Ex Parte Kim et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10718478 - (D) (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIN-SUNG KIM, JONG-WOOK LEE, KWANG-SIK KIM,
YOUNG-GYU KIM, JE-YUN KIM, and JONG-SEOB KIM
____________

Appeal 2009-0100040
Application10/ 718,478
Technology Center 1700
____________

Decided: March 24, 2010
____________

Before MICHAEL P. COLAIANNI, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-4, 8, 10, 11, 13, 15, and 17. We have jurisdiction under
35 U.S.C. § 6(b).

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STATEMENT OF THE CASE
Claims 1 and 15 are representative of the subject matter on appeal and
are set forth below:

1. An electrolyte for a lithium secondary battery comprising:

a non-aqueous organic solvent; and

a vinyl sulfone

where the vinyl sulfone is present in an amount from 0.05 to 0.5 wt%
on the basis of total weight of the electrolyte.

15. An electrolyte for a lithium secondary battery comprising:

a non-aqueous organic solvent; and

a sulfone based organic compound represented by the following
Formulae (I), (II), and (III), and mixtures thereof:

where R and R' are independently selected from the group consisting
of primary alkyl groups, secondary alkyl groups, tertiary alkyl groups,
alkenyl groups, aryl groups; halogen substituted primary alkyl groups,
halogen substituted secondary alkyl groups, halogen substituted tertiary
alkyl groups, halogen substituted alkenyl groups, and halogen substituted
aryl groups, and n is from 0 to 3, wherein the amount of the sulfone based
organic compound is from 0.1 to 5 weight% based on the total amount of
electrolyte.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Hamamoto1 JP 11-329494 Nov. 30, 1999

THE REJECTION
Claims 1-4, 8, 10, 11, 13, 15, and 17 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hamamoto.
ISSUE(S)
1. Did the Examiner err in determining that the claimed range of “from
0.05 to 0.5 wt%” (claim 1) is anticipated by Hamamoto?
We answer this question in the negative.
2. Did the Examiner err in determining that the claimed range of “from
0.1 to 5 wt%” (claim 15) is anticipated by Hamamato?
We answer this question in the negative.

FINDINGS OF FACT
Hamamato discloses a vinyl sulfone derivative in an amount of from
“0.01 to 20% by weight” and “in particular, 0.1 to 10% by weight”.
Hamamoto, para. [0014].
Hamamato, in example 2, discloses an amount of divinyl sulfone of
“0.5% by weight”. Hamamato, para. [0026].

1 We use the English translation translated by FLS, Inc. that was made of
record on May 21, 2008.
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Appellants do not argue differences in the compound claimed; rather,
Appellants argue differences in the amount of compound claimed. See
generally Brief and Reply Brief.

PRINCIPLES OF LAW
If the claims are directed to a narrow range, and the reference teaches
a broad range, depending on the other facts of the case, it may be reasonable
to conclude that the narrow range is not disclosed with “sufficient
specificity” to constitute an anticipation of the claims. See, e.g., Atofina v.
Great Lakes Chem. Corp, 441 F.3d 991, 999 (Fed. Cir. 2006) wherein the
court held that a reference temperature range of 100-500 degrees C did not
describe the claimed range of 330-450 degrees C with sufficient specificity
to be anticipatory. Further, while there was a slight overlap between the
reference’s preferred range (150-350 degrees C) and the claimed range, that
overlap was not sufficient for anticipation.

ANALYSIS
Appellants’ arguments are directed to claims 1 and 11 (we select
claim 1 as representative of this group) and claim 15. Hence, we limit our
consideration to claims 1 and 15 in this appeal. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Hamamoto discloses the presence of a vinyl
sulfone derivative in an electrolytic solution in an amount ranging from 0.1
to 10 wt% or from 0.01 to 20 wt%. Appellants argue that Hamamoto
discloses no additional ranges of amounts of the vinyl sulfone derivative,
and does not disclose ranges similar to the 0.05 to 0.5 wt% range of vinyl
sulfone or the 0.1 to 5 wt% range of a sulfone based organic compound as
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recited in the present claims. Appellants state that the fact that Hamamoto
may completely encompass one of the recited ranges does not constitute a
disclosure with sufficient specificity to be anticipatory, and refer to Atofina
v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006). Br. 4.
Notably, Appellants do not argue differences in the compound claimed;
rather, Appellants argue differences in the amount of compound claimed.
See generally Brief and Reply Brief.
The Examiner’s position is that one of the ranges (0.1 to 10 wt%)
disclosed in Hamamoto has a common end point with the claimed range of
“0.1 to 5 weight%” (claim 15). The Examiner’s position is also that
Example 2 of Hamamoto discloses an amount of “0.05” which is an
endpoint of the claimed range of from 0.05 to 0.5wt% (claim 1). Ans. 3.
A summary of the claimed ranges and the values taught by Hamamoto
is set forth below:

Claim 1 Hamamoto
.05-.5 .5 Example 2, p. 12

Claim 15 Hamamoto
.1-5 Range of 0.1-10 Para. [0014]
Example 1: 2.0 p. 10
Example 2: 0.5 p. 12
Example 4: 2.0 p. 12-13
Example 5: 2.0 p. 13
Example 6: 2.0 p. 14
Example 7: 3.0 p. 14

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Unlike the fact scenario in Atofina, in the instant case, Example 2 of
Hamamoto mirrors an endpoint of claim 1. Also, Hamamato’s disclosed
range of 0.1 to 10 shares an endpoint with the claimed range of 0.1 to 5
(claim 15). Hence, we agree with the Examiner that because Hamamoto
discloses claimed endpoints, there is sufficient specificity for anticipation.
Furthermore, as shown in the table above, some Examples fall within a
claimed range. Compare Atofina, 441 F.3d at 999.

CONCLUSIONS OF LAW
The Examiner did not err in determining that the claimed range of
“from 0.05 to 0.5 wt%” (claim 1) is anticipated by Hamamoto.
The Examiner did not err in determining that the claimed range of
“from 0.1 to 5 wt%” (claim 15) is anticipated by Hamamato.

DECISION
The rejection 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)(1)(v).

AFFIRMED

Pl initial:
sld

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