, boron, chromium, titanium, zirconium, and hafnium. See
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005) (Unexpected results must be “commensurate in
scope with the degree of protection sought by the claims on appeal.”).6

6 Appellant raises new arguments that Niittykoski “fails to recognize the
claimed ratio as a result-effective variable” for the first time in the Reply
Brief. Reply Br. 2–6, 8. These arguments are untimely. We, therefore, will
not consider them. Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”).
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Fourth, we are not persuaded that the Examiner failed to articulate
why additional tests are needed to show criticality. See Appeal Br. 12–13.
As set forth above, Appellant relies on data generated from testing one
precursor material, which contains only three of the twelve metals recited in
the claimed Markush group. We, therefore, agree with the Examiner that
Appellant has not made a persuasive showing of unexpected results. See
Answer 22–23.
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 1 as unpatentable over Niittykoski, either
with or without Shin. Accordingly, we also affirm the rejections of claims 7
and 8, which depend from claim 1.
B. Provisional rejection of claims 1, 7, and 8 as unpatentable for
OTDP over claims 1–8 of the ’155 Application.
For the reasons stated below, we exercise our discretion not to review
the Examiner’s provisional rejection of claims 1, 7, and 8 for OTDP. See Ex
parte Jerg, 2012 WL 1375142 at *3 (BPAI 2012) (informative) (“Panels
have the flexibility to reach or not reach provisional obviousness-type
double-patenting rejections.” (citing Ex parte Moncla, 95 USPQ2d 1884
(BPAI 2010) (precedential))).
On December 29, 2016, the Examiner first provisionally rejected
claims 1–8 for OTDP over claims 1–8 of the ’155 Application. Office
Action 4 (Dec. 29, 2016).
Since the initial provisional OTDP rejection, claims 1 and 7 of the
’580 Application have been substantively amended. ’580 Prosecution
History Amendment & Response 3, 6 (April 27, 2018). Furthermore, on
May 8, 2018, the ’155 Application issued as U.S. Patent No. 9,966,600 B2.
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Application 14/441,580
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In view of the substantial changes in the claims and the Examiner’s
grounds since the initial entry of the provisional OTDP rejection, we would
have to conduct a patentability analysis ab initio. Preferring to have the
benefit of the Examiner’s expertise in the first instance, we decline this
opportunity. While we do not affirm the Examiner’s provisional OTDP
rejection, the Examiner remains free to assert a non-provisional OTDP
rejection based on the issued claims of the ’600 patent, whether alone or in
combination with other references.
C. Rejections of claims 1, 7, and 8 as unpatentable for OTDP over
the combination of Niittykoski with either claims 1–8 of Shin;
claims 1–6 of Park ’143; or claims 1–5 of Park ’770.
In support of reversal of the non-provisional OTDP rejections,
Appellant relies on the same arguments and evidence for reversal of the
rejections of independent claim 1 under § 103(a). Compare Appeal Br. 5–6
with 14–15.
For the reasons set forth above, the preponderance of the evidence
supports the Examiner’s conclusion of obviousness for claims 1, 7, and 8.
On this record, Appellant has not: (i) identified reversible error in the
Examiner’s prima facie case of obviousness with respect to Niittykoski’s
teachings, or (ii) sufficiently demonstrated that unexpected results of the
precursor’s tap density range 1.3–1.6 g/cc are commensurate in scope with
the claimed Markush group of metals. See Appeal Br. 13–15.
We, therefore, affirm the rejections of claims 1, 7, and 8 as
unpatentable for OTDP over the combination of Niittykoski with either
claims 1–8 of Shin; claims 1–6 of Park ’143; or claims 1–5 of Park ’770.
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IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 7, 8 103(a) Niittykoski 1, 7, 8
1, 7, 8 103(a) Shin, Niittykoski 1, 7, 8
1, 7, 8
claims 1–8 of Application
14/559,155 / Provisional
Obviousness Type Double
Patenting7

1, 7, 8
claims 1–8 of Shin, Niittykoski /
Obviousness Type Double
Patenting
1, 7, 8
1, 7, 8
claims 1–6 of Park ’143,
Niittykoski / Obviousness Type
Double Patenting
1, 7, 8
1, 7, 8
claims 1–5 of Park ’770,
Niittykoski / Obviousness Type
Double Patenting
1, 7, 8
Overall
Outcome 1, 7, 8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

7 As explained above, we do not reach this rejection per Ex parte Moncla, 95
USPQ2d 1884 (BPAI 2010) (holding that it is premature to address a
provisional rejection) (designated precedential).