A123 Systems, LLC

Patent Trials and Appeals Board

Mar 2, 2021

2020004082 (P.T.A.B. Mar. 2, 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.
14/162,866 01/24/2014 Sang-Young YOON 2208732.00324US3 1135
50488 7590 03/02/2021
MCCOY RUSSELL LLP
1410 NW JOHNSON STREET, SUITE 201
PORTLAND, OR 97209
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SANG-YOUNG YOON,
ROCCO IOCCO, and JEONG JU CHO
__________

Appeal 2020-004082
Application 14/162,866
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–14, 16, 19, and 23–28. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as A123
Systems, LLC. Appeal Brief dated January 27, 2020 (“Appeal Br.”), at 3.
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Application 14/162,866

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The claims on appeal are directed to a positive electroactive material
comprising (1) a nanoscale lithium transition metal phosphate material comprising
an olivinic phase that includes lithium (Li), iron (Fe), manganese (Mn), one or
more dopants (D), and phosphate (PO4) and (2) a lithium metal oxide.
Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitations at issue are italicized.
1. A positive electroactive material, comprising: a nanoscale
lithium transition metal phosphate material comprising at least an
olivinic phase that includes lithium (Li), iron (Fe), manganese (Mn),
one or more dopants (D), and phosphate (PO4), where an overall
composition is LiaFe1-x-yMnxDy(PO4)z, wherein 0.350 ≤ x < 0.600,
0 < y ≤ 0.100, 1.0 < a ≤ 1.05, and 1.0 < z ≤ 1.025 and D is selected
from the group consisting of Co, Ni, V, Nb, and combinations thereof;
and
a lithium metal oxide,
wherein the lithium metal oxide has a specific surface area of
less than about 10 m2/g,
wherein the nanoscale lithium transition metal phosphate
material has a conductivity of at least about 10-8 S/cm,
wherein the nanoscale lithium transition metal phosphate
material is optionally doped with Ti, Zr, Nb, Al, Ta, W, Mg, or F,
wherein a weight ratio of the nanoscale lithium transition metal
phosphate material to the lithium metal oxide is between 50:50 and
70:30, and
wherein the nanoscale lithium transition metal phosphate
material is in the form of particulates, the particulates having a small
size and a correspondingly high specific surface area; wherein
the small size is about 75 nm or less, and
the high specific surface area is greater than about
15 m2/g.
Appeal Br. 39.
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Application 14/162,866

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Claim 23, the other independent claim on appeal, also recites a positive
electroactive material comprising, inter alia, a nanoscale lithium transition metal
phosphate material “in the form of particulates having a size of about 75 nm or
less” and “hav[ing] a specific surface area greater than about 15 m2/g to form a
high surface to volume ratio relative to the size of the particulates.” Appeal Br. 44.
The Appellant discloses that a lithium iron manganese phosphate compound
prepared with a “markedly smaller particle size and much larger specific surface
area than previously known positive active materials” has improved transport
properties. The Appellant discloses that “[i]mproved transport properties reduce
impedance and may contribute to low impedance growth.” Spec. ¶ 120. The
Appellant also discloses that
the small-particle-size, high specific-surface-area LiFePO4-based
material exhibits not only high thermal stability, low reactivity and
high charge and discharge rate capability, but it also exhibits excellent
retention of its lithium intercalation and deintercalation capacity
during many hundreds, or even thousands, of high-rate cycles.
Spec. ¶ 121.
The Examiner maintains the following grounds of rejection on appeal:
(1) claims 1–8, 10–14, 16, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Barker et al.2 in view of Takami et al.,3 Xu,4 and Miyasaka;5
(2) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Barker in view
of Takami, Xu, and Miyasaka, further in view of Beck et al.;6

2 US 7,771,628 B2, issued August 10, 2010 (“Barker”).
3 US 2010/0248038 A1, published September 30, 2010 (“Takami”).
4 US 8,470,207 B2, issued June 25, 2013 (“Xu”).
5 US 5,871,863, issued February 16, 1999 (“Miyasaka”).
6 US 9,178,215 B2, issued November 3, 2015 (“Beck”).
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Application 14/162,866

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(3) claims 23, 24, and 26–28 under 35 U.S.C. § 103(a) as unpatentable
over Barker in view of Takami and Miyasaka; and
(4) claim 25 under 35 U.S.C. § 103(a) as unpatentable over Barker in
view of Takami and Miyasaka, further in view of Beck.
B. DISCUSSION
The Examiner finds Barker discloses a positive electrode active material
comprising a blend of lithium transition metal phosphate particles and lithium
metal oxide particles. Final Act. 3.7 The Examiner finds Barker does not disclose
that the lithium transition metal phosphate particles have a size of about 75 nm or
less and a specific surface area of greater than 15 m2/g as claimed. Final Act. 6.
The Examiner finds Miyasaka discloses positive electrode active material
particles having a size of 0.03 µm (30 nm) to 50 µm and a specific surface area of
0.1–50 m2/g. Final Act. 6 (citing Miyasaka, col. 7, ll. 30–43). The Examiner finds
that a battery containing Miyasaka’s positive electrode active material has a high
voltage and a high discharge capacity. Final Act. 6 (citing Miyasaka, col. 1, ll. 65–
67). The Examiner concludes that
a person of ordinary skill in the art practicing the invention of Barker
would have been motivated by design need to combine the particle
size and specific surface area of Miyasaka with the lithium metal
phosphate particles of Barker in order to obtain electrode active
material particles capable of producing high voltage and high
discharge capacity in a battery.
Final Act. 6–7 (emphasis added).
The Appellant argues that the Examiner’s reason for combining Barker and
Miyasaka is not supported by sufficient evidence in the record. Appeal Br. 16.
The Appellant argues that

7 Final Office Action dated August 29, 2019.
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whether or not Miyasaka teaches wide ranges for the particle size and
specific surface area of the lithium metal oxides disclosed therein, the
Office has not established motivation in the evidence of record to
apply such particle sizes and/or specific surface areas to a nanoscale
lithium transition metal phosphate material, such as the cited lithium
metal phosphate particles of Barker.
Appeal Br. 16 (emphasis added); see also Appeal Br. 25 (arguing that the
Examiner has not established motivation in Miyasaka to apply the disclosed
particle sizes and/or specific surface areas of lithium metal oxides to the lithium
metal phosphate particles of Barker).
The Appellant also argues that there is no “evidence of a linkage between
the particle size and specific surface area of Miyasaka and a voltage and/or
discharge capacity of a battery.” Appeal Br. 17. Although an object of Miyasaka’s
invention is to provide a battery having “‘a high voltage and high discharge
capacity,’” the Appellant argues that Miyasaka does not “attribute the high voltage
and/or high discharge capacity to the particle size and specific surface area of
particular compounds.” Appeal Br. 17. Instead, the Appellant argues that
Miyasaka attributes high voltage to a spinel crystal structure of lithium manganese
oxide8 and the inclusion of lithium cobalt oxide as a sub-active material9 and links
an increase in discharge capacity to the amount of lithium in the positive electrode
active material.10 Appeal Br. 17–18.
The Appellant’s arguments are persuasive of reversible error. There appears
to be no dispute on this record that Miyasaka discloses a lithium metal oxide rather
than a lithium transition metal phosphate material as claimed. See Final Act. 16
(stating that “Miyasaka has not been relied upon for teaching lithium metal

8 Miyasaka, col. 4, ll. 24–26.
9 Miyasaka, col. 5, ll. 25–30.
10 Miyasaka, col. 9, ll. 24–28.
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phosphate active material”). The Examiner has failed to explain, in any detail,
why the teachings of Miyasaka would have led one of ordinary skill in the art to
modify the size and the specific surface area of Barker’s lithium transition metal
phosphate material rather than the size and specific surface area of Barker’s
lithium metal oxide. In that regard, claims 1 and 23 recite that “the lithium metal
oxide has a specific surface area of less than about 10 m2/g. Appeal Br. 39, 44
(emphasis added). The Examiner finds Takami discloses lithium metal oxide
particles having a specific surface area within the range recited in claims 1 and 23.
Final Act. 4, 11. It is unclear, on this record, why the teachings of Miyasaka are
relevant to the claimed lithium transition metal phosphate material rather than
cumulative of Takami’s teachings with respect to the claimed lithium metal oxide.
See Miyasaka, col. 7, ll. 41–43 (disclosing that a preferred specific surface area of
the lithium metal oxide is 1 to 10 m2/g).
Moreover, the Examiner has not directed us to any portion of Miyasaka
disclosing that particle size and specific surface area affects the voltage and the
discharge capacity of a battery. See Miyasaka, col. 4, ll. 24–26 (disclosing that
lithium manganese oxide preferably has a spinel crystal structure, which gives a
high voltage); Miyasaka, col. 5, ll. 25–30 (disclosing that lithium cobalt oxide, as a
sub-active material, gives a high voltage); Miyasaka, col. 9, ll. 24–28 (disclosing
that the amount of lithium in a positive electrode active material of the formula
LiyMn2O4 increases discharge capacity).
The Examiner finds that Miyasaka’s electrode active material particles,
having a size and a specific surface area within the ranges recited in claims 1 and
23, “must be capable of producing a high voltage and high discharge capacity in a
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battery” because Miyasaka teaches that a battery comprising the particles provides
a high voltage and a high discharge capacity. Ans. 16 (emphasis added).11
To the extent the Examiner is relying on inherency to show that the size and
the specific surface area of Miyasaka’s positive electrode active material affect the
voltage and the discharge capacity of the disclosed battery, the Examiner has not
provided a sufficient factual basis to establish inherency. See Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939) (the mere fact that a certain thing may
result from a given set of circumstances is not sufficient to show inherency).
Based on the foregoing, the Examiner has failed to establish that the
teachings of Miyasaka would have led one of ordinary skill in the art to modify the
particle size and the specific surface area of Barker’s lithium transition metal
phosphate material as recited in claims 1 and 23. The Examiner does not rely on
the remaining prior art of record to cure the deficiencies in Miyasaka identified
above. Therefore, the obviousness rejections on appeal are not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.
In summary:

11 Examiner’s Answer dated March 12, 2020.
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Application 14/162,866

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Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10–14,
16, 19
103(a) Barker, Takami,
Xu, Miyasaka
1–8, 10–14,
16, 19
9 103(a) Barker, Takami,
Xu, Miyasaka,
Beck
9
23, 24, 26–28 103(a) Barker, Takami,
Miyasaka
23, 24, 26–28
25 103(a) Barker, Takami,
Miyasaka, Beck
25
Overall
Outcome
1–14, 16, 19,
23–28

REVERSED