Ex Parte Cui et al

Patent Trial and Appeal Board

Nov 13, 2017

13427681 (P.T.A.B. Nov. 13, 2017)

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.
13/427,681 03/22/2012 YiCui AMPRP001C1 1105
22434 7590 11/15/2017
Weaver Austin Villeneuve & Sampson LLP
P.O. BOX 70250
OAKLAND, CA 94612-0250
EXAMINER
MOHADDES, LAD AN
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
USPTO@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YI CUI, SONG HAN, and MARK C. PLATSHON
Appeal 2017-002324
Application 13/427,6811
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4—10, and 13—24. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Amprius, Inc. Appeal
Br. 3.
Appeal 2017-002324
Application 13/427,681
STATEMENT OF THE CASE2
Appellants describe the invention as relating to battery electrodes
containing “nanowires configured to interact with electrochemically active
ions.” Spec. 12. Claim 1, reproduced below with emphasis added to certain
key recitations, is illustrative of the claimed subject matter:
1. A lithium ion battery electrode comprising:
a conductive substrate; and
silicon containing nanowires substrate-rooted to the
conductive substrate, the silicon containing nanowires having
variable cross-sectional dimensions along the length of the
silicon containing nanowires and having tapered profiles with
wider ends and narrower ends such that the silicon containing
nanowires taper from the wider ends to the narrower ends,
wherein one of the ends of each nanowire is substrate-
rooted to the conductive substrate to provide conductive
attachment and mechanical support to the silicon containing
nanowires with respect to the conductive substrate and the other
of the ends of each nanowire is off the conductive substrate.
Appeal Br. 18 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Sunkara et al. US 2007/0095276 A1 May 3, 2007
(hereinafter “Sunkara”)
Buchine et al. US 2010/0122725 Al May 20, 2010
(hereinafter “Buchine”)
2 In this opinion, we refer to the Final Office Action dated February 6, 2015
(“Final Act.”), the Appeal Brief filed March 7, 2016 (“Appeal Br.”), the
Examiner’s Answer dated September 28, 2016 (“Ans.”), and the Reply Brief
filed November 28, 2016 (“Reply Br.”).
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Application 13/427,681
Buchine et al. US 2012/0301785 A1 Nov. 29, 2012
(hereinafter “Buchine
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 6—8, 10, 13, 14, and 18—20 under 35 U.S.C.
§ 102 as anticipated by Buchine ’785. Ans. 2.
Rejection 2.3 Claims 15, 16, 21, and 22 under 35 U.S.C. § 103 as
unpatentable over Buchine ’785. Id. at 4.
Rejection 3. Claims 5, 23, and 24 under 35 U.S.C. § 103 as
unpatentable over Buchine ’785 in view of Buchine ’725 and Sunkara. Id.
at 3.4
ANALYSIS
Rejections 1 and 2. With respect to the Examiner’s first rejection,
Appellants do not separately argue claims 6—8, 10, 13, 14, 18, and 19.
Appellants present a separate argument with respect to claim 20. Id. at 10-
11. With respect to the second rejection, Appellants argument is
3 In the Answer, the Examiner sets forth what we identify as rejection 2 prior
to setting forth rejection 3. Ans. 2-4. Our identification of rejection 2 and
rejection 3 is consistent with how Appellants label the rejections (labeling
these rejections Ground 2 and Ground 3 respectively). Appeal Br. 11—12.
We also note that what we now label as Rejection 2 states that it is also
rejecting claim 12. Ans. 4. Claim 12, however, has been cancelled and is
not on appeal. See, e.g., App. Br. 19 (Claims App’x) (listing claim 12 as
“[cjanceled”).
4 The August 12, 2015, Notice of Panel Decision from Pre-Appeal Brief
Review indicates that claims 1—2, 4—10, and 13—23 are rejected. We
presume this is a typographical error and that claim 24 also stands rejected
because the Examiner refers to a rejection of claim 24 in the Answer.
Ans. 3.
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Application 13/427,681
substantively the same as that presented for claim 1. Appeal Br. 11—12. We
therefore limit our discussion of these two rejections to claims 1 and 20. All
other claims subject to these rejections stand or fall with claim 1. 37 C.F.R.
§41.37(c)(l)(iv) (2013).
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error with respect to
claims 1 and 20. Thus, we affirm the Examiner’s rejection for the reasons
expressed in the Final Office Action and the Answer. We add the following
primarily for emphasis.
The Examiner finds that Buchine ’785 teaches each recitation of claim
1 and finds that Buchine ’785 anticipates claim 1. Ans. 1—2. In particular,
the Examiner finds that Buchine ’785 “discloses silicon nanowires on a
conductive doped or n-type silicon substrate. . . .” Appeal Br. 2.
Appellants argue that Buchine teaches a silicon substrate that is a
semiconductor and that this substrate is “not a conductive substrate.”
Appeal Br. 9. As a threshold matter, we agree with Appellants that
“conductive” in the context of claim 1 and the Specification refers to electric
conductivity. Id. at 10.
Appellants’ argument attempts to distinguish between a
semiconductor and a conductor. Id. at 9—10. A preponderance of the
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evidence, however, establishes that doped silicon, even if a semiconductor,
is still conductive. The dictionary definition of “semiconductor” cited by
Appellants supports this point by stating that a semiconductor has an
“electrical conductivity” albeit less conductivity than a conductor. Id.
Furthermore, Buchine strongly suggests that its doped silicon substrate is
conductive. See, e.g., Buchine 139 (indicating that Buchine’s substrate is
typically conductive and may be doped silicon). Appellants’ Specification
likewise indicates that doped silicon is conductive by stating that “[hjigher
concentration is usually desirable for higher conductivity.” Spec. 190.
Appellants also argue that only high dopant concentration transforms
a semiconductor into a conductor. Reply Br. 5. Claim 1, however, does not
require that the substrate be a conductor; instead, the claim recites a
“conductive substrate,” and Appellants admit that Buchine teaches a
semiconductor. Appeal Br. 9; see also Ans. 6. As explained above, a
semiconductor substrate is a conductive substrate.
Claim 20 recites “a lithium ion battery comprising: a negative
electrode comprising a conductive substrate and silicon containing
nanowires substrate-rooted to the conductive substrate. . . .” Appeal Br. 19-
20 (Claims App’x). As with claim 1, the Examiner finds that claim 20 is
anticipated by Buchine. Ans. 2. In particular, the Examiner finds that
Buchine teaches “silicon nanowires on a conductive doped or n-type silicon
substrate as anodes for lithium ion batteries. . . .” Id. (citing, e.g., Buchine 1
37-40).
Appellants argue that, even if doped silicon is a conductive substrate,
Buchine does not teach “a negative electrode comprising a conductive
substrate and silicon containing nanowires substrate-rooted to the conductive
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substrate.” Appeal Br. 11. Appellants explain that Buchine states that its
ability to form nanostructures “would be advantageous in making a lithium
ion battery anode [i.e., a negative electrode]” but is silent as to the
composition of the negative electrode. Appeal Br. 11 (quoting Buchine
138).
The preponderance of the evidence does not support Appellants’
reading of Buchine. Buchine paragraph 38 explains that “[sjilicon has been
seen as a desirable candidate for the anode material in lithium ion
batteries. . . .” The same paragraph further explains that the Buchine
technique’s “ability to form well ordered and aligned nanostructures with a
great deal of control over the resulting diameter and void spacing between
them . . . would be advantageous in making a lithium ion battery anode.” Id.
Because both diameter (referring to diameter of nanowires) and void spacing
between nanowires (referring to space between nanowires attached to the
substrate) are referenced, Buchine is best understood as teaching that the
structure of nanowires attached to the substrate would be used as the anode.
Appellants argue that Buchine could be teaching detaching the nanowires
before using them as part of an anode (Appeal Br. 11), but Appellants do not
explain why Buchine’s reference to control of void spacing between the
nanowires would be relevant in such a context.
Because Appellants do not identify reversible error, we sustain the
Examiner’s rejection of claims 1, 6—8, 10, 13, 14, and 18—20.
Rejection 3. The Examiner rejects claims 5, 23, and 24 as obvious
over Buchine ’785 in view of Buchine ’725 and Sunkara. Ans. 3. The
Examiner’s findings with respect to each of these three claims are the same.
The Examiner finds that Buchine ’785 does not disclose that the substrate
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comprises nickel, but Buchine ’725 uses the same method and teaches that
silver remains in the structure and is not removed. Id. The Examiner further
finds that Sunkara “teaches that silver and nickel can be interchangeably
used as catalysts for growing fibrous silicon.” Id. The Examiner thus
concludes that “it would have been obvious for the person of ordinary skills
[sic] in the art at the time the invention was made to use silver or nickel as a
silicon nanowire growth catalyzer as doing so is simple substitution of one
known element for another to obtain predictable results and obvious to try
for a practitioner in the art.” Id. at 4.
Appellants’ Claim 5 recites, “The electrode of claim 1, wherein the
conductive substrate comprises nickel.” With respect to this claim,
Appellants argue that both Buchine references teach forming silicon
nanowires via an etching operation but Sunkara teaches growing nanowires
via conventional vapor-liquid-solid (VLS) process. Appeal Br. 12—13.
Appellants’ cite evidence that persuasively supports this position.
Appellants then argue that Sunkara’s suggestion to use nickel in a
conventional VLS process “does not teach or suggest that nickel can be used
in place of silver for a silver-catalyzed etch process.” Id. at 14.
Based on the evidence before us, Appellants’ argument is persuasive
of Examiner error. The Examiner’s position that silver and nickel are
interchangeable “for growing fibrous silicon” (Ans. 3, 8) does not address
whether or not a person having ordinary skill in the art would have had a
reason to incorporate nickel into Buchine’s etching process and does not
address whether or not a person having ordinary skill in the art would have
had a reasonable expectation of success in such an incorporation. We
therefore do not sustain the Examiner’s rejection of claim 5. See In re Kahn,
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441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”).
Appellants’ claim 23 recites, “The electrode of claim 1, wherein the
substrate and the silicon containing nanowires have different compositions.”
Appellants again argue that the Examiner has not provided a proper reason
to combine Sunkara’s nickel with the process of Buchine. We agree with
this argument for the reasons explained above. While we note that claim 23
does not necessarily require nickel, the Examiner provides no explanation
for how the recitation of claim 23 is met aside from the explanation provided
for claim 5. Ans. 3—4, 6—8. Because Appellants’ provide a persuasive
argument as to why the Examiner’s combination of Sunkara and Buchine
lacks rational underpinning, the Examiner’s rejection of claim 23 also fails
absent further explanation.
We also note that Appellants argue that claim 1 requires that “the ends
of each nanowire is substrate-rooted” and that Buchine leaves silicon
nanowires rooted to a silicon substrate. Appeal Br. 14, 16; Reply Br. 7—8.
The substrate in claim 23 is same substrate recited in claim 1 that the
nanowires are “substrate rooted to.” Appeal Br. 18, 20 (Claims App’x). The
Examiner’s explanation of Buchine providing a silver film (Ans. 6—8), does
not indicate that the nanowires are rooted to silver (i.e., the bottom-most
surface of each nanowires is not connected to silver). Appeal Br. 16. Thus,
the preponderance of the evidence supports Appellants’ position that
Buchine’s silicon nano wires are rooted to silicon. The Examiner has not
adequately explained how the combined references teach or suggest
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nanowires having a different material than the substrate in which they are
rooted.
Appellants’ claim 24 recites, “The electrode of claim 1, wherein the
substrate has a conductivity of at least 103 S/m.” Appellants do not dispute
that, if the prior art’s substrate were silver or nickel, this conductivity
recitation would be met. Reply Br. 7; see also April 23, Advisory Action
(finding that nickel has conductivity above 1000 S/m). As explained above,
however, the Examiner has not adequately established that the combined
references teach nanowires that are substrate-rooted to a silver or nickel
substrate. Appeal Br. 16. We therefore also do not sustain the Examiner’s
rejection of claim 24.
Claims 2, 4, 9, and 17. The Examiner does not state any basis for
rejecting claims 2, 4, 9, or 17 in the Final Office Action or in the Answer.
Rather, the February 6, 2015, Office Action Summary states that claims 1, 2,
4—10, and 13—22 are rejected, but the Final Office Action does not explain
any rejection of claims 2, 4, 9, or 17. The Answer, meanwhile, does not
mention these claims at all. We also do not see any explanation with respect
to these claims in, for example, the April 23, 2015, Advisory Action or the
August, 12, 2015, Pre-Brief Appeal Conference decision.
Appellants state that “claims 1, 2, 4—10, and 13—24 are being
appealed.” Appeal Br. 3. Appellants also state that the rejection of claims 1,
2, 4—10, and 13—24 are in error. Id. at 17. Appellants list claims 2, 4, 9, and
17 in the Claims Appendix, but Appellants do not present any separate
argument with respect to claims 2, 4, 9, or 17.
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Because we cannot discern where, if at all, the Examiner has
substantively addressed claims 2, 4, 9, or 17 within the record on appeal, we
reverse the Examiner’s rejection of those claims.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
6—8, 10, 13—16, and 18—22. We reverse the Examiner’s rejection of claims
2, 4, 5, 9, 17,23, and 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).
AFFIRMED-IN-PART
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