Ex Parte Leitner et al

Patent Trial and Appeal Board

Oct 24, 2017

13567389 (P.T.A.B. Oct. 24, 2017)

United States Patent and Trademark Office
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.
13/567,389 08/06/2012 Klaus LEITNER 402075US99 1005
22850 7590 10/26/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
AMPONSAH, OSEI K
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS LEITNER, ARND GARSUCH, OLIVER GRONWALD,
and MARTIN SCHULZ-DOBRICK
Appeal 2016-005002
Application 13/567,389
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, 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—9, 11, 12, and 14—21.1 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Appellants requested an oral hearing for this appeal on July 27, 2015,
which was scheduled for October 18, 2017. Appellants subsequently elected
to waive hearing attendance in a communication dated September 6, 2017.
Accordingly, the appeal will be decided based on the briefs submitted by
Appellants.
Appeal 2016-005002
Application 13/567,389
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An electrochemical cell, comprising:
(A) a cathode comprising a lithium ion-comprising
transition metal compound,
(D) an electrically nonconductive, porous and ion-
pervious layer,
(C) a porous and ion pervious layer comprising
(a) a lithium- and oxygen-comprising, electrochemically
active transition metal compound, and
(b) optionally a binder, and
(D) an electrically nonconductive, porous and ion-
pervious layer, and
(B) an anode,
wherein layer (C) is present between two layers (D), and
wherein layers (D), (C), and (D) appear between the cathode
and anode.
Appellants2 (Appeal Br. 10) request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 1, 4, 9, 11, 12 and 14 rejected under 35 U.S.C. § 103(a)
as unpatentable over Imoto (JP 2001-266828 A, published September 28,
2 BASF SE is identified as the real party in interest. Appeal Br. 2.
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Application 13/567,389
2001, and relying on an English machine translation dated December 6,
2013) and Cho (US 7,175,937 B2, issued February 13, 2007).
II. Claims 2, 5—7 and 15—21 rejected under 35 U.S.C. § 103(a) as
unpatentable over Imoto, Cho, and Takami (US 7,582,386 B2, issued
September 1, 2009).
III. Claims 3 and 8 rejected under 35 U.S.C. § 103(a) as
unpatentable over Imoto, Cho, and Hatanaka (US 2007/0190404 Al,
published August 6, 2007).
Appellants present arguments for independent claim 1 (Rejection I)
and separately rejected dependent claims 7 (Rejection II) and 8 (Rejection
III). See generally App. Br. Appellants do not present arguments for
separate patentability as to rejected claims 2—6, 9, 11, 12, and 14—21. Id.
Accordingly, pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as
representative of the subject matter before us on appeal. Claims 2—6, 9, 11,
12, and 14—21 stand or fall with claim 1. Arguments for claims 7 and 8 will
be addressed separately.
OPINION
Rejection 1 (claim 1)
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of claims 1, 4, 9, 11, 12
and 14 for the reasons presented by the Examiner in the Final Action and the
Answer. We add the following for emphasis.
Claim 1 is directed to an electrochemical cell comprising, inter alia, a
porous and ion pervious layer (denoted as layer (C) in the claim) comprising
a lithium- and oxygen-comprising, electrochemically active transition metal
compound.
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The Examiner finds Imoto teaches an electrochemical cell structure
comprising a separator formed between electrodes having a tri-layered
(three-tiered) structure, wherein the tri-layered structure has two organic
porous layers with an inorganic layer formed in between and wherein the
inorganic layer comprises an inorganic powder (titanium oxide, aluminum
oxide, etc.). Final Act. 3^4; Imoto H 8, 21. The Examiner finds Imoto does
not teach an inorganic layer that is a lithium- and oxygen-comprising
electrochemical active transition metal compound as claimed. Final Act. 4.
The Examiner finds Cho teaches a separator for a lithium battery that has an
inorganic protective film comprising lithium titanium oxide. Final Act. 4;
Cho col. 3,11. 44—52. The Examiner determines it would have been obvious
to one of ordinary skill in the art to use lithium titanium oxide as the
inorganic powder in the invention of Imoto because Cho discloses that such
inorganic material has several advantages in that while little swelling occurs,
it serves as a single-ion conductor that inhibits a cathode active material
from moving and allows only lithium ions to pass. Final Act. 4; Cho col. 3,
11. 28-42.
Appellants argue the cited art does not teach the claimed porous and
ion pervious layer comprising a lithium- and oxygen-comprising,
electrochemically active transition metal compound (layer (C)). App. Br.
11. According to Appellants, the minerals content porous membrane of
Imoto is made from silicic acid anhydride, an aluminum oxide, potassium
titanate, magnesium oxide, boron oxide, and mica and there is no suggestion
in Imoto to substitute a lithium- and oxygen-comprising compound, as
claimed, for any of these materials. App. Br. 11; Imoto 1 8. Appellants
further argue the presence of an electrically-conductive material, such as
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Clio’s lithium titanates, in Imoto’s minerals content membrane is
inconsistent with Imoto’s purpose of maintaining insulation between
electrodes to inhibit expansion of a short circuit. App. Br. 11—12; Imoto
133.
We are unpersuaded. Appellants’ arguments do not adequately
address the reasons presented by the Examiner for combining the teachings
of the cited art. As noted by the Examiner, Imoto discloses a separator for a
lithium battery comprising an inorganic porous layer made from a number of
inorganic powders, such as titanium oxide and potassium titanate. Ans. 11;
Imoto H 8, 21. While Imoto does not disclose the claimed lithium and
oxygen comprising inorganic compound, the Examiner finds Cho teaches
the use of such powder (lithium titanate) in lithium battery separators as
known for advantages such as serving as a single ion conductor that inhibits
a cathode active material from moving and allows only lithium ions to pass.
Ans. 11; Cho col. 3,11. 40-42. Thus, one skilled in the art would have had a
reasonable expectation that the use of Cho’s lithium titanate inorganic
powder in place of the inorganic powders in Imoto’s separator would have
resulted in a separator for lithium batteries that would inhibit a cathode
active material from moving and that would allow only lithium ions to pass.
In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.”).
Although Appellants argue the presence of lithium in the separator of Imoto
would have defeated Imoto’s stated purpose of inhibiting expansion of a
short-circuit when a battery overheats (App. Br. 11—12; Imoto 5, 33), we
note that Cho’s separator is disclosed as reducing internal shorting. Cho col.
1,11. 13—17. Thus, based on this disclosure, one skilled in the art would
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Application 13/567,389
have reasonably expected that the use of a lithium- and oxygen-comprising
compound in the separator of Imoto would also result in a separator that
would reduce internal shorting.
Appellants argue Cho does not teach a porous inorganic protective
film. App. Br. 12. Appellants further argue that the Examiner has not
established Cho’s film is inherently porous. Id. at 12—14.
These arguments are also unpersuasive because they do not
sufficiently address the rejection before us for review on appeal. As
discussed above, the rejection is based on the obviousness in using the
lithium- and oxygen-comprising inorganic powder of Cho in the separator of
Imoto. Final Act. 4; Ans. 11. The rejection is not based on substituting the
separator of Cho comprising an inorganic film for the separator of Imoto or
providing Cho’s inorganic film to the separator of Imoto. As such,
Appellants’ arguments do not establish that Cho’s lithium- and oxygen­
comprising inorganic powder would be unsuitable for use in the separator of
Imoto, particularly given the advantages noted by Cho. Cho col. 3,11. 40-
42. Therefore, Appellants’ arguments do not show error in the Examiner’s
determination of obviousness.
Appellants further argue that the data on pages 14—18 of the
Specification show superior retained start capacity after repeated cycling that
would not have been predictable from the teachings of the cited art because
Imoto and Cho are directed to solving different problems, specifically,
preventing shorting in overheated batteries, and inhibiting movement of
cathode-active material, such as polysulfides, through the separator. App.
Br. 16. The data presented on pages 14—18 show a comparison of series of
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inventive separators and comparative noninventive separators to demonstrate
differences in lost start capacity.
The burden of showing unexpected results rests on the person who
asserts them. Appellants may meet their burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470—71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We are unpersuaded by Appellants’ evidence.
We first note that Appellants’ comparative noninventive separators
C-S-6, C-S-7, and C-S-8 (used as a basis to demonstrate superior retained
start capacity of the inventive separators) comprise a layer (C) that was
uncoated, comprising a layer of metal oxide particles,3 and comprising
lithium powder, respectively. Spec. 14. That is, it is unclear that the
proffered comparison is against the closest prior art with respect to the
inorganic particles used in the respective layers (C). As noted by the
Examiner, Imoto discloses a separator including an inorganic layer
3 According to the English Abstract of WO 2004/021475 Al, previously
made of record by Appellants on October 16, 2012, the inorganic separator
layer comprises at least two fractions of metal oxide particles which are
different in terms of average particle size and metal.
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Application 13/567,389
comprising an inorganic powder (titanium oxide, aluminum oxide, etc.).
Final Act. 3^4; Imoto H 8, 21. Thus, Appellants have not adequately
established that the preferred comparison is against the closest prior art
relative to what is being claimed, which appears best represented by Imoto’s
separator.
Secondly, the separators said to represent the claimed invention are
limited to separators comprising lithium titanate, lithium iron phosphate, and
Li1.2Nio.22Coo.12Mno.66O2 as the tested lithium and oxygen comprising
compounds. Id. at 14—15. Appellants have not adequately explained why
these limited samples of lithium- and oxygen-comprising compounds are
representative of the entire scope of lithium- and oxygen-comprising
compounds encompassed by independent claim 1.
Finally, Appellants’ Specification does not recognize the preferred
evidence as demonstrating unexpected results, nor are these results
otherwise shown to have been unexpected to those of ordinary skill in the
art. Id. at 14—18; see generally Spec.
Thus, on this record, Appellants have not adequately shown, much
less explained, why the results from the evidence relied upon would have
been unexpected by one of ordinary skill in the art or is reasonably
commensurate in the scope with the claims.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
4, 9, 11, 12 and 14 under 35 U.S.C. § 103 (a) for the reasons presented by
the Examiner and given above.
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Rejection II (claim 7)
Claim 7 requires the lithium and oxygen comprising compound to be
of a specific lithium titanate formula.
The Examiner relied on Takami as teaching lithium titanate s of this
specific formula as well known for use in lithium batteries. Final Act. 7;
Takami col. 5,11. 5—22.
We have considered Appellants’ arguments with respect to claim 7
(App. Br. 16—17) but are unpersuaded by them because the arguments do not
adequately address the Examiner’s reliance on Takami.
Accordingly, we affirm the Examiner’s prior art rejection of claims 2,
5—7 and 15—21 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
Rejection III (claim 8)
Claim 8 requires layer (C) to comprise a specific binder, such as a
fluorinated (co)polymer binder.
The Examiner relied on Hatanaka as teaching PVDF as a binder for
the inorganic oxide filler used in lithium batteries. Final Act. 10; Hatanaka |
38.
Appellants argue that Hatanaka does not teach the binder for a layer
(C) type structure. App. Br. 17.
We find the argument unavailing. Hatanaka discloses PVDF as a
material suitable for use in lithium electrochemical cells because it is stable
under the electrical potentials experienced in the electrochemical cell.
Hatanaka H 13, 38. Appellants have not adequately explained why this
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binder would be unsuitable for use in the separators of Imoto given that both
are directed to lithium batteries subject to electrical potentials.
Accordingly, we affirm the Examiner’s prior art rejection of claims 3
and 8 under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner
and given above.
ORDER
The Examiner’s prior art rejections of claims 1—9, 11, 12, and 14—21
under 35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
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).
AFFIRMED
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