Ex Parte Gao et alDownload PDFPatent Trial and Appeal BoardSep 27, 201312831420 (P.T.A.B. Sep. 27, 2013) 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. 12/831,420 07/07/2010 Yuan Gao 208-6179DV 2398 20792 7590 09/27/2013 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER THOMAS, BRENT C ART UNIT PAPER NUMBER 1724 MAIL DATE DELIVERY MODE 09/27/2013 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 BRIAN FITCH ____________ Appeal 2012-006454 Application 12/831,420 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-006454 Application 12/831,420 2 Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's rejections under 35 U.S.C. § 103(a) of claims 1-4 as unpatentable over Christian (US 6,403,257 B1 issued Jun. 11, 2002) in view of Gao (US 2002/0119373 A1 published Aug. 29, 2002) and of claims 5-8 as unpatentable over these references in combination with Yamazaki (US 5,525,560 issued Jun. 11, 1996) regarding claims 5-7 or Ogawa (US 2002/0022183 A1 published Feb. 21, 2002) regarding claim 8. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants’ invention relates to “methods for forming lithium compounds” (Spec. [0002]) that are said to be useful “to form electrodes and electrode materials for use in batteries, such as rechargeable lithium ion batteries” (id. at [0022]). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, is set forth below (key limitation in dispute italicized): 1. A method of forming a lithiated electrode material, comprising mixing an electrolytic manganese dioxide (EMD) compound with lithium metal by incrementally adding the lithium metal to produce a lithiated electrolytic manganese dioxide material wherein the crystalline structure of the EMD compound is maintained. Appellants argue the subject matter common to claims 1-4, therefore we select claim 1 as representative (App. Br. 3-5). Concerning the separate rejection of dependent claims 5-7, Appellants state without elaboration that "Yamazaki is directed to zirconia-based composites thus as such is not applicable to a lithium-based system. Thus, there is no impetus to combine the reference with Christian and Gao” (id. at 5). Similarly, Appellants state Appeal 2012-006454 Application 12/831,420 3 that “Ogawa discloses the use of dopant metals in a layered lithium- manganese compound” (id.) in responding to the separate rejection of dependent claim 8. Such unembellished statements are merely unsupported assertions, not arguments. For these reasons, claims 2-8 will stand or fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). For the reasons expressed in the Answer and below, we will sustain the rejection of independent claim 1 and concomitantly the rejections of the other claims on appeal. The Examiner finds that Christian discloses “a method of forming a lithiated electrode material comprising mixing an electrolytic manganese dioxide (EMD) compound with a lithium salt to produce a lithiated electrolytic manganese dioxide material wherein the crystalline structure (γ- MnO2) of the EMD compound is maintained” (Ans. 4, citing Christian, col. 4, ll. 24-40) and the lithium salt is added incrementally (id., citing Christian, col. 2, ll. 52-60). The Examiner additionally finds that Christian does not disclose the use of lithium metal as required by claim 1 (id. at 5). The Examiner finds that Gao discloses “a method of lithiating a material by dispersing lithium metal in a host material by using finely divided stabilized lithium metal powder” (id., citing Gao [0017] ) and concludes that it would have been obvious “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” yielding predictable results (id., citing Gao [0019]). In contesting this proposed combination of prior art references, Appellants argue that Christian “primarily relates to lithium uptake on Appeal 2012-006454 Application 12/831,420 4 discharge in a primary lithium battery” and that “[v]arious lithium salts are used to remove acidity and moisture in the EMD/CMD” and that Example 1C shows “an excess of lithium leads to the undesirable formation of the LiyMnO2 compound which has different diffraction peaks than gamma – MnO2.” App. Br. 4. Appellants further argue that "Christian teaches that an excess of lithium, such as would occur if lithium powder is used as suggested by the Examiner, [is] to be avoided. Moreover, there is no incremental addition and no maintaining of the crystalline structure." Id. According to Appellants, the Examiner erred by using hindsight to combine the references and the following four sentences purportedly explain how: The Examiner apparently assumes Christian teaches incremental addition and maintaining the crystalline structure but disregards what the reference actually teaches. One skilled in the art would combine the lithium metal powder of Gao to arrive at an invention wherein acidity and moisture in the EMD/CMD would be removed by the lithium metal powder of Gao. First of all, that is not the present invention. Secondly, Appellants do not believe that the lithium metal powder of Gao could function in this manner. (Id. at 4-5). Appellants' argument lacks persuasive merit. The record contains a preponderance of evidence that each of the argued claim 1 elements and their attendant functions were known in the prior art. Therefore, the Examiner's conclusion of prima facie obviousness is supported by the established legal principle that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results" (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). Specifically, Christian states at col. 2, l. 55 “lithium salt is added incrementally[.]” Christian also states at col. 4, ll. 24, Appeal 2012-006454 Application 12/831,420 5 32-33, and 37-38 that “[t]he manganese dioxide has a γ-MnO2-type crystal structure” and “[d]uring mechanical activation [with lithium cations], a lithiated manganese dioxide intermediate product having a γ- MnO2-type crystal structure is formed” and the “final product [has] a predominantly γ- MnO2-type crystal structure[.]” It would have been prima facie obvious to substitute Gao’s lithium metal powder for the lithium salt added incrementally during mechanical activation with milling media as taught by Christian to form lithiated manganese dioxide final product in which the crystalline structure is maintained as produced in the method of Christian in order to thereby obtain "the predictable use of prior art elements according to their established functions" (KSR, 550 U.S. at 417). Appellants argue that Christian uses the lithium salt treatment “to merely remove surface impurities and to stabilize gamma – MnO2.” App. Br. 4. Appellants also assert that “[o]ne skilled in the art would combine the lithium metal powder of Gao to arrive at an invention wherein acidity and moisture in the EMD/CMD would be removed by the lithium metal powder of Gao.” Id. at 4-5. Appellants then state that they “do not believe that the lithium metal powder of Gao could function in this manner [to remove surface impurities].” Id. at 5. However, Appellants do not contest that the lithium metal powder of Gao would function to lithiate the manganese dioxide to a gamma-type MnO2 type crystal structure. Moreover, this argument is incompatible with the principle that “[t]he fact that appellant uses [a chemical] for a different purpose does not alter the conclusion that its use in a prior art composition [would have been] prima facie obvious from the purpose disclosed in the references.” In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). Appeal 2012-006454 Application 12/831,420 6 The decision of the Examiner 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). AFFIRMED kmm Copy with citationCopy as parenthetical citation