Ex Parte Dover et al

Patent Trial and Appeal Board

Apr 14, 2014

12541229 (P.T.A.B. Apr. 14, 2014)

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.
12/541,229 08/14/2009 B. Troy Dover 208-6180DV 2913
20792 7590 04/15/2014
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
WYSZOMIERSKI, GEORGE P
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
04/15/2014 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 B. TROY DOVER, CHRISTOPHER JAY WOLTERMANN,
MARINA YAKOVLEVA, YUAN GAO,
and PRAKASH THYAGA PALEPU
____________

Appeal 2012-012064
Application 12/541,229
Technology Center 1700
____________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2012-012064
Application 12/541,229

2
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of stabilizing lithium metal powder. The Examiner has rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, the preponderance of evidence on this record
supports the Examiner’s conclusion that the subject matter of Appellants’
claims 1 and 4 is obvious in light of the disclosure in the Hong et al. article
Surface Characterization of Emulsified Lithium Powder Electrode 1
(“Hong”). In this regard, we adopt the findings and reasoning of the
Examiner with respect to the teachings of Hong.
In addition, upon consideration of the evidence on this record and
each of Appellants’ contentions, the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims 2, 3, and 5 is obvious in light of the disclosure in Hong
and either U.S. Patent No. 3,788,9062 (“Schroeder”) or U.S. Patent No.
5,976,4033 (“Dover”). In this regard, we adopt the findings and reasoning of
the Examiner with respect to the teachings of Hong, Schroeder, and Dover.
Appellants argue that, contrary to the Examiner’s finding, Hong does
not disclose the claim limitation “contacting the lithium metal with a
fluorination agent to provide a stabilized lithium metal powder having a
continuous [lithium fluoride] passivation layer,” because, according to
Appellants, Hong fails to disclose that the lithium fluoride layer created

1 Seung-Taek Hong et al., Surface Characterization of Emulsified Lithium
Powder Electrode, 50 ELECTROCHIMICA ACTA 535-539 (2004).
2 Schroeder, U.S. 3,788,906, issued Jan. 29, 1974.
3 Dover et al., U.S. 5,976,403, issued Nov. 2, 1999.
Appeal 2012-012064
Application 12/541,229

3
according to the method disclosed in Hong is continuous. Br. 4-6; Reply Br.
2-3. But the Examiner made a prima facie case of obviousness, including a
finding that Hong discloses creating the claimed “continuous [lithium
fluoride] passivation layer.” This shifted to Appellants the burden to present
evidence to rebut the prima facie case. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Here, Appellants present no evidence that the method
disclosed in Hong would fail to produce a continuous lithium fluoride layer,
instead providing only attorney argument to this effect. This is not sufficient
to carry their burden. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(attorney argument is not the factual evidence required to rebut a prima facie
case of obviousness); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”).
Moreover, even assuming that Appellants were correct that the prior
art does not disclose the “continuous [lithium fluoride] passivation layer”
recited in the claims, we are not convinced that this would render the subject
matter of the claims nonobvious. The recited continuous layer is a
description of a product made by the claimed process, not a step in the
claimed process, and the nonobviousness of a claimed process does not
depend on the nonobviousness of the product made by that process.
TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336 F.3d 1322, 1327 (Fed. Cir.
2003) (“A process yielding a novel and nonobvious product may nonetheless
be obvious . . . .”). In any case, as discussed above, for the reasons
articulated by the Examiner, both the claimed process and its recited product
are disclosed in the prior art.
Appeal 2012-012064
Application 12/541,229

4
We affirm the rejection of claims 1 and 4 as obvious in light of Hong.
We also affirm the rejection of claims 2, 3, and 5 as obvious in light of the
combination of Hong and either Schroeder or Dover.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

cdc