Ex Parte Dalavi et al

Patent Trial and Appeal Board

Oct 30, 2018

13958197 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/958, 197 08/02/2013 Swapnil J. Dalavi
62274 7590 10/30/2018
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
33 South Sixth Street
Suite 4540
Minneapolis, MN 55402
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5024.41US01 4509
EXAMINER
VAN OUDENAREN, MATTHEW W
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
10/30/2018 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 SW APNIL J. DALA VI,
SHABAB AMIRUDDIN, and BING LI
Appeal2018-000235
Application 13/958, 197
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we cite to the Specification of August 2, 2013
("Spec."); Final Act. Office Action ofNovember 17, 2016 ("Final Act.");
Appeal Brief of June 1, 2017 ("Appeal Br."); Examiner's Answer of August
16, 2017 ("Ans."); and Reply Brief of October 9, 2017 ("Reply Br.").
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Application 13/958,197
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § I34(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-6, 8, 9, 29, 30, 33, 34, and 36-39
under 35 U.S.C. § I03(a) as obvious over Amiruddin, 3 in view of Xiang; 4
and the Examiner's decision to reject claims 7, 31, 3 2, and 3 5 under 3 5
U.S.C. § I03(a) as obvious over Amiruddin in view of Xiang and further in
view ofim. 5 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to an electrolyte composition (see, e.g., claim
1) and a lithium ion battery including the electrolyte (see, e.g., claim 8). The
electrolyte composition of claims 1 and 8 contains the following:
(a) a solvent comprising
(i) fluoroethylene carbonate and/or ethylene carbonate, and
(ii) a liquid organic solvent selected from the group consisting of
dimethyl carbonate, methyl ethyl carbonate, y-butyrolactone,
y-valerolactone or a combination thereof;
(b) from about I. IM to about 2.5M of a lithium electrolyte salt
selected from the group consisting of LiPF 6, LiBF 4 and combinations
thereof;
2 The Application Data Sheet of August 2, 2013 lists the applicant as Envia
Systems, Inc. Appellant's Appeal Brief lists Envia Technologies, Inc. as the
real party in interest. Appeal Br. 3.
3 Amiruddin et al. US 2011/0136019 Al, published June 9, 2011
("Amiruddin").
4 Xiang et al., Dimethyl methylphosphonate (DMMP) as an efficient flame
retardant additive for the lithium-ion battery electrolytes, ScienceDirect,
Journal of Power Sources, 173, 562-564 (2007) ("Xiang").
5 Im et al., US 2005/0031963 Al, published Feb. 10, 2005 ("Im").
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( c) an optional lithium salt additive; and
(d) from about 0.01 to about 0.4 wt% dimethyl methylphosphonate
(DMMP). See Appeal Br. 20-21 (claims appendix).
OPINION
In challenging the Examiner's rejections, Appellant argues against the
rejection of claim 1, argues claims 6, 29, and 30 as a separate group, and
argues claims 8, 9, 33, 34, and 36-39 as another separate group. Appeal Br.
4. We select claims 1, 6, and 8 as representative for resolving the issues on
appeal.
Claim 1
The issue arising for the rejection of claim 1 is: Has Appellant
identified a reversible error in the Examiner's finding of a suggestion within
the prior art for using from about 0.01 to about 0.4 wt% DMMP in the
electrolyte of Amiruddin?
Based on the fact-finding and for the reasons advanced by the
Examiner, we determine that Appellant has not identified such an error. We
add the following for emphasis.
There is no dispute that Amiruddin teaches a lithium battery
electrolyte that does not contain DMMP. Compare Appeal Br. 10-11, with
Ans. 22. Nor is there any dispute that Xiang teaches adding DMMP to a
lithium ion battery electrolyte to suppress flammability of the electrolyte.
Compare Appeal Br. 12, with Final Act. 5. Appellant's contends that the
Examiner's combination of Amiruddin and Xiang is in error because
Amiruddin does not teach batteries or electrolytes with a significant
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flammability and Xiang teaches away from the about 0.01 to about 0.4 wt%
concentrations of claim 1. Appeal Br. 11. These arguments are not
persuasive for the following reasons.
First, a preponderance of the evidence supports the Examiner's
finding that those of ordinary skill in the art understood that non-aqueous
electrolytes can be ignited and, thus, are flammable. According to Xiang,
"non-aqueous electrolyte can be ignited in the situations of various types of
accidents and abuses, which has imparted the state-of-the-art electrolyte
systems with potential fire hazards." Xiang § 1 Intro., para. 1.
Appellant contends that "[t]he Examiner has not presented any
evidence or assertion that the baseline electrolyte of the present claims pose
a significant flammability risk or would be so recognized by persons of
ordinary skill in the art." Appeal Br. 11. To support this contention,
Appellant cites that Xiang's experiments use an electrolyte containing a
mixture of ethylene carbonate and diethyl carbonate as the baseline
electrolyte (Xiang § 2 Experimental, para. 1) and Amiruddin discloses that
"[t]he examples suggest that diethyl carbonate is not a desirable solvent for
high voltage operation with conventional lithium salts due to oxidative
instability." Amiruddin ,r 67. But the fact that diethyl carbonate is
oxidatively unstable at high voltage operation does not negate the evidence
that non-aqueous electrolytes as a class were known to be flammable. Xiang
§ 1 Intro., para. 1. Xiang speaks of non-aqueous electrolytes generally and
the selection of diethyl carbonate for use in the electrolyte of the
experiments does not somehow limit the more general teaching of the
reference. Therefore, those of ordinary skill in the art understood that non-
aqueous electrolytes, such as those taught by Amiruddin, could be ignited
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and, thus, posed a fire risk. In view of this knowledge, those of ordinary
skill in the art would have understood that an additive that reduces the
flammability of non-aqueous electrolytes, such as DMMP, would be useful
in Amiruddin's electrolyte.
Appellant further contends Xiang teaches away from the DMMP
concentration range of claim 1 because Xiang does not suggest any utility
for flame reduction at concentrations below 5 wt%. Appeal Br. 11-13. This
argument overlooks the Examiner's analysis, which is based on an ordinary
artisan using routine experimentation to optimize/control the concentration
of DMMP to balance flame retardancy with overall battery capacity. Final
Act. 5---6.
Where the general conditions of a claim are disclosed in the prior art,
and the evidence supports a determination that discovery of the optimum or
workable ranges would result from routine experimentation, the burden
shifts to the applicant to show that the particular range values recited in the
claim produce an unexpected result. In re Aller, 220 F.2d 454, 456 (CCPA
1955). Xiang provides evidence that DMMP decreases the flammability of
non-aqueous electrolytes across a range of concentrations (Xiang Fig. 2)
without adversely affecting cycle performance (Xiang Fig. 4). Xiang tests
the flammability of electrolytes containing LiPF 6, ethyl carbonate, and
diethyl carbonate (1 M LiPF6 in EC:DE (1:1)) as a baseline and with 5 wt%,
10 wt%, 15 wt%, and 20 wt% DMMP. Xiang§§ 2-3 Experimental and
Results and discussion. Although Xiang indicates that 10% DMMP is
needed to fully prevent ignition of the electrolyte, Xiang's Figure 2 shows
decreasing self-extinguishing time (SET) between 0% and 5% DMMP and
Xiang explains that "the SET greatly decreases to 70 s g-1 even with only 5
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wt.% DMMP." Xiang§ 3 Results and discussion, para. 1. Thus, the
ordinarily skilled artisan would have understood that DMMP levels below 5
wt% would provide some decrease in flammability in electrolytes containing
1 M LiPF6 in EC:DE (1: 1 ). Moreover, as pointed out by the Examiner,
those of ordinary skill in the art would have understood that routine
experimentation would be necessary to find workable and optimal
concentrations for other specific electrolyte formulations. Ans. 24--25. The
key is that Xiang provides evidence that the concentration ofDMMP in non-
aqueous electrolytes is a result-effective variable that affects the
flammability of the electrolyte and cycle performance and Xiang provides a
relationship between the variable and the results. This is sufficient to
support the prima facie case of obviousness in this case. See In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.").
The situation is one that cries out for a showing of unexpected results
that evince the criticality of the claimed range for the result that is
unexpected. Although Appellant argues unexpected results in cycling
stabilization from the addition of the DMMP at low concentrations (Appeal
Br. 13), Appellant's contention is mere attorney argument and without the
type of objective proof necessary to support the argument. Attorney
argument in the briefs cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Appellant has not identified a reversible error in the Examiner's
rejection of claim 1.
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Claim 6
Turning to claim 6, Appellant's argument focuses on the limitation in
that claim requiring a concentration of methyl ethyl carbonate of from about
5 weight percent to about 20 weight percent. Appeal Br. 13-15. Appellant
contends Amiruddin does not provide any explicit ranges of methyl ethyl
carbonate or explicit combinations of dimethyl carbonate (DMC) and methyl
ethyl carbonate (MEC) and does not identify the concentration ranges as
result effective variables with respect to any relevant result since no
concentration ranges or any particular reference ofDMC and MEC are
discussed in Amiruddin. Id.
Appellant's argument is not persuasive because a preponderance of
the evidence supports the Examiner's routine experimentation analysis.
Final Act. 8-9. Amiruddin discloses using a mixture of ethylene carbonate
with a liquid component and provides guidance on the concentrations of
ethylene carbonate that are useful. Amiruddin ,r 69. According to
Amiruddin, "[g]enerally, the solvent comprises from about 5 to about 80
volume percent ethylene carbonate, in further embodiments from about 10 to
about 7 5 volume percent ethylene carbonate and in other embodiments from
about 15 to about 70 volume percent ethylene carbonate." Id. Although,
Amiruddin does not explicitly disclose ranges for the liquid component,
Amiruddin identifies the liquid component as dimethyl carbonate, methyl
ethyl carbonate, y-butyrolactone, y-valerolactone or a combination thereof
and states that "[ t ]he relative amounts of the solvent components can be
selected to provide desired ion conductivity over the desired operating
temperatures of the battery." Amiruddin, thus, indicates that the solvent
components being discussed are result-effective for achieving the referred to
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ion conductivity result. This is sufficient evidence that the concentration of
the methyl ethyl carbonate was understood by those skilled in the art to be a
result-effective variable optimizable through routine experimentation.
Appellant has not identified a reversible error in the Examiner's
rejection of claim 6 or the claims grouped with claim 6, i.e., claims 29 and
30.
Claim 8
Claim 8 reads:
8. A lithium ion battery comprising a positive
electrode, a negative electrode, and a separator separating
the positive electrode and the negative electrode, wherein
the positive electrode comprises an active material
comprising a lithium rich metal oxide, and an electrolyte of
claim 1,
wherein the positive electrode active material has a
specific capacity of at least about 140 mAh/ g at a 1 C rate
discharged from 4.35V to 2V and wherein the battery has a
capacity at the 500th cycle that is at least about 94% of the
5th cycle capacity when cycled at a discharge rate of JC
from 4.35V to 2.5V.
Appeal Br. 21 ( claims appendix) ( emphasis added).
The issue arising is: Has Appellant identified a reversible error in the
Examiner's finding that the battery of Amiruddin as modified by Xiang
would inherently possess the discharge capacity of claim 8?
Appellant has identified such an error.
The Examiner's inherency finding is based on the underlying finding
that Amiruddin, as modified by Xiang, has the same structure and
compositions as claimed. Final Act. 10.
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"[T]he use of inherency, a doctrine originally rooted in anticipation,
must be carefully circumscribed in the context of obviousness." PAR
Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014).
"[T]he limitation at issue necessarily must be present, or the natural result of
the combination of elements explicitly disclosed by the prior art." Id. at
1196. Although adding DMMP to some of the electrolyte compositions
suggested by Amiruddin may increase the capacity of the battery at the 500th
cycle due to the inherent properties of DMMP, the Examiner cites to no
persuasive evidence that the capacity at the 500th cycle would necessarily be
at least about 94% of the 5th cycle capacity for a composition suggested by
Amiruddin in view of Xiang. "The mere fact that a certain thing may result
from a given set of circumstances is not sufficient" to support a finding of
inherency. In re Rijckaert, 9 F.3d 1531, 1533-34 (Fed. Cir.1993).
Because the Examiner does not sufficiently support the finding of
inherency, we agree with Appellant that the Examiner reversibly erred in
rejecting claim 8.
We do not sustain the rejection of claims 8, 9, 33, 34, and 36-39 as
obvious over Amiruddin in view of Xiang. The Examiner's application of
Im to reject claim 35 does not cure the defect. Thus, we do not sustain the
rejection of claim 35 over Amiruddin in view of Xiang and Im.
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In summary:
1---6, 8, 9, § 103(a)
29, 30, 33,
34, 36-39
7,31,32, § 103(a)
35
Summar
CONCLUSION
Amiruddin, 1---6,29,30
Xiang
Amiruddin, 7,31,32
Xiang, Im
1-7,29-32
DECISION
The Examiner's decision is affirmed-in-part.
TIME PERIOD FOR RESPONSE
8, 9, 33, 34,
36-39
35
8,9,33-39
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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