14086289 (P.T.A.B. Mar. 17, 2017)

Ex Parte Gao et al

Patent Trial and Appeal BoardMar 17, 2017

14086289 (P.T.A.B. Mar. 17, 2017)

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. 14/086,289 11/21/2013 Yuan Gao 208-6179TSDVCT 1067 20792 7590 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 EXAMINER THOMAS, BRENT C ART UNIT PAPER NUMBER 1724 MAIL DATE DELIVERY MODE 03/20/2017 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, and KENNETH BRIAN FITCH Appeal 2016-001498 Application 14/086,289 Technology Center 1700 Before LINDA M. GAUDETTE, RAE LYNN P. GUEST, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1—6. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this decision, we refer to Appellants’ Specification filed November 21, 2013 (“Spec.”), the Final Office Action mailed September 4, 2014 (“Final Act.”), the Appeal Brief filed April 2, 2015 (“App. Br.”), the Examiner’s Answer mailed September 16, 2015 (“Ans.”), and the Reply Brief filed November 12, 2015 (“Reply Br.”). 2 Appellants identify the real party in interest as FMC Corporation. App. Br. 3. Appeal 2016-001498 Application 14/086,289 The subject matter on appeal relates to methods for forming lithium manganese compounds and doped lithium manganese compounds by lithiation techniques. Spec. 12. Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A method of forming a lithiated electrode material, comprising mixing an electrolytic manganese dioxide (EMD) compound with stabilized lithium metal powder by incrementally adding the stabilized lithium metal powder in x/4 or less increments to produce a lithiated electrolytic manganese dioxide material wherein distortion of the x-ray diffraction pattern is avoided and the crystalline structure of the EMD compound is maintained. App. Br. 8. DISCUSSION The Examiner maintains the following rejections under 35 U.S.C. § 103(a): claims 1 and 2 as unpatentable over Christian et al. (US 6,403,257 Bl, issued June 11, 2002, hereinafter “Christian”) in view of Gao et al. (US 2002/0119373 Al, published Aug. 29, 2002, hereinafter “Gao”) (Final Act. 3); claims 3—5 as unpatentable over Christian, Gao, and Yamazaki et al. (US 5,525,560, issued June 11, 1996) (Final Act. 5); and claim 6 as unpatentable over Christian, Gao, and Ogawa et al. (US 2002/0022183 Al, published Feb. 21, 2002, hereinafter “Ogawa”) (Final Act. 6). Appellants do not argue separately any dependent claims on appeal. Thus, we need only address independent claim 1, the sole independent claim. 2 Appeal 2016-001498 Application 14/086,289 The Examiner finds that Christian discloses a method of forming a lithiated electrode material by mixing an electrolytic manganese dioxide (EMD) compound with lithium in the form of a lithium salt, wherein the lithium salt is added incrementally, to produce a lithiated EMD material wherein the crystalline structure of the EMD compound is maintained. Final Act. 3 (citing Christian 2:52—60, 4:24-40 and 4:61—63). The Examiner acknowledges that Christian fails to disclose the stabilized lithium metal powder recited in claim 1. To account for this deficiency, the Examiner relies on Gao. Final Act. 4 (citing Gao H 17 and 19). The Examiner concludes that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute the stabilized lithium metal powder of Gao for the lithium salt of Christian since the stabilized lithium metal powder of Gao is taught to have the capability of being distributed well into the host material [] and the substitution would yield predictable results. Final Act. 4. Appellants argue that one of ordinary skill in the art would not have been motivated “to substitute the [stabilized lithium metal powder (SLMP)] of Gao [for] the lithium salts of Christian” because “one skilled in the art would recognize that the lithium of the [stabilized lithium metal powder of Gao] would react violently with the water” solvent in Christian’s process. App. Br. 6. Appellants’ arguments are persuasive of reversible error in the Examiner’s rejection. Christian and Gao disclose two different processes for forming lithiated materials. Christian discloses a method in which a commercial lithium grade electrolytic manganese dioxide (EMD) in water is treated with a basic lithium salt by a multistep process in which lithium salt 3 Appeal 2016-001498 Application 14/086,289 is added incrementally with soaking periods between additions of the lithium salt to obtain a pH of between 10 and 13. Christian 2:52—57. During the soaking periods, hydrogen ions in the EMD crystal lattice can ion-exchange with lithium cations to form a lithium ion-exchanged intermediate product. Id. at 2:57—60. Gao, on the other hand, discloses a process of dispersing lithium metal directly into a host material by either mixing the lithium metal powder and the host material in a non-aqueous liquid or by immersing the host material in a suspension containing lithium metal powder in a non- aqueous liquid. Gao 119. Given the differences in the processes of Christian and Gao, for example the use of an aqueous solvent to promote ion-exchange in Christian’s process and a non-aqueous solvent in Gao’s dispersion process, we are persuaded that the Examiner’s reason for replacing the lithium salt used in Christian’s process with the lithium metal powder used in Gao’s process is not sufficiently supported by a preponderance of the evidence. Thus, we do not sustain the Examiner’s §103 rejection of claim 1. Because the rejections of dependent claims 2—6 rely on the same erroneous reasoning discussed above with respect to claim 1, we also do not sustain the Examiner’s § 103 rejection of dependent claims 2—6. In the Examiner’s Answer, the Examiner newly rejected claim 1 under 35 U.S.C. § 112 (pre-AIA), second paragraph as indefinite. Ans. 5. Specifically, the Examiner considers the limitation “where distortion of the x-ray diffraction pattern is avoided and the crystalline structure of the EMD compound is maintained,” in claim 1 is indefinite because “it is unclear what degree of change in an x-ray diffraction pattern would be considered 4 Appeal 2016-001498 Application 14/086,289 distortion and no reference crystal structure is claimed for the EMD compound.” Id. We do not find the Examiner’s reasoning to be persuasive. The Examiner’s rejection appears to be premised on the breadth of the claims, namely, that they would encompass any degree of change in the x-ray diffraction pattern and any change in the crystalline structure of the electrolytic manganese dioxide (EMD) structure. However, “[bjreadth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Accordingly, we do not sustain the Examiner’s § 112, second paragraph, rejection. DECISION For the above reasons, the Examiner’s rejections of claims 1—6 are reversed. REVERSED 5