Ex Parte Jambunathan et alDownload PDFPatent Trial and Appeal BoardMay 6, 201611300287 (P.T.A.B. May. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111300,287 12/15/2005 23543 7590 05/09/2016 AIR PRODUCTS AND CHEMICALS, INC PA TENT DEPARTMENT 7201 HAMILTON BOULEVARD ALLENTOWN, PA 18195-1501 FIRST NAMED INVENTOR Krishnakumar Jambunathan 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 06690ZPUSA 4022 EXAMINER ARCIERO, ADAM A ART UNIT PAPER NUMBER 1727 MAILDATE DELIVERY MODE 05/09/2016 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 KRISHNAKUMAR JAMBUNATHAN, GENNADY DANTSIN, WILLIAM JACK CASTEEL JR., and SERGEI VLADIMIROVICH IV ANOV1 Appeal2015-001299 Application 11/300,287 Technology Center 1700 Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 2, 29, 31, 34, 37-39, and 41--49.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, the real parties in interest are the named inventors and the assignee, Air Products and Chemicals, Inc. App. Br. 1. 2 The Office Action Summary accompanying the Final Rejection dated January 29, 2014, lists claim 35 as a rejected claim. Claim 35, however, has been cancelled and is not before us in this appeal. See, e.g., Claim Amendments dated June 20, 2012; Index of Claims dated June 6, 2013. Appeal2015-001299 Application 11/300,287 BACKGROUND The subject matter on appeal relates to a battery electrolyte. Spec. i-f 13; Claim 2. Claim 2 is reproduced below from page 11 (Claims Appendix) of the Appeal Brief: 2. An electrolyte comprising: at least one aprotic carrier, at least one salt of the formula: wherein x is at least 10 and less than or equal to 12 and Z comprises H, and further comprising at least one additive comprising at least one member selected from the group consisting of vinylene carbonate, vinylethylene carbonate, and propane sultone, and wherein at least one component of the electrolyte is partially oxidized. REJECTIONS ON APPEAL 1. Claims 2, 29, 34, 37-39, and 41--49 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schlaikjer (US 4,139,680, issued Feb. 13, 1979) in view of Iwamoto et al. (US 2002/0039677 Al, published Apr. 4, 2002) and Amine et al. (US 2005/0019670 Al, published Jan. 27, 2005). 2. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schlaikjer in view of Iwamoto and Amine, further in view of McEwen et al. (US 2002/0110739 Al, published Aug. 15, 2002). ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner's rejections. Accordingly, we sustain the rejections for reasons set forth by 2 Appeal2015-001299 Application 11/300,287 the Examiner in the Answer. See generally Ans. 2-10. We add the following for emphasis and completeness. Rejection 1 The Appellants do not argue the claims separately, so the claims stand or fall together. See 37 C.F.R. § 41.37(c)(l)(iv). We select claim 2 as representative of the rejected claims. The Examiner finds that Schlaikjer concerns non-aqueous lithium secondary batteries, and that it teaches an electrolyte comprising an aprotic carrier and LhB12FxZ12-x, but that Schlaikjer's electrolyte does not include the claimed "at least one additive" or teach that at least one component of the electrolyte is partially oxidized. Ans. 2, 9. Concerning the additive, the Examiner finds that Iwamoto likewise concerns non-aqueous lithium secondary batteries, and that it teaches the use of both vinylene carbonate and propane sultone as electrolyte additives. Id. at 2. The Examiner concludes that it would have been obvious to include an additive of Iwamoto in the electrolyte of Schlaikjer "because Iwamoto et al. teaches that ... adding such a component to the electrolyte has an effect to diminish gases evolved at the surface of the negative electrode." Id. at 2-3. Concerning the inclusion of at least one partially oxidized component, the Examiner finds that Amine teaches a lithium battery comprising an electrolyte that includes LiBOB, which is partially oxidized. Id. at 3. The Examiner concludes that it would have been obvious to add the LiBOB of 3 Appeal2015-001299 Application 11/300,287 Amine to the electrolyte of Schlaikjer as modified by Iwamoto to enhance stability, calendar, and cycle life of the battery. Id. The Appellants present several arguments opposing the Examiner's rejection, which we address in tum below: 1. The Appellants argue that "the Examiner erred in finding that Schlaikjer discloses the claimed salt of LhB12FxZ12-x wherein xis greater than or equal to 10 and less than or equal to 12 and Z comprises H," as claimed, and that the disclosure of Schlaikjer is "incredibly broad." App. Br. 4; see also Reply Br. 2. We are not persuaded by those arguments. As the Examiner explains, Schlaikjer teaches a clovoborate salt of the formula (BmXn)-k that encompasses species that meet the claim limitation when combined with lithium to form a lithium clovoborate salt. Ans. 8; Schlaikjer at 2: 10-62. As example lithium clovoborate salts, Schlaikjer expressly teaches LhB12Cli2, LhB12Bri2, and LhB12I12. Schlaikjer at 2:51---62. While Schlaikjer does not expressly list LhB12F 12, which unquestionably would fall within the scope of claim 2, Schlaikjer reasonably suggests to a person of ordinary skill that Fis interchangeable with Cl, Br, and I. Id. at 2: 19-20 ("X in the above formula is preferably selected from the halogens (F, Cl, Br and I)"). The Appellants present no persuasive argument that lithium clovoborate salts falling within the scope of claim 2, including LhB12F 12, do not likewise fall within the scope of the formula taught by Schlaikjer. On this record, the Appellants' arguments do not persuade us that Schlaikjer does not teach or otherwise render obvious the use of "LhB12FxZ12-x wherein 4 Appeal2015-001299 Application 11/300,287 Z represents H and x is greater than or equal to 10 and less than or equal to 12," as recited by claim 2. 2. The Appellants present various arguments that the prior art references "teach away" from the other references due to differences in the batteries taught by the references. E.g., App. Br. 5-8; Reply Br. 3. For example, they argue that Iwamoto teaches a carbon anode while Schlaikjer teaches metallic anodes, id. at 5, that Schlaikjer uses soluble cathode material while Iwamoto teaches insoluble cathode materials, id. at 6, and that Amine teaches a "different battery system," id. at 7-8. As an initial matter, we note that the disclosures of Iwamoto and Schlaikjer are not as limited as the Appellants suggest. Contrary to the Appellants arguments, Iwamoto teaches both "metallic lithium" anodes and carbon anodes, e.g., Iwamoto i-f 75, and Schlaikjer teaches both soluble and insoluble cathode materials, Schlaikjer at 3:11-15. Thus, a preponderance of the evidence supports the Examiner's finding that "[b]oth [Schlaikjer and Iwamoto] teach similar electrode materials for use in high energy density lithium batteries." See Ans. 9-10. Moreover, while the Appellants present arguments concerning whether it would have been obvious to include vinylene carbonate in the electrolyte of Schlaikjer, App. Br. 6, they present no arguments rebutting the Examiner's findings and conclusions concerning propane sultone, see Ans. 2. Thus, even if we were to disregard Iwamoto's teachings concerning vinylene carbonate, the Appellants' argument would not establish reversible error in the Examiner's findings and conclusions concerning the claimed additive. In any event, the Appeal Brief generally consists of attorney argument that is not supported by evidence or persuasive technical reasoning. See, 5 Appeal2015-001299 Application 11/300,287 e.g., App. Br. 5-8; see also Jn re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's arguments in a brief cannot take the place of evidence."). The Appellants do not persuasively explain why any of the identified differences among the prior art references would have dissuaded a person of ordinary skill in the art from combining the references as proposed by the Examiner. All three of the prior art references relate to improving lithium secondary batteries and battery electrolytes. E.g., Schlaikjer at Title, 1 :8-14; Iwamoto ,-r 1; Amine at Title, ,-r 14. Moreover, all three references seek to solve similar problems. E.g., Schlaikjer at 1 :27-32 (loss of capacity), 2:67- 3:3 (cycling efficiency); Iwamoto ,-r 169 (noting batteries of the invention are "high in energy density, less in deterioration of discharge capacity caused by repeated use of the batteries, and excellent in high rate charge and discharge characteristics"); Amine at Abstract ("the new electrolytes provide batteries with improved calendar and cycle life"). The Examiner's obviousness rationale relies on the well-established principle that, for an improvement to be patentable, it must be more than the predictable use of prior art elements according to their established functions. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); Ans. 2-3. None of the Appellants' arguments provides a persuasive reason to doubt that a person of ordinary skill in the art reasonably would have expected the modifications proposed by the Examiner to result in the improvements taught by the prior art. The Appellants' arguments appear to suggest that the cited prior art must provide certainty that the proposed modifications will be successful, and, because the battery systems of the prior art are not identical, there is no certainty. See App. Br. 5-8. However, "[ o ]bviousness does not require absolute predictability of success .... all that is required is a 6 Appeal2015-001299 Application 11/300,287 reasonable expectation of success." Jn re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988). As set forth by the Examiner, the cited prior art in this case provides that, and the Appellants' explanation of the differences between the battery systems of the prior art does not provide a persuasive basis to reject the Examiner's findings. 3. The Appellants repeatedly state that the proposed combination "would render the battery of Schlaikjer unsatisfactory for its intended purpose and, at a minimum, alter the principle operation of Schlaikjer' s battery system." E.g., App. Br. 6, 7, 8. Similar to the arguments above, however, the Appellants provide no persuasive explanation or evidence as to why the modifications proposed by the Examiner would render the battery of Schlaikjer unsatisfactory for its intended purpose and/or alter its principle of operation in a way that supports their arguments. The Appellants' arguments appear to focus on whether Iwamoto could be bodily incorporated into Schlaikjer. E.g., App. Br. 6 ("The use of the carbon electrodes and the addition of the other additives [of Iwamoto], such as the surface active agents, would detrimentally affect or destroy the operation of the battery of Schlaikjer."). However, the Examiner has not proposed the use of Iwamoto's carbon electrodes or surface active agents, and "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981). "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id.; see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under 7 Appeal2015-001299 Application 11/300,287 review."). In any event, claim 2 does not exclude the use of surface active agents or carbon electrodes, and the Appellants provide no evidence or persuasive technical reasoning in support of their statement that those elements would destroy the operation of Schlaikjer's battery. The arguments presented by the Appellants do not persuasively address the obviousness rationale set forth by the Examiner, and they do not persuade us that the proposed combination is anything more than the predictable use of known prior art elements according to their established functions. See KSR, 550 U.S. at 417. * * * For those reasons, we affirm the Examiner's rejection of claim 2. Rejection 2 Claim 31 depends from claim 2 and further recites, "wherein said carrier comprises an ionic liquid." The Examiner finds that ~,.1cE\'l/en teaches an electrol1rte for a nonaqueous battery comprising a salt additive that constitutes, and is referred to as, an ionic liquid. Ans. 6. The Examiner concludes that it would have been obvious to add an ionic liquid to the composition of Schlaikjer "because McEwen et al. teach that the electrolyte with said additive has reduced flammability and reduced volatility." Id. The Appellants argue that "McEwen employs a carbon-based anode and teaches away from the lithium metal anode of Schlaikjer," and that, because the battery systems of McEwen and Schlaikjer are different, a person of ordinary skill in the art would not expect the ionic liquids to work with the electrolytes of Schlaikjer. App. Br. 8-9. 8 Appeal2015-001299 Application 11/300,287 That argument is not persuasive for essentially the reasons set forth above. Merely identifying differences between McEwen and Schlaikjer, without providing evidence or persuasive technical reasoning as to why a person of ordinary skill in the art would be dissuaded by those differences from making the proposed modification, is insufficient to overcome the prima facie case of obviousness set forth by the Examiner. The Appellants have identified nothing in McEwen that would suggest that its disclosure concerning ionic liquids would not apply to similar battery systems. McEwen broadly states that "[t]he electrolyte with the [ionic liquid] has reduced flammability properties and reduced volatility that is of use in the design of safe batteries." McEwen i-f 45. Moreover, McEwen suggests that the ionic liquid serves the same purpose in a variety of batteries, including batteries "used in applications running the gamut from laptop computers to hybrid electric vehicles." Id. Therefore, we agree with the Examiner that McEwen provides a reasonable expectation of success in using an ionic liquid with the electrolyte of Schlaikjer to reduce flammability and volatility. That McEwen describes certain advantages of lithium-carbon anodes over lithium metal anodes, see Reply Br. 5, does not establish, or even suggest, that a person of ordinary skill would not have expected an ionic liquid to perform its known function in the electrolyte of Schlaikjer. The arguments presented by the Appellants do not apprise us of reversible error in the Examiner's rejection. 9 Appeal2015-001299 Application 11/300,287 CONCLUSION We AFFIRM the Examiner's rejection of claims 2, 29, 31, 34, 37-39, and 41--49. 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 10 Copy with citationCopy as parenthetical citation