Envia Systems, Inc.

Patent Trials and Appeals Board

Mar 18, 2021

2019005349 (P.T.A.B. Mar. 18, 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.
14/246,914 04/07/2014 Herman A. Lopez 5024.14US04 3578
62274 7590 03/18/2021
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
11322 86th Ave. N.
Maple Grove, MN 55369
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
docket@cfd-ip.com
patents@cfd-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERMAN A. LOPEZ, SUBRAMANIAN VENKATACHALAM,
DEEPAK KUMAAR KANDASAMY KARTHIKEYAN, and
SUJEET KUMAR
Appeal 2019-005349
Application 14/246,914
Technology Center 1700
Before CHRISTOPHER C. KENNEDY, JULIA HEANEY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HEANEY, 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 1–5, 7, 8, 10, and 13–23. See Final
Act. 1. 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. Appellant identifies the real party in interest as the current assignee,
Zenlabs Energy, Inc. Appeal Br. 3.
Appeal 2019-005349
Application 14/246,914
2
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a composition and method for
synthesizing a positive electrode active material for a lithium ion battery.
Appeal Br. 40, 42. According to the Specification, lithium ion batteries
having lithium-based positive electrode active materials experience changes
in the crystalline lattice of the electroactive materials during charge-
discharge cycles, and charge capacity of the electroactive materials
decreases with cycling. Spec. 8:19–9:7. The Specification describes
selection of specific active material stoichiometries to obtain high specific
capacity and improved cycling. E.g., id. at 14:9–27. Claims 1 and 15 are
the independent claims. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A positive electrode active material for a lithium ion battery
having a room temperature specific discharge capacity from
4.6V to 2V of at least about 220 mAh/g at a discharge rate of
C/10 and an irreversible capacity loss of no more than about 55
mAh/g, and comprising a layered lithium metal oxide
composition approximately represented by the formula Li1+bNiα
MnβCoγAδO2-zFz, where b ranges from about 0.091 to about 0.14,
α ranges from 0.1 to about 0.4, β range from about 0.2 to about
0.65, γ ranges from 0 to about 0.46, δ ranges from about 0 to
about 0.15 and z ranges from 0 to 0.2, and where A is Mg, Sr,
Ba, Cd, Zn, Al, Ga, B, Zr, Ti, Ca, Ce, Y, Nb, Cr, Fe, V, Li or
combinations thereof.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yoshioka US 6,000,146 Dec. 14, 1999
Schütte US 6,159,252 Dec. 12, 2000
Kweon US 2002/0110736 A1 Aug. 15, 2002
Shiozaki US 2004/0234857 A1 Nov. 25, 2004
Appeal 2019-005349
Application 14/246,914
3
Kang US 2005/0058588 A1 Mar. 17, 2005
Thackeray US 2006/0099508 A1 May 11, 2006
Park US 2007/0292763 A1 Dec. 20, 2007
Sun US 2009/0253042 A12 Oct. 8, 2009
Chang WO 2007/094645 A13 August 23, 2007
Lopez US 8,394,534 B2 Mar. 12, 2013
Lopez US 8,741,485 B2 June 3, 2014

REJECTIONS
1. Claims 1–5, 7, 8, 10, and 13–23 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor or a joint inventor, or for
pre–AIA the applicant regards as the invention. Ans. 3.
2. Claims 1–3, 5, 7, 8, 10, 13–19, and 23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kang and
Shiozaki. Ans. 6.
3. Claims 3–5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kang, Shiozaki, and Sun.
Ans. 13.
4. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kang, Shiozaki, Chang,
Schütte, and Yoshioka. Ans. 13.

2 The Examiner relies alternatively on Sun KR 2008-099131, published
November 12, 2008 as well as its English equivalent US 2009/0253042 A1
in the same rejection. Because the Examiner also uses the US publication as
the English equivalent for Sun KR 2008-099131, we refer only to the US
publication below.
3 The Examiner relies on US 2010/0227222 A1, published Sept. 9, 2010, as
Chang’s English equivalent.
Appeal 2019-005349
Application 14/246,914
4
5. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kang, Shiozaki, and
Thackeray. Ans. 15.
6. Claims 1, 2, 7, 8, 14–18, 21, and 22 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by, or in the alternative under 35
U.S.C. § 103(a) as being unpatentable over Thackeray. Ans. 16.
7. Claims 3–5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Thackeray and Sun. Ans.
22.
8. Claims 3 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Thackeray and Kweon. Ans.
22.
9. Claim 19 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Thackeray and Park. Ans.
23.
10. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Thackeray, Chang, Schütte,
and Yoshioka. Ans. 24.
11. Claims 1–5, 7, 8, and 14–23 are rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–
24 of U.S. Patent No. 8,741,485 (“the ’485 patent”) in view of
Thackeray. Ans. 26.
OPINION
Rejection 1
The Examiner determines claim 1 is indefinite because the claim
language “for a lithium ion battery having a room temperature specific
Appeal 2019-005349
Application 14/246,914
5
discharge capacity from 4.6V to 2V of at least about 220 mAh/g at a
discharge rate of C/10 and an irreversible capacity loss of no more than
about 55 mAh/g” “mix[es] limitations in a manner making the scope of the
claim unclear.” Ans. 4. Specifically, the Examiner relies on Appellant’s
assertion that the claimed properties of specific discharge capacity and
irreversible capacity loss are properties of the recited “positive electrode
active material” (id. (citing Declaration of Herman Lopez under 37 C.F.R.
1.132 dated July 19, 2018)), and determines it is contrary to the claim
language which requires that specific discharge capacity and irreversible
capacity loss are properties of the battery as a whole. Id. The Examiner
further determines that the scope of claim 1 is unclear because the properties
of specific discharge capacity and irreversible capacity loss “are conditional
limitations which depend on the totality of the structure of the lithium ion
battery and the operational conditions of the battery during measurement,”
but the claim language does not set forth any structure or measurement
conditions of the battery. Id. (emphasis omitted).
The Examiner determines claim 15 is indefinite for the same reason as
claim 1 because it requires that “the product metal oxide” has the same
properties of specific discharge capacity and irreversible capacity loss as
claim 1. Ans. 4–5. The Examiner further determines claim 15 is indefinite
because “it is unclear what is ‘cycled from 4.6 volts to 2.0 volts at a rate of
C/10.’” Id. at 5. The Examiner explains that claim 15 does not recite a
lithium ion battery, unlike claim 1 which recites that the lithium ion battery
is cycled during discharge capacity testing. Id.
Appellant argues that “the intended meaning [of the claim limitation
at issue] is that the asserted discharge capacity is a property of the material,”
and that a person of ordinary skill in the art would understand the meaning
Appeal 2019-005349
Application 14/246,914
6
of the claim language. Appeal Br. 10. Appellant relies on evidence it
submitted during prosecution as demonstrating that a person of ordinary skill
in the art would recognize the performance properties in claims 1 and 15 as
properties of the positive electrode material. See Reply Br. 5–9. Appellant
also states that it has filed a claim language amendment with the Appeal
Brief to be “extra clear” that the recited properties are properties of the
positive electrode material.4 Appeal Br. 10.
Appellant’s arguments are not persuasive of reversible error. In
determining whether a claim is unpatentable under §§ 112(b)/112, second
paragraph, we look to whether a person of ordinary skill in the art would
understand what is claimed when the claim is read in light of the
specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). Further, the burden of precise claim drafting
rests on the applicant. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997);
see also In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“As the
statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims
are required to be cast in clear—as opposed to ambiguous, vague,
indefinite—terms.”).
With respect to the claimed properties of specific discharge capacity
and irreversible capacity loss, the Specification describes testing coin cell
batteries for those properties; it does not describe testing the positive
electrode material alone for those properties. Spec. 40:15–41:27. Thus, a
person of ordinary skill in the art would have understood those properties
are properties of a battery and not merely a positive electrode material.

4 The record of this appeal does not include the amendment referenced by
Appellant. This decision considers only the claims set forth in the Claims
Appendix filed with the Appeal Brief on March 20, 2019.
Appeal 2019-005349
Application 14/246,914
7
Further, as the Examiner sets forth in the Answer (see Ans. 32–33), the
prosecution history supports that the recited properties relate to the cell
and not merely the positive electrode material. Accordingly, because the
claim scope is unclear in reciting properties of the battery in a limitation
directed to the positive electrode material, claim 1 is indefinite. Claim 15
is indefinite for the same reason, because its requirement that “the product
metal oxide” has the properties of specific discharge capacity and
irreversible capacity loss recited in claim 1, which are properties of the
battery, renders the claim scope unclear.
The Examiner’s rejection provides Appellant an opportunity to bring
the necessary clarity to the claim language. “[D]uring patent prosecution
when claims can be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed.” See In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989); see also Packard, 751 F.3d at 1314
(Fed. Cir. 2014) (affirming rejection, among other reasons, because the
appellant did not “show why, on close scrutiny, the existing claim language
really was as reasonably precise as the circumstances permitted”).

Rejections 2–5
Appellant presents separate arguments against these rejections under
35 U.S.C. § 103(a) for independent claims 1 and 15, and dependent claim
23. We limit our discussion to these claims. All other claims stand or fall
with the claim from which they depend. 37 C.F.R. § 41.37(c)(1)(iv) (2013).
Claims 1 and 15
The Examiner finds that Kang teaches a positive electrode active
material comprising a layered lithium metal oxide composition
approximately represented by the formula recited in claims 1 and 15, except
Appeal 2019-005349
Application 14/246,914
8
that Kang teaches a broader range of b, between 0–0.3, that overlaps the
claimed range of 0.091–0.14. Ans. 6 (citing Kang ¶ 11). The Examiner
further finds that Shiozaki teaches a lithium composite oxide positive
electrode active material having improved discharge capacity and b=0.1. Id.
at 6–7 (citing Shiozaki ¶ 188). The Examiner determines it would have been
obvious to a person of ordinary skill to select the value of b around 0.1 as
taught by Shiozaki in order to improve discharge capacity. Id. at 7.
The Examiner’s determination as to the properties of specific
discharge capacity and irreversible capacity loss recited in claims 1 and 15
accepts, for purposes of argument, Appellant’s assertion that they are
material properties of the positive electrode material. Ans. 7. The Examiner
finds that these properties necessarily result from the chemical composition
of the material, and determines that those properties do not patentably
distinguish the claimed composition, absent evidence that active material of
substantially the same chemical composition would exhibit different specific
discharge capacity and irreversible capacity loss. Id. The Examiner further
determines that the claimed range of capacity properties describes the known
desirable features of a rechargeable battery, which would have as high a
discharge capacity and as low an irreversible capacity loss as possible (id. at
8), and that the recitation of “a lithium ion battery” in the preamble of claim
1 is an intended use for the positive electrode active material and not a
limitation of the claim. Id. at 8–9.
Appellant disputes that the properties of specific discharge capacity
and irreversible capacity loss as recited in the claims are insufficient to
patentably distinguish the claimed composition. Appeal Br. 11–12.
Appellant argues that theoretical capacity of a lithium metal oxide electrode
material is a material property based on its atomic lattice structure (id. at 12–
Appeal 2019-005349
Application 14/246,914
9
14), and that capacity of the electrode material can be tested in battery cells
with arbitrarily small impedances in order to isolate the evaluation of the
electrode material from the rest of the cell. Id. at 14–15, 18. As to Kang and
Shiozaki, Appellant argues that they do not explicitly or inherently teach the
claimed properties or provide a reasonable expectation of success, because
the electrode material has a complex and not well understood crystal
structure that is sensitive to how it is synthesized. Id. at 19–20, 25.
Appellant further argues that Kang teaches a broad genus of stoichiometries
for the electrode material, but not the properties of the claimed
stoichiometries, and that Shiozaki’s material is made by a different heating
process than used by Appellant and Kang, which a person of ordinary skill
in the art would understand as distinguishing Shiozaki’s composition
(although Appellant does not dispute that the stoichiometry of Shiozaki’s
composition is within the claimed range). Id. at 22–23.
The Examiner responds that the positive electrode material alone is
incapable of having the claimed properties, which are properties of a whole
battery cell, and similarly that the claimed properties are dependent on
factors relating to other parts of the cell (e.g., the counter electrode,
separator, and electrolyte) and thus do not define or imply that the positive
electrode material has a specific structure. Ans. 28–29. The Examiner
further responds that the scope of the lithium ion battery recited in the claims
is not limited to cells with arbitrarily small impedances, and further notes
that Appellant’s argument supports a finding that the claimed “properties of
[specific discharge capacity and] irreversible capacity loss . . . are not
directly correlated with the structure of the positive electrode active
material.” Id. at 34. As to Kang and Shiozaki, the Examiner responds that
the broad disclosure of Kang’s composition demonstrates a prima facie case
Appeal 2019-005349
Application 14/246,914
10
of obviousness (id. at 36, citing Kang Fig. 4, ¶¶ 11–12), Shiozaki expressly
teaches an embodiment having a b value within the claimed range, and a
person of ordinary skill in the art would have had a reasonable expectation
of success in making the claimed composition because of Kang and
Shiozaki’s teachings of the method described in claim 15. Id. at 35–37.
After considering each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error in Rejections 2–5, for the
reasons set forth by the Examiner in the Final Office Action and Answer, as
summarized above. We add the following primarily for emphasis. The
overlap in the ranges of the composition of Kang as modified by Shiozaki
establishes prima facie obviousness of Appellant’s claimed composition. In
re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Further, even assuming
that the recited properties were properties of the positive electrode material
and not the battery cell as a whole, the Examiner provides a sufficient basis
to shift the burden of proof to Appellant, and Appellant has not presented
any objective evidence to show that a person of ordinary skill in the art
would not have a reasonable basis to expect that the positive electrode
composition taught by Kang and Shiozaki would result in the claimed
properties. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as
here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”). Accordingly, we affirm Rejections 2–5.
Claim 23
Appellant separately argues claim 23, which depends from claim 1
and additionally requires that b ranges from about 0.1 to about 0.125.
Appeal 2019-005349
Application 14/246,914
11
Appellant argues that Figures 5 and 6 of the Specification show that
compositions having values of b within this range “exhibit surprisingly large
high capability at 2C and 5C discharge rates.” Appeal Br. 29.
We are not persuaded that Appellant has met the burden of production
to show that the capacity of the composition recited in claim 23 was an
unexpected result. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991). Appellant has not identified any averment in the Specification or any
other evidentiary submission asserting that the results were unexpected. See
In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (Explaining that Geisler
failed to carry the burden of establishing unexpected results because
“Geisler made no such assertion [of unexpected results] in his application
[or] submit any such statement through other evidentiary submissions, such
as an affidavit or declaration.”) (citing In re Orfeo, 440 F.2d 439, 441
(CCPA 1971)).

Rejections 6–10
Our analysis of Rejections 6–10 is similar to that of Rejections 2–5.
The Examiner finds that Thackeray teaches a positive electrode active
material comprising a layered lithium metal oxide composition
approximately represented by the formula recited in claims 1 and 15,
although in an alternate notation. Ans. 16–17 (citing Thackeray ¶¶ 6, 56).
The Examiner acknowledges that Thackeray does not disclose the properties
recited in claims 1 and 15, but finds, based on Appellant’s assertion that they
are material properties of the positive electrode material, that the properties
necessarily result from the chemical composition and do not patentably
distinguish the claimed composition, absent evidence that active material of
Appeal 2019-005349
Application 14/246,914
12
substantially the same chemical composition would exhibit different specific
discharge capacity and irreversible capacity loss. Id. at 17.
Appellant’s arguments against the rejections on grounds of
obviousness are substantially the same as its arguments against Rejections
2–5 discussed above. As to the anticipation rejection over Thackeray,
Appellant argues that Thackeray shows the claimed properties of specific
discharge capacity and irreversible capacity loss are not inherent, because
Thackeray’s positive electrode active material did not yield the claimed
results. Appeal Br. 32 (citing Thackeray Fig. 14). This argument is not
persuasive because the test conditions in Thackeray’s Figure 14 are not the
same as the conditions recited in Appellant’s claim 1; Appellant has not
shown that Thackeray’s positive electrode active material would not achieve
the same results as the claimed material if it were included in the same
lithium ion battery and tested under the same conditions. Accordingly, we
affirm Rejections 6–10 for the same reasons as discussed above for
Rejections 2–5.

Rejection 11
The Examiner finds claims 1–5, 7, 8, and 14–23 are unpatentable over
the combination of claims 1–24 of the ’485 patent and Thackeray on the
ground of nonstatutory double patenting. Ans. 26. The Examiner finds that
the range of the value of x in the ’485 patent claims slightly overlaps the
high end of the range of the value of x in Appellant’s claims, and that
Thackeray teaches that a value of x within the range of Appellant’s claims
yield a functional positive electrode active material. Id. (citing Thackeray
¶ 56). The Examiner determines it would have been obvious to a person of
ordinary skill in the art to modify the x value of the ’485 patent because it
Appeal 2019-005349
Application 14/246,914
13
would have been substituting a known effective range for another known
effective range to yield a predictable result. Id. at 27.
Appellant argues that neither of the references teaches the range of
lithium content of Appellant’s claims, and that the combined teachings of
the ’485 patent and Thackeray do not provide reasonable expectation of
success that the composition would achieve the properties recited in claim 1.
Appeal Br. 38. Appellant’s arguments are not persuasive because they argue
against the references individually, and as discussed above for Rejections 2–
5, Appellant has not presented any evidence to meet its burden to show that
a person of ordinary skill in the art would not have a reasonable basis to
expect that the positive electrode composition taught by Kang and Shiozaki
would result in the claimed properties. Accordingly, we affirm Rejection
11.
CONCLUSION
The Examiner’s rejections are affirmed.
Appeal 2019-005349
Application 14/246,914
14
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7, 8,
10, 13–23
112(b) Indefiniteness 1–5, 7, 8,
10, 13–23

1–3, 5, 7, 8,
10, 13–19,
23
103(a) Kang, Shiozaki 1–3, 5, 7, 8,
10, 13–19,
23

3–5 103(a) Kang, Shiozaki,
Sun
3–5
20 103(a) Kang, Shiozaki,
Chang, Schütte,
Yoshioka
20
21, 22 103(a) Kang, Shiozaki,
Thackeray
21, 22
1, 2, 7, 8,
14–18, 21,
22
102(b) or in
the
alternative
103(a)
Thackeray 1, 2, 7, 8,
14–18, 21,
22

3–5 103(a) Thackeray, Sun 3–5
3, 5 103(a) Thackeray, Kweon 3, 5
19 103(a) Thackeray, Park 19
20 103(a) Thackeray, Chang,
Schütte, Yoshioka
20
1–5, 7, 8,
14–23
Nonstatutory
double patenting
over claims 1–24
of U.S. Patent No.
8,741,485 in view
of Thackeray
1–5, 7, 8,
14–23

Overall
Outcome
1–5, 7, 8,
10, 13–23

Appeal 2019-005349
Application 14/246,914
15
TIME PERIOD FOR RESPONSE
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