11106225 - (D) (B.P.A.I. Nov. 29, 2011)

Ex Parte Gao et al

Board of Patent Appeals and InterferencesNov 29, 2011

11106225 - (D) (B.P.A.I. Nov. 29, 2011)

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. 11/106,225 04/14/2005 Yuan Gao 208-6178 3850 20792 7590 11/30/2011 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER SCULLY, STEVEN M ART UNIT PAPER NUMBER 1727 MAIL DATE DELIVERY MODE 11/30/2011 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 YUAN GAO, MARINA YAKOVLEVA, JOHN ENGEL, DANIEL DIESBURG, and BRIAN FITCH ________________ Appeal 2010-007517 Application 11/106,225 Technology Center 1700 ________________ Before CHARLES F. WARREN, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007517 Application 11/106,225 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1 through 5 and 8. We have jurisdiction pursuant to 35 U.S.C. § 6. We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to a compound. Claim 1 is illustrative: 1. A compound, comprising silicon and/or tin nano- dispersed within a lithium-containing framework formed from a stabilized lithium metal powder. The Examiner maintains1 the following rejections: 1) Claims 1-5 and 8 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention; and 2) Claims 1, 2, 4, and 8 under 35 U.S.C. § 102(b) as anticipated by Foster (D.L. Foster et al., Nanocomposites of Sn and Li2O formed from the Chemical Reduction of SnO as Negative Electrode Material for Lithium-Ion Batteries, 3(5) ELECTROCHEMICAL AND SOLID-STATE LETTERS 203 (2000)). REJECTION (1) ISSUE Have Appellants shown reversible error in the Examiner’s determination that the “stabilized lithium melt powder” feature recited in 1 The Examiner has withdrawn the rejection of claims 1 through 5 and 8 under 35 U.S.C. § 102 over Courtney as set forth in the Final Office Action mailed February 18, 2009. (See Ans. 6). Appeal 2010-007517 Application 11/106,225 3 claim 1 is indefinite within the meaning of 35 U.S.C. § 112, second paragraph? We decide this issue in the affirmative. FACTUAL FINDINGS, ANALYSIS, AND CONCLUSION The Examiner alleges that the “stabilized lithium metal powder” feature recited in claim 1 is indefinite within the meaning of § 112, second paragraph. (Ans. 3). We disagree. It is well settled that the test for definiteness under 35 U.S.C. § 112, second paragraph, is “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Turning our attention to the rejection, as correctly pointed out by Appellants at page 5 of the Appeal Brief, the Specification at paragraph [0031] discloses that Dover ‘369 (US 5,776,369, issued Jul. 7, 1998) and Dover ‘474 (US 5,567,474, issued Oct. 22, 1996), which are both US patents and incorporated by reference in the instant application, describe a stabilized lithium metal powder. (App. Br. 5; see also MPEP § 2163.07(b) (Rev. 6, Sept. 2007)( “The information incorporated is as much a part of the application as filed as if the text was repeated in the application, and should be treated as part of the text of the application as filed.”)). In this regard, Dover ‘369 discloses that its lithium metal powder (i.e., a stabilized lithium metal powder) is unexpectedly stable to ambient atmosphere and that its surface coating consists of lithium, carbon, and oxygen. (Dover ‘369, col. 3, ll. 54-56 and col. 4, ll. 18-20). Similarly, Dover ‘474 discloses that its lithium metal powder (i.e., a stabilized lithium Appeal 2010-007517 Application 11/106,225 4 metal powder) is unexpectedly stable to ambient atmosphere and that its surface coating may comprise a mixture of lithium carbonate and lithium oxide. (Dover ‘474, col. 2, ll. 13-22). Thus, we agree with Appellants that one of ordinary skill in the art would have readily understood the disputed claim feature from the guidance provided at paragraph [0031] of the Specification and the US patents that have been incorporated by reference. Accordingly, we do not sustain the Examiner’s rejection (1). REJECTION (2) ISSUE Have Appellants established that the Examiner reversibly erred by failing to evaluate all the evidence, including evidence to show that the prior art compound and the claimed compound are structurally different, against the facts on which the Examiner’s prima facie case of anticipation is based? We decide this issue in the affirmative. FACTUAL FINDINGS, ANALYSIS, AND CONCLUSION The Examiner alleges that Foster’s nanocomposite formed from a Li3N framework as shown in equation (2) and Foster’s nanocomposite formed from a Li framework as shown in equation (1) individually meet the compound required by claim 1. (Ans. 4 and 5). In doing so, the Examiner determines that Foster’s lithium metal used to form Foster’s nanocomposite meets the stabilized lithium metal powder feature required by claim 1. (Ans. 4). Appeal 2010-007517 Application 11/106,225 5 Appellants refer to their Figure 1 and Foster’s Figure 1 as evidence to show that Appellants’ compound recited in claim 1 and Foster’s nanocomposite formed from a Li3N framework have different x-ray diffraction patterns and thus are structurally different from each other. (App. Br. 6 and 7). However, the record does not show that Appellants’ evidence that pertains to the question of whether Foster anticipates the claimed compound has been considered by the Examiner. In this regard, while it appears that Appellants’ evidence is directed solely to Foster’s nanocomposite formed from a Li3N framework as shown in equation (2), the Examiner has provided no statement that this evidence has been considered, much less identified reasons why the Examiner believes that the evidence weighs in favor of anticipation. The Examiner must evaluate this evidence against the facts on which the Examiner’s prima facie case of anticipation is based to determine whether Foster’s resulting compound anticipates the claimed invention. In this respect, it is well settled that as a procedural matter, “[a]fter evidence or argument is submitted by the applicant in response [to a prima facie case of unpatentability], patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[W]hen an applicant puts forth relevant evidence . . . the Board must consider such evidence.” In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007). In light of the Examiner’s failure to consider and address the evidence on the record, we reverse the Examiner’s rejection (2). Appeal 2010-007517 Application 11/106,225 6 ORDER The Examiner’s decision is reversed. REVERSED bar