Ex Parte Gao et alDownload PDFPatent Trial and Appeal BoardSep 11, 201410900715 (P.T.A.B. Sep. 11, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/900,715 07/28/2004 Yuan Gao 208-6176 8733 20792 7590 09/11/2014 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER BEST, ZACHARY P ART UNIT PAPER NUMBER 1727 MAIL DATE DELIVERY MODE 09/11/2014 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 YUAN GAO, MARINA YAKOVLEVA, JOHN ENGEL, CHRISTINE JARVIS, and MICHAEL LAIN __________ Appeal 2013-005973 Application 10/900,7151 Technology Center 1700 ____________ Before CHUNG K. PAK, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 4, and 5. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is directed to a method of prelithiating electrodes comprising a host material and lithium metal dispersed in the host material (Spec. paras. [0002], [0032]). 1 This application was the subject of a previous appeal (Appeal No. 2009- 013541). Appeal 2013-0005973 Application 10/900,715 2 Claim 1 is illustrative: 1. A method of prelithiating a host material prior to contact with an electrolyte, comprising: dispersing the host material in stabilized lithium metal powder to form a mixture of host material and stabilized lithium metal powder; and vigorously stirring at a temperature of from about 40°C to about 180°C the mixture of host material and stabilized lithium metal powder to promote intimate contact between the host material and stabilized lithium metal powder to promote lithiation of the host material prior to contact with an electrolyte. Appellants appeal the following rejections: 1. Claims 1, 4, and 5 are rejected under 35 U.S.C. § 112, second paragraph, as failing to point out and particularly claim the subject matter which Appellants regard as the invention. 2. Claims 1, 4, and 5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gao (US 6,706,447 B2, issued Mar. 16, 2004) in view of Yazami (US 5,543,021, issued Aug. 6, 1996). REJECTION (1) ISSUE Did the Examiner reversibly err in determining that the relative expression “vigorously stirring” in claim 1 is indefinite? We decide this issue in the negative. ANALYSES The Examiner states that the “vigorously stirring” limitation in claim 1 is indefinite because the Specification provides no measure or standard as to what degree of stirring constitutes “vigorously stirring.” (Ans. 5). The Appeal 2013-0005973 Application 10/900,715 3 Examiner finds that the Specification at paragraph 34 discloses that “vigorous stirring or other agitation can be used to promote contact between the host material 24 and lithium metal powder.” (Ans. 8). The Examiner finds the paragraph 34 disclosure of the Specification to mean that other forms of mixing, other than vigorous stirring, can be used to prelithiate2 the host material (Ans. 8). The Examiner finds that Appellants’ reliance on whether or not the host material is prelithiated is not a sufficient standard for determining if the agitation is vigorous because “other agitation” can also be used to prelithiate the host material (Ans. 8-9). Appellants argue that “vigorously stirring” must result in lithiation of the host material, which provides a standard for determining whether or not the agitation may be considered “vigorously stirring” (Reply Br. 2). Appellants contend that the Specification’s paragraph 34 disclosure that “vigorous stirring or other agitation can be used” does not mean that the “other agitation” is not vigorous (Reply Br. 3). Rather, Appellants argue that the proper interpretation of “other agitation” means that other forms of vigorous agitation may be used otherwise the term vigorous would be superfluous. Id. Appellants contend that the Examiner’s analysis of the second example in the Declaration of Kenneth Brian Fitch dated May 31, 2012 (hereinafter Fitch Declaration 2) where the lithium metal and host material is mixed at 1200 rpm for 10 minutes (i.e., low-energy mixing according to Appellants) is circular (Reply Br. 3-4). Appellants contend that the Examiner improperly reasons that the low-energy mixing example in the Fitch Declaration 2 is vigorous stirring but then concludes that lithiation of 2 “Prelithiate” or “prelithiating” refers to “lithiation of the host material 24 prior to contact of the host material with an electrolyte” (Spec. para. [0032]). Appeal 2013-0005973 Application 10/900,715 4 the host material cannot be the defining characteristic of vigorous stirring because no lithiation occurs in the low energy mixing example (Reply Br. 4). “Vigorously stirring” is not specifically defined in the Specification. The Specification discloses in paragraph 34 that “vigorous stirring and other agitation can be used to promote contact between the host material and the lithium metal powder.” The Specification further discloses that “contact between lithium metal powder and host material 24 results in the partial lithiation of the host material 24, creating a prelithiated host material 24” (Spec. para. [0034], emphasis added). In other words, the agitation, be it vigorous stirring or other agitation, merely promotes contact between the host material and the lithium metal powder where partial lithiation of the host material may occur. The Specification does not disclose what amount of lithiation results from vigorously stirring the host material and lithium metal powder relative to other agitation methods. If only partial lithiation is achieved, unused lithium metal powder would be present in the host material because not all the lithium metal powder has interacted/reacted with the host material. Based upon these disclosures, we agree with the Examiner that no clear standard has been set forth to determine what constitutes “vigorously stirring” within the meaning of the claims. Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)( Definiteness problems often arise when words of degree are used in a claim….When a word of degree is used the district court must determine whether the patent’s specification provides some standard for measuring that degree. The trial court must decide, that is, whether one of ordinary skill in Appeal 2013-0005973 Application 10/900,715 5 the art would understand what is claimed when the claim is read in light of the specification.”) Example (c) in the Fitch Declaration 2 which Appellants rely upon to show what they consider to be “vigorously stirring” shows complete lithiation of the host material with the lithium metal powder (i.e., all the lithium metal powder has reacted with the host material). However, vigorously stirring and other agitation methods may partially lithiate the host material. It is not clear what amount or degree of partial prelithiation would be required by an agitation method for it to be considered vigorously stirring relative to other agitation or stirring methods that achieve the same degree of prelithiation. Therefore, we agree with the Examiner that whether or not prelithiation of the host material occurs is not a suitable standard for determining whether or not the stirring is vigorous or non-vigorous. We are unconvinced by Appellants’ argument that the “other agitation” methods would have been understood to be vigorous agitation methods. As noted above, the paragraph 34 disclosure in the Specification recites that the “vigorous stirring and other agitation can be used to promote contact between the host material and the lithium metal powder.” In other words, the Specification clearly distinguishes “vigorous stirring” from “other agitation” techniques. If Appellants meant paragraph 34 of the Specification to read “vigorous stirring and other vigorous agitation can be used to promote contact between the host material and the lithium metal powder” such should have been so stated in paragraph 34. No evidence in the Specification or the record established that “other agitation” only includes “vigorous” agitation methods to achieve partial prelithiation of the host material. Appeal 2013-0005973 Application 10/900,715 6 Accordingly, based on the disclosures and record discussed above, one of ordinary skill in the art would not have been able to ascertain with reasonable certainty the scope of the relative expression “vigorously stirring” in the claims as no guidance or standard for determining such expression has been provided in the Specification. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014). We affirm the Examiner’s § 112, second paragraph rejection. Because we are unable to determine the scope of “vigorously stirring” as recited in the claims, the rejection of claims 1, 4, and 5 under 35 U.S.C. § 103(a) over Gao in view of Yamazaki would be based upon speculative assumptions as to the meaning of the claims. Therefore, we pro forma reverse the Examiner’s § 103(a) rejection. In re Steele, 305 F.2d 859, 863 (CCPA 1962). This reversal of the prior art rejection is merely procedural based upon our inability to construe the claims as drafted. Gao and Yamazaki may be used by the Examiner in further prior art rejections in the event of further prosecution. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). ORDER AFFIRMED cam Copy with citationCopy as parenthetical citation