Ex Parte LI et al

Patent Trial and Appeal Board

May 25, 2016

13674425 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/674,425 11112/2012 Jing Li
48226 7590 05/27/2016
BASF CORPORATION
100 PARK A VENUE
FLORHAM PARK, NJ 07932
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.
PF74239 1372
EXAMINER
NEDIALKOV A, LILIA V
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
andrea.dececchis@basf.com
basf-ip@basf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JING LI and MAR TIN W. PAYNE
Appeal2015-000067
Application 13/674,425
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY R. SNAY, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal 1 under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4, 6-12, and 14--16. We have jurisdiction. 35
U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is BASF
Corporation. Appeal Br. 3.
Appeal2015-000067
Application 13/674,425
STATEMENT OF CASE
Appellants describe the present invention as a non-aqueous
electrolytic solution for enhanced lithium batteries. Spec. i-fi-f l-3. Claim 1,
reproduced below with emphases added, is illustrative of the claimed subject
matter:
1. An electrolytic solution comprising:
(a) one or more ionic salts;
(b) one or more non-aqueous solvents;
( c) at least one solid electrolyte interphase former;
( d) at least one fluorinated compound selected from the
group consisting of (I, 1,2,2)tetrafluoro-3-(1, 1,2,2-
tetrafluoroethoxy)-propane, lithium difluoro(oxalate)
borate and mixtures thereof, each provided in an amount
of 0.1 to 5 .0% by weight of the electrolyte solution; and
( e) optionally, at least one high temperature stability
compound;
wherein ( c ), ( d) and ( e) are each different compounds and each
are different from the ionic salts (a) and solvents (b).
Appeal Br.2 9 (Claims Appendix).
REJECTIONS
The Examiner rejected claims 1--4, 6-12 and 14--16 under 35 U.S.C.
§ 103 as unpatentable over Xu et al., US 2009/0017386 Al, published
January 15, 2009 (hereinafter, "Xu") as evidenced by The CRC Handbook
of Chemistry and Physics (W. M. Haynes, et al. eds., 2013).
2 In this decision, we refer to the Final Office Action appealed from, filed
May 2, 2014 ("Final Act."), the Appeal Brief filed June 12, 2014 ("Appeal
Br."), and the Examiner's Answer filed July 11, 2014 ("Ans."). We also
note that Appellants filed a Supplemental Appeal Brief on June 25, 2014, in
order to provide a mapping of the independent claims.
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Appeal2015-000067
Application 13/674,425
ANALYSIS
Appellants do not separately argue claims 2-3, 6-12 or 14--16. We
therefore limit our discussion to independent claim 1. Claims 2-3, 6-12 and
14--16 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013). We
review the appealed rejection for error based upon the issues identified by
Appellants and in light of the arguments and evidence produced thereon. Cf
Ex parte Frye, No. 2009-00601394, USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")).
We sustain the Examiner's§ 103 rejection based on the findings of
fact, conclusions of law, and rebuttals to arguments well-expressed by the
Examiner in the Final Action and in the Answer. We provide additional
comments below for emphasis.
Claim 1 is written such that it requires (1, 1,2,2)tetrafluoro-3-(1, 1,2,2-
tetrafiuoroethoxy)-propane ("TFTFEP") or lithium difiuoro( oxalate) borate
("LDFOB") or a combination of both. The Examiner does not contend that
Xu discloses the use of TFTFEP. Thus, the Examiner's obviousness
rejection is based upon LDFOB. Final Act. 3; Ans. 2-3.
Appellants admit that Xu discloses LDFOB but argue that a person of
ordinary skill would have no reason to select LDFOB from Xu's "laundry
list" of electrolyte components. Appeal Br. 7-8. As the Examiner explains,
however, Xu teaches that LDFOB is one of 10 specifically disclosed
"[t ]ypical lithium salts" that could be employed in the Xu' s electrolyte
solution. Ans. 9; Xu i-f 12. Xu also provides LDFOB as an option in
paragraph 35 which recites a wider variety of salt candidates. Xu i-f 22.
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Appeal2015-000067
Application 13/674,425
A prior art reference's teachings can render a claim obvious even
where an ingredient appears without emphasis in a longer list. See Merck &
Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
'813 [prior art] patent discloses a multitude of effective combinations does
not render any particular formulation less obvious. This is especially true
because the claimed composition is used for the identical purpose taught by
the prior art"); cf Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376
(Fed. Cir. 2005) (holding that list of fourteen optional ingredients anticipated
claims reciting one ingredient in list). Thus, Xu teaching use of LDFOB as
one of ten "[t]ypical lithium salts" is sufficient to support the Examiner's
conclusion that use of LDFOB as a lithium salt for the same purpose as Xu
would have been obvious.
Appellants also argue a person of ordinary skill in the art would not
envision the improved cycle life at voltages greater than 4.2 volts. Appeal
Br. 8. This argument is not persuasive of reversible error because claim 1
does not recite voltage limitations. Appellants' position thus fails to identify
any Examiner error.
We thus sustain the Examiner's obviousness rejection.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1--4, 6-12, and 14--16.
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
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