Ex Parte Gao et alDownload PDFBoard of Patent Appeals and InterferencesOct 28, 201010900715 (B.P.A.I. Oct. 28, 2010) Copy Citation 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. 10/900,715 07/28/2004 Yuan Gao 208-6176 8733 20792 7590 10/28/2010 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER BEST, ZACHARY P ART UNIT PAPER NUMBER 1727 MAIL DATE DELIVERY MODE 10/28/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TUAN GAO, MARINA YAKOVLEVA, JOHN ENGEL, CHRISTINE JARVIS, and MICHAEL LAIN __________ Appeal 2009-013541 Application 10/900,715 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, CHUNG K. PAK, and KAREN M. HASTINGS, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013541 Application 10/900,715 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-7. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants describe a method of “pre-lithiating” electrodes comprising a host material and lithium metal dispersed in the host material (Spec. ¶¶ [002]; [0032]). Claim 1 is illustrative: 1. A method for prelithiating a host material prior to contact with an electrolyte, comprising: dispersing the host material in a lithium metal to form a mixture of host material and lithium metal; and agitating the mixture of host material and lithium metal to promote contact between the host material and lithium metal to promote lithiation of the host material prior to contact with an electrolyte. Appellants seek review of the following rejections: 1. Claims 1-6 are rejected under 35 U.S.C. § 102(e) as being unpatentable over Gao (US Patent 6,706,447 B2 issued Mar. 16, 2004, filed Dec. 19, 2001 with provisional priority to Dec. 22, 2000). 2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gao in view of Oswin (US Patent 3,271,196 issued Sept. 6, 1966). Appellants argue claims 1-6 in rejection (1) as a group (App. Br. 5-6). We select claim 1 as representative. Appellants do not advance any additional arguments regarding rejection (2) of claim 7, relying instead on the arguments made regarding rejection (1) (App. Br. 6). Accordingly, the Appeal 2009-013541 Application 10/900,715 3 rejection of claim 7 stands or falls with our assessment of rejection (1) of claim 1. CLAIM 1 DISPOSITIVE ISSUE Did the Examiner err in construing the “agitation” step of claim 1 as including Gao’s mixing step? We decide this issue in the negative. FACTUAL FINDINGS (FF) & ANALYSIS We adopt the Examiner’s factual findings on pages 3-7 of the Answer as our own. The Examiner finds that the Specification does not limit “agitation” to mean “vigorous stirring” alone and it may include other meanings that promote contact between the host material and lithium metal powder (Ans. 5). The Examiner reasons that Gao’s disclosure of mixing the dispersed lithum metal and host material with a non-aqueous liquid to form a slurry constitutes agitating to promote contact between the host material and lithium metal to promote lithiation of the host material because Gao discloses that the “lithium metal is distributed as well as possible (intimate contact) into the host material” (Ans. 5-6). Appellants argue that the Examiner incorrectly considers Gao’s mere mixing as agitating the mixture (App. Br. 5). Appellants contend that agitation (e.g., vigorous stirring) in the context of the invention is provided to promote intimate contact between the lithium metal molecules and the host molecules such that one of ordinary skill in the art would recognize that mere mixing will not result in such intimate contact and multiple collisions Appeal 2009-013541 Application 10/900,715 4 (App. Br. 5). Appellants contend that sparks occur when agitation is preformed according to the invention such that one of ordinary skill in the art would understand that intimate contact is achieved between the lithium metal and the host material by such agitation and that lack of sparks means that mere mixing does not produce intimate contact between the lithium metal and host material (App. Br. 5-6). The Examiner responds that whether or not Gao discloses the presence of sparks during mixing, Appellants have not provided any objective evidence that no pre-lithiation occurs in Gao (Ans. 6). The Examiner reasons that Gao’s teaching to mix the dispersed lithium metal and host material with a non-aqueous liquid to form a suspension to distribute the metal into the host material as well as possible would necessarily produce contact between the lithium metal powder and host material as disclosed by Appellants (Ans. 6-7). Contrary to Appellants’ argument, we agree with the Examiner that the claim term “agitation” when properly construed in light of the Specification is not limited to using only “vigorous stirring” to agitate. As properly determined by the Examiner, while the Specification discloses using “vigorous stirring” it further discloses that “other agitation” may be used (Spec. ¶ [0034]). “Other agitation” indicates that forms of agitation other than “vigorous stirring” may be used to pre-lithiate the host material by promoting contact between the lithium metal and host material (Ans. 5). As the Examiner finds (Ans. 5-6), Gao discloses that the dispersed lithium metal and host material are mixed with a non-aqueous liquid to form a slurry and that the mixture is performed so that the lithium metal and host material are distributed as well as possible. We agree with the Examiner Appeal 2009-013541 Application 10/900,715 5 that Gao’s mixing to distribute the lithium metal in the host material as well as possible anticipates “agitating the mixture of host material and lithium metal to promote contact between the host material and lithium metal to promote lithiation of the host material” as that claim 1 phrase is properly construed. Appellants’ arguments regarding the presence of sparks while agitating as evincing whether intimate contact is achieved, fail to recognize that the claim is not limited to having the particular type of agitation. Rather, the Examiner finds that Gao teaches mixing to distribute the lithium metal and host material as well as possible, which falls within the meaning of the properly construed claim. The Examiner further finds, and Appellants do not contest, that Gao teaches dispersing host material and lithium metal (i.e., the first step of Appellants’ method) as required by claim 1 (Ans. 3; App. Br. 5-6; Reply Br. 1-2). In other words, the Examiner finds that Gao discloses a method identical to Appellants’ claimed method, such that Appellants bear the burden to show that Gao’s method, which includes mixing to form a distribution of lithium metal and host material, does not possess the claimed property (i.e., contact between the host material and lithium metal to promote lithiation). In re Best, 562 F.2d 1252, 1255 (CCPA 1977). However, Appellants have not provided any evidence that Gao’s method does not produce a pre-lithiated product having contact between the lithium metal and host material. Appellants’ mere argument that agitation which produces sparks is the required agitation, fails to show that Gao’s mixing step that distributes the lithium metal host as well as possible would not achieve the lithiation and contact between the lithium metal and host Appeal 2009-013541 Application 10/900,715 6 material. Indeed, the Examiner’s finding that Gao’s disclosure to distribute well the lithium metal into the host material reasonably indicates that the lithium metal and host material contact one another as a result of mixing. For these reasons, we affirm the Examiner’s § 102(e) rejection of claims 1-6 over Gao and the § 103 rejection of claim 7 over Gao in view of Oswin. 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). ORDER AFFIRMED bar MYERS BIGEL SIBLEY & SAJOVEC P.O. BOX 37428 RALEIGH, NC 27627 Copy with citationCopy as parenthetical citation