Ex Parte Dalavi et alDownload PDFPatent Trial and Appeal BoardOct 30, 201813958197 (P.T.A.B. Oct. 30, 2018) Copy Citation 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."). Appeal2018-000235 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"). 2 Appeal2018-000235 Application 13/958,197 ( 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 3 Appeal2018-000235 Application 13/958,197 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 4 Appeal2018-000235 Application 13/958,197 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 5 Appeal2018-000235 Application 13/958,197 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. 6 Appeal2018-000235 Application 13/958,197 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 7 Appeal2018-000235 Application 13/958,197 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. 8 Appeal2018-000235 Application 13/958,197 "[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. 9 Appeal2018-000235 Application 13/958,197 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 10 Copy with citationCopy as parenthetical citation