Ex Parte Kim

Patent Trials and Appeals Board

May 9, 2019

13537042 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/537,042 06/28/2012
23363 7590 05/13/2019
Lewis Roca Rothgerber Christie LLP
POBOX29001
Glendale, CA 91209-9001
FIRST NAMED INVENTOR
Cheon-Soo Kim
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.
068588/412299-01342 5936
EXAMINER
STUCKEY, PHILIP A
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
05/13/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto@lrrc.com
pair_cph@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEON-SOO KIM
Appeal2018-007057
Application 13/537,042
Technology Center 1700
Before JEFFREY T. SMITH, MARK NAGUMO, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1,
2, 6, 8, 10-12, 18, 20, and 24. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2018-007057
Application 13/537,042
The invention is generally directed to a rechargeable lithium battery
comprising electrodes, a polymer layer on a separator, and an electrolyte mixture
comprising alkyl propionate, linear carbonate-based solvent and cyclic carbonate-
based solvent. Spec. ,r,r 8, 16, 43. Claim 1 is illustrative of the subject matter on
appeal and is reproduced below:
1. A rechargeable lithium battery comprising:
a positive electrode;
a negative electrode;
a separator between the positive electrode and the negative
electrode;
a polymer layer on the separator, the polymer layer comprising
polyvinylidene fluoride, the polyvinylidene fluoride loaded at a
loading level of 1.5 to 2.5 g/m2; and
an electrolyte impregnating the separator, the electrolyte
comprising a carbonate-based solvent and an alkyl propionate in a
volume ratio of 4:6 to 5:5, the alkyl propionate comprising a
compound selected from the group consisting of methyl propionate,
ethyl propionate, and a combination thereof,
wherein the carbonate-based solvent comprises a cyclic
carbonate-based solvent and a linear carbonate-based solvent in a
volume ratio of 4: 1 to 3 :2, and the linear carbonate-based solvent is
one or more selected from the group consisting of dimethyl carbonate,
diethyl carbonate, dipropyl carbonate, methylpropyl carbonate,
ethylpropyl carbonate, methylethyl carbonate, ethylmethyl carbonate
and butylene carbonate.
Appellant1 requests review of the Examiner's decision to finally reject
claims 1, 2, 6, 8, 10-12, 18, 20, and 24 under pre-AIA 35 U.S.C. § 103(a) as
1 Samsung SDI Co., Ltd. is identified as the real party in interest. App. Br. 1.
2
Appeal2018-007057
Application 13/537,042
unpatentable over Katayama (US 2009/0067119 Al, published March 12, 2009).
Final Act. 2; Ans. 3; App. Br. 3. 2
OPINION3
Rejection of Claim 1
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejection of claims 1, 2, 6, 8,
10-12, 18, 20, and 24 under 35 U.S.C. § I03(a) for the reasons presented by
Appellant in the Appeal and Reply Briefs. We add the following.
Independent claim 1 is directed to a rechargeable lithium battery comprising
an electrolyte comprising a carbonate-based solvent and an alkyl propionate in a
volume ratio of 4:6 to 5:5, wherein the carbonate-based solvent comprises a cyclic
carbonate-based solvent and a linear carbonate-based solvent in a volume ratio of
4: 1 to 3:2.
We refer to the Examiner's Final Action for a statement of the rejection of
independent claim 1. Final Act. 3--4. Briefly, the Examiner finds Katayama
discloses a rechargeable lithium battery comprising an electrolyte that differs from
the claimed electrolyte in that Katayama does not teach a carbonate-based solvent
to alkyl propionate volume ratio of 4:6 to 5:5 or a carbonate-based solvent having a
cyclic carbonate-based solvent to linear carbonate-based solvent volume ratio of
4: 1 to 3:2. Final Act. 2-3; Katayama ,r,r 24, 41, 56, 102, 106, 111, and 113. The
2 The Examiner withdrew the final rejection of claims 1 and 2 under 35 U.S.C.
§ I03(a) based on Jacobs as the primary reference (US 2001/0038948 Al,
published November 8, 2011). Final Act. 5; Adv. Act. (dated September 28, 2017)
2.
3 In view of Appellant's arguments, we limit our discussion to independent claim
1.
3
Appeal2018-007057
Application 13/537,042
Examiner finds that Katayama's Examples 1-15 demonstrate that adjusting the
various components of a rechargeable lithium battery will have an effect on the
safety of the battery. Final Act. 3; Katayama Table 3. On this record, the
Examiner determines that it would have been obvious to one having ordinary skill
in the art to optimize the amounts of the electrolyte's components through routine
experimentation and arrive at the volume ratios for the claimed components of the
electrolyte composition. Final Act. 3--4.
Appellant argues that the Examiner reversibly erred in the determination of
obviousness because Katayama does not teach or suggest adjusting the components
of the organic solvent to include both the carbonate-based solvent and the alkyl
propionate in a volume ratio of 4:6 to 5:5 or to include the cyclic carbonate-based
solvent and the linear carbonate-based solvent in a volume ratio of 4: 1 to 3 :2. App.
Br. 5. Appellant specifically points to Katayama's Examples 1-15 as using only
one type of electrolyte which comprises a mixture of ethylene carbonate (a cyclic
carbonate) and ethyl methyl carbonate (a linear carbonate) at a fixed volume ratio
of 1:2. Id.
We agree with Appellant that there is reversible error in the Examiner's
determination of obviousness. The Examiner has not directed us to any portion of
Katayama that recognizes the relevance of a carbonate-based solvent to an alkyl
propionate volume ratio or the relevance of a cyclic carbonate-based solvent to a
linear carbonate-based solvent volume ratio. The Examiner does not direct us to
any evidence on this record that the required volume ratios are result-effective
variables that would have been optimized to the claimed range by one of ordinary
skill in the art. In re Antonie, 559 F.2d 618 (CCPA 1977) (a particular parameter
must first be recognized as a result-effective variable, i.e., a variable which
achieves a recognized result, before the determination of the optimum or workable
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Appeal2018-007057
Application 13/537,042
ranges of said variable might be characterized as routine experimentation). In fact,
as Appellant argues, the only ratio mentioned in Katayama is a single volume ratio
for a cyclic carbonate-based solvent to a linear carbonate-based solvent of 1 :2,
which favors a carbonate based solvent where the linear carbonate-based solvent
is the predominant solvent. App. Br. 5; Katayama ,r 122. This ratio is opposite to
the claimed ratios where the cyclic carbonate-based solvent is the predominant
solvent. The Examiner has not provided an adequate technical explanation why
one skilled in the art would have arrived at the claimed solvent ratio from the fixed
ratio exemplified in Katayama's Examples 1-15. Nor has the Examiner explained
adequately how one skilled in the art would have arrived to the claimed ratio of
carbonate-based solvent to alkyl propionate from Katayama's disclosure. The
Examiner's explanation does not provide the requisite rational underpinning
explaining why a person of ordinary skill in the art would have arrived at the
claimed invention through routine optimization from Katayama' s disclosure.
Accordingly, we REVERSE the Examiner's prior art rejection of claims 1,
2, 6, 8, 10-12, 18, 20, and 24 under 35 U.S.C. § 103(a) for the reasons presented
by the Appellant and given above.
ORDER
The Examiner's prior art rejection of claims 1, 2, 6, 8, 10-12, 18, 20, and 24
under 35 U.S.C. § 103(a) is reversed.
Because the Examiner did not present a prima facie case of obviousness, we
do not reach Appellant's evidence of unexpected results.
REVERSED
5