Verma, Pallavi et al.

Patent Trials and Appeals Board

Dec 13, 2019

14938079 - (D) (P.T.A.B. Dec. 13, 2019)

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.
14/938,079 11/11/2015 Pallavi Verma BOSC.P9672US/1000208649 7677
24972 7590 12/13/2019
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
DIAZ, MATTHEW R
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
12/13/2019 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PALLAVI VERMA and THOMAS ECKL
____________

Appeal 2019-003498
Application 14/938,079
Technology Center 1700
____________

Before GEORGE C. BEST, JEFFREY W. ABRAHAM, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11–13, 15, 18, and 22–24.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Robert Bosch
Gesellschaft mbH für medizinische Forschung. Appeal Br. 2.
2 Appellant canceled claims 1, 3, 5, 7–10, 16, and 17 after the Examiner
issued the Final Office Action. Rejections addressing these claims are
withdrawn. See August 16, 2018 Advisory Action 2.
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Application 14/938,079

2
CLAIMED SUBJECT MATTER
The invention relates to a lithium titanate cathode material for use in a
lithium cell. Spec. 1:9–12. According to the Specification, chromium
doping of the lithium titanate provides certain advantages, including
enhanced electrical conductivity. Id. at 2:18–23. Oxygen deficiency in the
material also enhances conductivity. Id. at 4:19–22.
Claim 11, reproduced below, is illustrative of the subject matter on
appeal.
11. A chromium-doped lithium titanate, comprising:
a chromium-doped lithium titanate of chemical formula:
Li4-xTi5-2xCr3xO12-δ, wherein:
0 < x < 0.6,
δ is oxygen vacancies, and
0 < δ.
Appeal Br. (Claims Appendix 1).
Independent claim 15 recites a lithium cell or battery comprising the
material recited in claim 11. Claim 24 further requires the cathode material
to be free of conductive carbon. Each remaining claim on appeal depends
from claim 11 or 15.
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Application 14/938,079

3
REJECTIONS
The Examiner maintains the following grounds of rejection:
I. Claims 11–13, 15, 18, and 24 under 35 U.S.C. § 103 as unpatentable
over Zhong3 and Tan.4
II. Claims 22 and 23 under 35 U.S.C. § 103 as unpatentable over Zhong,
Tan, and Christensen.5
OPINION
Rejection I: obviousness over Zhong and Tan
With regard to the Examiner’s rejection of claims 11–13, 15, 18, and
24, Appellant argues only independent claims 11, 15, and 24 as a group (see
Appeal Br. 3–5) and separately presents additional argument regarding claim
24 (id. at 5–6). We address Appellant’s arguments below.
Claims 11 and 15
Relevant to Appellant’s arguments, the Examiner finds that Zhong
suggests a chromium-doped lithium titanate material, for use as an electrode
material in a lithium cell, but that Zhong does not teach the recited oxygen
deficiency. Final Act. 8–9. The Examiner finds it was known that
formulating lithium titanate electrode material with oxygen deficiency
advantageously improved electrical conductivity. Id. at 9 (citing Tan 6:57–
65). The Examiner reasons that Tan therefore would have provided a reason
to formulate an oxygen deficiency in Zhong’s chromium-doped lithium
titanate material. Id.

3 US 2009/0004563 A1, published January 1, 2009.
4 US 8,168,330 B2, issued May 1, 2012.
5 US 8,313,864 B2, issued November 20, 2012.
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Application 14/938,079

4
Appellant argues that Tan teaches away from chromium doping
lithium titanate. Appeal Br. 4 (citing Tan 3:16–30). The relied upon
passage discusses a tradeoff. According to Tan, chromium doping lithium
titanate improves “electronic conductivity” (Tan 3:19–22). However, “an
increase in the amount of Cr ions . . . also decreases reversible electric
power-generating capacity” (id. 3:22–25). In light of Tan’s above-quoted
discussion of decreased capacity, Appellant contends that “one of ordinary
skill in the art would not combine the teachings of Tan with Zhong, since
Zhong teaches a chromium-doped lithium titanate.” Appeal Br. 5.
Appellant essentially repeats the argument in the Reply Brief. See Reply Br.
2–3.
Appellant’s argument is not persuasive of reversible error. The
Examiner does not rely on Tan to teach chromium doping; Zhong’s lithium
titanate already is chromium-doped. Final Act. 8–9; Zhong ¶ 15. Zhong
teaches that chromium doping “provides for increased electronic
conductivity.” Zhong ¶ 19. Tan teaches that oxygen deficient lithium
titanate also improves electronic conductivity relative to lithium titanate that
is not deficient of oxygen. Tan 6:61–65. Appellant does not persuasively
explain why Tan’s discussion of competing effects of chromium-doping
would have dissuaded one skilled in the art from applying Tan’s teaching of
formulating lithium titanate with oxygen deficiencies to Zhong’s chromium-
doped lithium titanate material.6

6 Nor are we persuaded that Tan’s discussion of simultaneous advantages
and disadvantages would have served as a teaching away from chromium-
doping. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) (“[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
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Application 14/938,079

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Claims 12, 13, and 18
Appellant does not separately argue claim 12, 13, or 18, each of which
depends from claim 11. Accordingly, we sustain the rejection of these
claims for the reasons provided above in connection with claim 11.
Claim 24
In addition to the foregoing argument addressed in connection with
claims 11 and 15, Appellant further argues that Tan’s material necessarily
contains carbon, contrary to claim 24’s recitation that the material is “free of
conductive carbon.” Appeal Br. 5–6. Appellant challenges the Examiner’s
finding that Tan discloses carbon as an optional ingredient. Id.
Appellant’s argument is not persuasive of reversible error. The
Examiner finds that Zhong’s material is carbon-free. Ans. 12. Appellant
does not challenge that finding. Appellant presents no persuasive evidence
that modifying Zhong’s material to be oxygen deficient would have required
adding other ingredients purportedly present in Tan. Moreover, we agree
with the Examiner’s finding that Tan identifies carbon as an optional
ingredient. See Tan 9:15–16 (disclosing that a lithium cell electrode may
include the described lithium titanate active material and “optionally, a
conductive agent/auxiliary such as carbon black”).
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 11–13, 15, 18, and 24.

combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
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Application 14/938,079

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Rejection II: obviousness over Zhong, Tan, and Christensen
Appellant does not argue the rejection of claims 22 and 23, other than
an implicit reliance on arguments presented in connection with claim 15,
from which each depends. Accordingly, we sustain the rejection of claims
22 and 23 for the reasons provided above in connection with claim 15.
CONCLUSION
The Examiner’s decision rejecting claims 11–13, 15, 18, and 22–24 is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11–13, 15,
18, 24
103(a) Zhong, Tan 11–13, 15,
18, 24

22, 23 103(a) Zhong, Tan,
Christensen
22, 23
Overall
Outcome
11–13, 15,
18, 22–24

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