Ex Parte Gao et al

Board of Patent Appeals and Interferences

Oct 28, 2010

10900715 (B.P.A.I. Oct. 28, 2010)

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
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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
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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
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Application 10/900,715

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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

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MYERS BIGEL SIBLEY & SAJOVEC
P.O. BOX 37428
RALEIGH, NC 27627