Ex Parte Deng et alDownload PDFPatent Trial and Appeal BoardMay 10, 201813710713 (P.T.A.B. May. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 131710,713 12/11/2012 HaixiaDeng 62274 7590 05/11/2018 CHRISTENSEN, FONDER, DARDI & HERBERT PLLC 33 South Sixth Street Suite 3950 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. 5024.30US02 1069 EXAMINER D'ANIELLO, NICHOLAS P ART UNIT PAPER NUMBER 1723 MAILDATE DELIVERY MODE 05/11/2018 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 HAIXIA DENG, SUBRAMANIAN VENKATACHALAM, SUJEET KUMAR, and HERMAN A. LOPEZ Appeal2017-007237 Application 13/710, 713 Technology Center 1700 Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 requests our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-10 and 12-18 under 35 U.S.C. § 103(a) as unpatentable over at least the basic combination of Shizuka (US 2007 /0202405 Al; publ. Aug. 30, 2007) in view of Johnson ("Lithium- manganese oxide electrodes with layered-spine! composite structures 1 Appellant is the Applicant, Envia Systems, Inc., which is also identified as the real party in interest (Appeal Br. 3). Appeal2017-007237 Application 13/710,713 xLi2Mn03·(1- x) Li1+yMn2-y04 (O< x< 1, O~y~ 0.33) for lithium batteries" (of record) 2005). 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). For the reasons presented by Appellant in the briefs, we REVERSE. Claims 1 is illustrative of the claimed subject matter (emphasis added): 1. An electrochemically active material comprising a lithium metal oxide approximately represented by the formula Li1+bCOm NinMnp0(2), where -0.2~b~0.2, 0.2~m~0.45, 0. 055~~0.24, 0.385$-J~O. 72, and m + n +pis approximately 1, wherein up to about 5 mole percent of the transition metals is substituted with a metal dopant, the active material exhibiting three peaks during an initial charge in a differential capacity plot and being a multiphased single material having a layered crystal phase and a spine! crystal phase. ANALYSIS The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability"). After review of the respective positions provided by Appellant and the Examiner, we agree with Appellant that the Examiner has not met the applicable burden in this case. 2 While the Examiner relies upon the additional prior art reference of Sun with Shizuka and Johnson to reject dependent claims 8-10 (see, e.g., Final Action 6), Appellant's arguments are only directed to claims 1, 7, 12, and 13 (Appeal Br., Reply Br. generally). 2 Appeal2017-007237 Application 13/710,713 In the § 103 rejections of all the claims, the Examiner relies upon Shizuka to represent a material genus of the formula presented in claim 1, and Johnson to show that one of ordinary skill would want to achieve both layered and spinel crystal phases in a material made thereof. However, as pointed out by Appellant, Shizuka is solely directed to a layered product, whereas Johnson is directed to a material having a layered phase and a spinel phase in a composition with Mn as the only transition metal component (Appeal Br. 17). Appellant states: Johnson is clear with respect to the functions of the different phases, and there is no teaching regarding how to form the distinct phases in materials with different transition metals or even how to begin to look for these. Johnson explicitly just says it may be time for "much future research" implying that the result is nontrivial to achieve. Appeal Br. 1 7 Appellant also points out that Shizuka uses a significantly different processing approach relative to Appellant, and that the particular resultant product even when made with the same stoichiometries depends on the processing conditions (Appeal Br. 17, 18; see also Reply Br. 8 (further stating that the processing in Johnson is also very different than Appellant's, and that "properties of these complex materials are extremely sensitive to their processing conditions as well as the stoichiometry"). Appellant also points out that the Examiner has failed to properly consider the claimed property of the differential capacity plot (Reply Br. 5, Appeal Br. 15; e.g., Ans. 7 (wherein the Examiner states (in part) that this property "should not be a basis for patentability"). 3 Appeal2017-007237 Application 13/710,713 A preponderance of the evidence supports Appellant's position that Johnson's disclosure (with Shizuka's) is insufficient to establish obviousness of the claimed properties for the material as recited in independent claim 1 (e.g., Appeal Br. generally; Reply Br. 7, 8). In light of these circumstances, the Examiner has not adequately addressed Appellant's arguments that the applied prior art does not teach how to arrive at the required properties in a LiCoMnNiO substrate (see, e.g., Appeal Br. 15, 18, 19; Reply Br. generally; Spec. 19:20-30; Ans. generally). A preponderance of the evidence supports Appellant's position that since the applied prior art at best invites one to much further research on obtaining mixed layered and crystal phases in such materials, there is no evidence one of ordinary skill would have known how to achieve the required species with the required properties as recited in independent claim 1 (Appeal Br 15-18; Reply Br. generally). It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the Appellant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 ( CCP A 1977). Here, however, the Examiner has not directed us to any evidence that the product/substrate disclosed in the prior art is substantially the same and/or is produced by substantially the same method described in Appellant's Specification so as to shift the burden to Appellant to prove otherwise. 4 Appeal2017-007237 Application 13/710,713 A preponderance of the evidence supports the Appellants' position that the Examiner has not met the initial burden of establishing a prima facie case of obviousness of the claimed subject matter under 35 U.S.C. § 103(a), respectively. Oetiker, 977 F .2d at 1445 ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a primafacie case ofunpatentability"). The Examiner's rejection and response to argument presented in the Answer do not persuasively address the contentions raised by the Appellant in their Briefs (Ans. generally). Under these circumstances, we are constrained to reverse the § 103(a) rejections before us. REVERSED 5 Copy with citationCopy as parenthetical citation