Ex Parte Cresce et alDownload PDFPatent Trial and Appeal BoardSep 28, 201714027268 (P.T.A.B. Sep. 28, 2017) Copy Citation 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. ARL 12-26 7058 EXAMINER ZEMUI, NATHANAEL T ART UNIT PAPER NUMBER 1727 MAIL DATE DELIVERY MODE 14/027,268 09/16/2013 Arthur von Wald Cresce 21364 7590 09/29/2017 U S ARMY RESEARCH LABORATORY ATTN: RDRL-LOC-I 2800 POWDER MILL RD ADELPHI, MD 20783-1138 09/29/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARTHUR VON WALD CRESCE and KANG CONRAD XU1 Appeal 2017-003772 Application 14/027,268 Technology Center 1700 Before CHUNG K. PAK, CHRISTOPHER L. OGDEN, and SHELDON M. McGEE, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1-8, 14, 15, 19, and 20, which are all 1 Appellants identify the real party in interest as “the United States Government as represented by the Secretary of the Army[.]” Appeal Brief filed May 23, 2016 (“App. Br.”) 3. 2 Although the Examiner set forth the § 103(a) rejections against claims 1-20 in the Final Action entered August 26, 2015 (“Final Act.”) and the Examiner’s Answer entered August 11, 2016 (“Ans.”), we note that claims 9-13 and 16-18 were cancelled and are no longer pending in the above-identified application. See, e.g., Advisory Action entered February 24, 2016 (“Advisory Act.”) 2; App. Br. 3. In fact, Appellants state that “[cjlaims 1-8, 14, 15, 19, and 20 stand rejected” and “[cjlaims 1-8, 14, 15, 19, and 20 are on appeal.” App. Br. 3. Appeal 2017-003772 Application 14/027,268 of the claims pending in the above-identified application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The subject matter of the claims on appeal is directed to “an electrolyte for use in electrochemical cells” and “an electrochemical cell including a negative electrode; a positive electrode; an electrolyte material adapted to allow for ion passivation between the negative and positive electrodes; and an additive [containing at least one oxirane compound] dispersed in the electrolyte material.” Spec. 1111 and 25. According to paragraph 25 of the Specification: The oxirane compound is believed to react with reactive sites on the cathode and anode surfaces forming a protective layer. This protective layer prevents decomposition at higher voltages while still allowing desired cycling of the electrochemical cell. Details of the appealed subject matter are recited in illustrative claims 1 and 19,3 which are reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations italicized): 1. An electrochemical cell comprising: a negative electrode; a positive electrode; an electrolyte material adapted to allow for ion passivation between the negative and positive electrodes; an additive dispersed in the electrolyte material; 3 To the extent that Appellants have presented substantive arguments for the individual claims on appeal in compliance with the requirements of 37 C.F.R. § 41.37(c)(l)(iv) (2012), we will address them separately. 2 Appeal 2017-003772 Application 14/027,268 wherein the additive includes at least one oxirane compound. 19. An electrolyte for use in an electrochemical cell having a positive and negative electrode, the electrolyte comprising: an electrolyte material; and an additive dispersed in the electrolyte material, wherein the additive includes at least one oxirane compound. App. Br. 14 and 24, Claims Appendix. The Examiner maintains, and Appellants seek review of, the following grounds of rejection: 1. Claims 1-3, 6-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Xu ’359 (US 2012/0225359 Al, published September 6, 2012) and Lee (US 2009/0035656 Al, published February 5, 2009)4; and 2. Claims 1, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Xu ’485 (US 2012/0009485 Al, published January 12, 2012) and Lee. Final Act. 2-9; Advisory Act. 2-6; Ans. 2-7; App. Br. 3, 6-12. DISCUSSION Upon consideration of the evidence relied upon by the Examiner and Appellants in light of each of Appellants’ contentions,5 we find Appellants do not 4 Although the Examiner includes claims 9-13 and 16-18 in this § 103(a) rejection in the Answer, we have omitted them because they were cancelled and are no longer pending in the above-identified application. Compare Ans. 2, with Advisory Act. 2 and App. Br. 3. 5 Any new arguments raised in the Reply Brief, which could have been raised in the Appeal Brief, will not be considered. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 3 Appeal 2017-003772 Application 14/027,268 identify reversible error in the Examiner’s decision rejecting claims 1-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s § 103(a) rejections of the above claims substantially for the reasons set forth in the Final Action, Advisory Action, and the Answer. We add the following primarily for emphasis and completeness. In assessing the obviousness of the subject matter recited in the claims on appeal, “[ojften, it will be necessary for . . . [us] to look to interrelated teachings of [the] multiple [prior art references relied upon by the Examiner] ... in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed . . . .” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). These prior art references must be read in context, taking into account “demands known to the design community,” “the background knowledge possessed by a person having ordinary skill in the art,” and “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. 1. Claims 1-3, 6-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Xu ’359 and Lee Here, the Examiner finds, and Appellants do not dispute, that Xu ’359 teaches an electrochemical cell comprising a negative electrode, a positive electrode, an electrolyte material adapted to allow for ion passivation between the negative and positive electrodes, and an additive dispersed in the electrolyte material. Compare Final Act. 2-3, with App. Br. 6-12; see also Xu ’359 ^fl[ 4 and 2010) (Informative) (explaining that under the previous rules, which are similar to the current rules, “the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). 4 Appeal 2017-003772 Application 14/027,268 8. The Examiner acknowledges that Xu ’359 does not specifically identify at least one oxirane compound as its additive. Final Act. 3. The Examiner finds, and Appellants do not dispute, that Lee teaches using glycidyl ether compound comprising an oxirane group (corresponding to at least one oxirane compound recited in claims 1 and 19) as an additive to an electrolyte. Compare Final Act. 3, with App. Br. 6-12. The Examiner finds, and Appellants do not dispute, that Lee teaches the unstable ether bond in the oxirane group can be broken into a negatively-charged oxygen atom and a positively-charged carbon atom which continuously reacts with adjacent compounds to form a film on the surface of the electrode. The film is then capable of preventing the active material from contacting the electrolyte. In addition, the film can prevent cracks caused by variations in the volume of the negative electrode active material involved in lithium intercalation and deintercalation[.] Compare Final Act. 3 citing Lee H 19-22, with App. Br. 6-12; compare also Lee 122 (“the film can prevent cracks caused by variations in the volume of the negative electrode active material involved in lithium intercalation and deintercalation.”), with Xu ’359 14 (“the electrolyte can support the reversible Li ion intercalation/de-intercalation chemistry . . .”). The electrolyte taught by Lee, like the electrolyte taught by Xu ’359, is useful for a lithium battery. Compare Lee 118, with Xu ’359 H 8 and 14. Thus, notwithstanding Appellants’ arguments to the contrary at pages 6 through 8 of the Appeal Brief, we find that a preponderance of the evidence supports the Examiner’s determination that the collective teachings of Xu ’359 and Lee would have provided an ample reason, suggestion or motivation to prompt one of ordinary skill in the art to employ at least one oxirane compound taught by Lee as an additive to the electrolyte in Xu ’359’s electrochemical cell, with a 5 Appeal 2017-003772 Application 14/027,268 reasonable expectation of successfully preventing cracks caused by variations in the volume of the negative electrode active material involved in lithium intercalation and deintercalation. Appellants do not dispute that Xu ’359 teaches “a Lithium ion source for Lithium ion passivation between the negative and positive electrode” as recited in claim 2. App. Br. 6-12. Rather, Appellants contend that the Examiner has not provided “a rationale as to why the glycidyl ether compound of Lee . . . would behave in the same manner or function as the Appellant’s invention[.]” App. Br. 8. However, the Examiner finds that Lee, like Appellants’ invention, is directed to using at least one oxirane compound (a glycidyl ether compound having an oxirane group) to form a protective layer or film as indicated supra. In any event, “[a]s long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see also KSR, 550 U.S. at 420 (“Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”). Appellants contend that Xu ’395 does not teach an electrolyte in the absence of an electric charge as required by claim 3. App. Br. 8. However, paragraph 29 of Xu ’395 relied upon by the Examiner discloses an electrolyte material that comprises a non-aqueous organic solvent in liquid form. Nowhere in paragraph 29 of Xu ’395 or any other paragraphs of Xu ’395 relied upon by Appellants disclose that such electrolyte material is formed in the presence of an electric charge. Thus, we find no reversible error in the Examiner’s finding that Xu ’395 teaches an 6 Appeal 2017-003772 Application 14/027,268 electrolyte material that comprises a non-aqueous organic solvent in liquid form in the absence of an electric charge as required by claim 3. Appellants contend that Xu ’395 and Lee do not teach or suggest the solubility of at least 1 ppm recited in claim 8. App. Br. 8-9. However, the Examiner finds, and Appellants do not dispute, that: Xu [’395] teaches an electrolyte comprising an additive, wherein the concentration of the additive ranges from 0.1 ppm to 5% with respect to the total solvent weight which overlaps with [and is encompassed by] an embodiment of the instant invention (oxirane additive is present in a concentration range from 0.1 ppm to 100%) wherein one of the solvents disclosed [in the instant application] is also taught by Xu [’395], Compare Final Act. 3^4, with App. Br. 8-9. Thus, we find no reversible error in the Examiner’s finding that the very broadly recited solubility (solubility of at least 1 ppm) recited in claim 8 would have been reasonably expected or would have naturally flowed from following the suggestion by Xu ’395 and Lee to form the recited electrolyte. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and its properties are inseparable”); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicants’] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]”); see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”) 7 Appeal 2017-003772 Application 14/027,268 Appellants contend that Xu ’395 does not teach using at least one oxirane compound as an additive to an electrolyte. App. Br. 9. However, “[n]on- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As indicated supra, the collective teachings of Xu ’395 and Lee, as a whole, would have prompted one of ordinary skill in the art to employ at least one oxirane compound taught by Lee as an additive to the electrolyte in Xu ’395’s electrochemical cell. Appellants also contend that Xu ’395 “teaches away from Appellant’s invention.” App. Br. 9. However, “[w]e will not read into a reference a teaching away from a process [or the recited electrolyte or additive] where no such language exists [in Xu ’395].” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellants do not identify any teaching in Xu ’395 which would have discouraged one of ordinary skill in the art from the using the additive taught by Lee. App. Br. 9. Nor do Appellants discuss the effect of the collective teachings of Xu ’395 and Lee. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (Even if the prior art contains “apparently conflicting” teachings, each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill. . . considering] the degree to which one reference might accurately discredit another.”) Accordingly, we affirm the Examiner’s decision rejecting claims 1-3, 6-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Xu ’359 and Lee. 8 Appeal 2017-003772 Application 14/027,268 2. Claims 1, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Xu ’485 and Lee. Here, the Examiner finds, and Appellants do not dispute, that Xu ’485 teaches an electrochemical cell comprising a negative electrode, a positive electrode, an electrolyte material adapted to allow for ion passivation between the negative and positive electrodes, and an additive dispersed in the electrolyte material. Compare Final Act. 6, with App. Br. 10-12; see also Xu ’485 2 and 6. The Examiner acknowledges that Xu ’485 does not specifically identify at least one oxirane compound as its additive. Final Act. 3. The Examiner finds, and Appellants do not dispute, that Lee teaches using glycidyl ether compound comprising an oxirane group (corresponding to at least one oxirane compound recited in claim 1) as an additive to an electrolyte. Compare Final Act. 6, with App. Br. 10-12. The Examiner finds, and Appellants do not dispute, that Lee teaches the unstable ether bond in the oxirane group can be broken into a negatively-charged oxygen atom and a positively-charged carbon atom which continuously reacts with adjacent compounds to form a film on the surface of the electrode. The film is then capable of preventing the active material from contacting the electrolyte. In addition, the film can prevent cracks caused by variations in the volume of the negative electrode active material involved in lithium intercalation and deintercalation[.] Compare Final Act. 6-7 citing Lee 19-22, with App. Br. 6-12; compare also Lee 122 (“the film can prevent cracks caused by variations in the volume of the negative electrode active material involved in lithium intercalation and deintercalation.”), with Xu ’485 12 (“the electrolytes can support the reversible Li ion intercalation/de-intercalation chemistry . . .”). The electrolyte taught by Lee, 9 Appeal 2017-003772 Application 14/027,268 like the electrolyte taught by Xu ’485, is useful for a lithium battery. Compare Lee 118, with Xu ’485 H 2 and 8. Thus, notwithstanding Appellants’ arguments to the contrary at pages 8 through 12 of the Appeal Brief, we find that a preponderance of the evidence supports the Examiner’s determination that the collective teachings of Xu ’485 and Lee would have provided an ample reason, suggestion or motivation to prompt one of ordinary skill in the art to employ at least one oxirane compound taught by Lee as an additive to the electrolyte in Xu ’485’s electrochemical cell, with a reasonable expectation of successfully preventing cracks caused by variations in the volume of the negative electrode active material involved in lithium intercalation and deintercalation. Appellants contend that Lee does not disclose “a gellable polymer film as found in the Appellants’] claim[s] 4 and 5.” App. Br. 11. However, the Examiner finds, and Appellants do not dispute, that Xu ’485 teaches a porous polyolefin separator or a gellable polymer film as required by claims 4 and 5. Compare final Act. 7 citing Xu ’485, claim 1, with App. Br. 10-12. Moreover, as indicated supra, the collective teachings of Xu ’485 and Lee, as a whole, would have prompted one of ordinary skill in the art to employ at least one oxirane compound taught by Lee as an additive to the electrolyte in Xu ’485’s electrochemical cell that contains a porous polyolefin separator or a gellable polymer film. Appellants, by arguing that Lee does not disclose the gellable polymer film separator alternatively recited in claims 4 and 5, ignores the collective teachings of Xu ’485 and Lee. In re Merck & Co., 800 L.2d at 1097 (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”) 10 Appeal 2017-003772 Application 14/027,268 Accordingly, we also affirm the Examiner’s decision rejecting claims 1, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Xu ’485 and Lee. ORDER Upon consideration of the record, and for the reasons given, it is ORDERED that the decision of the Examiner to reject claims 1-8, 14, 15, 19, and 20 under 35 U.S.C. § 103(a) is AFFIRMED; and FURTHER ORDERED that no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation