Ex Parte Manthiram et al

Patent Trials and Appeals Board

Jun 3, 2019

14202715 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/202,715 03/10/2014
31625 7590 06/05/2019
BAKER BOTTS L.L.P.
PA TENT DEPARTMENT
98 SAN JACINTO BL VD., SUITE 1500
AUSTIN, TX 78701-4039
FIRST NAMED INVENTOR
Arumugam Manthiram
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.
065715.0386 2159
EXAMINER
Y ANCHUK, STEPHEN J
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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):
tracy .engberg@bakerbotts.com
juli. tran@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARUMUGAM MANTHIRAM and CHENXI ZU
Appeal2018-005930
Application 14/202,715
Technology Center 1700
Before JAMES C. HOUSEL, JEFFREY R. SNAY,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 15-25 of Application
14/202,715 under 35 U.S.C. § 103(a). Final Act. (Dec. 16, 2016) 2-7.
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 The real party-in-interest is identified as the Board of Regents, The
University of Texas System. Appeal Br. 3.
Appeal2018-005930
Application 14/202, 715
BACKGROUND
The present application generally relates to "cathodes for rechargeable
lithium-sulfur (LiS) batteries containing a nanocomposite of sulfur and
graphene." Spec. 1. In particular, "the cathode may contain amorphous
sulfur nanoparticles distributed on a graphene surface." Id. The
Specification teaches a method of making sulfur-hydroxy lated graphene
nanocomposite. Id. at 5---6.
Claim 15 is illustrative of the subject matter on appeal and is
reproduced below with certain language bolded for emphasis:
15. A method of making a sulfur-hydroxylated graphene
nanocomposite comprising exposing a hydroxylated graphene
to a sulfur-containing solution for a time sufficient to allow
formation of homogeneously distributed amorphous sulfur
nano particles on a surface of the hydroxy lated graphene.
Appeal Br. 11 (Claims App.) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 15 and 18-25 are rejected under 35 U.S.C. § I03(a) (pre-
AIA) as obvious over Ji et al. 2 in view of Pol et al. 3 Final Act. 2-
5.
2 Ji et al., Graphene Oxide as a Sulfur Immobilizer in High Peiformance
Lithium/Sulfur Cells 133 J. AM. CHEM. Soc. 18522-25 (2011) ("Ji").
3 US 2013/0337347 Al, published Dec. 19, 2013 ("Pol").
2
Appeal2018-005930
Application 14/202, 715
2. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious over Ji in view of Pol and further in view of Fan et al. 4
Id. at 5-7.
DISCUSSION
Rejection 1. The Examiner rejected claims 15 and 18-25 as obvious
over Ji in view of Pol. Final Act. 2-5. In support of the rejection, the
Examiner found that Ji teaches a graphene with sulfur on the surface for use
in batteries. Id. at 3. The Examiner further found that Ji teaches a graphene
oxide that "comprises hydroxyl groups which are utilized to enhance the
binding of the S to the C-C bonds." Id.
The Examiner found that Pol teaches "the process of forming an E-
carbon nanocomposite for use as an electrode." Id. The Examiner further
found that a "sulfur-containing solution is brought into contact with the
carbon material in order to allow the formation of sulfur thereon [0043] ....
The sulfur is attached to the graphene material utilizing mixing and a time
period to the carbon, sulfur containing material, HCL mixture [0074]." Id.
The Examiner additionally determined that "Pol is relied upon for teaching a
method of applying sulfur to a carbon surface using a solution method. The
substrate of Pol is not a hydroxylated graphene oxide." Answer 4 ( emphasis
added). The Examiner further indicated that "Pol is not relied upon teach
the crystalline structure, but the method of applying sulfur to a carbon
material." Id.
4 Fan et al., Deoxygenation of Exfoliated Graphite Oxide under Alkaline
Conditions: A Green Route to Graphene Preparation 20 Aov. MATER.
4490-4493 (2008).
3
Appeal2018-005930
Application 14/202, 715
The Examiner found that the structure resulting from the modification
of "the sulfur addition step of Ji by the method of Pol would produce a
structure which is amorphous as the starting material and method steps of
the instant claim are taught by the prior art." Final Act. 3. That is, the
Examiner proposes a hypothetical combination that uses the graphene oxide
of Ji (rather than the graphene of Pol) with the sulfur addition steps of Pol.
The Examiner found that one of skill in the art would have had reason to
combine the teachings as proposed "in order to increase cycling profile of
the material." Id. at 3--4.
Appellants assert that the rejections are in error on several bases.
First, Appellants argue that the references do not teach an amorphous sulfur
product. Appellants note that Pol teaches a method of making "crystalline
sulfur-graphene nanocomposites" rather than amorphous nanoparticles.
Appeal Br. 6. Appellants further assert that Ji teaches "the use of graphene
oxide in the formation of graphene nanocomposites" but "does not teach an
amorphous product." Id. Appellants argue that, because neither Pol nor Ji
teaches amorphous sulfur nanoparticles, such limitation is not taught by the
combination. Id. at 7.
Appellants do not contest the Examiner's determination that the
references collectively teach "exposing a hydroxylated graphene to a sulfur-
containing solution." Nor have Appellants objected to the Examiner's stated
reason to combine the teachings of the references. Appellants' argument is
that the references do not explicitly teach amorphous sulfur nanoparticles.
"The test for combining references is not what the individual references
themselves suggest but rather what the combination of disclosures taken as a
whole would suggest to one of ordinary skill in the art." In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner determined that the
4
Appeal2018-005930
Application 14/202, 715
combined teachings of the references, taken as a whole, would suggest a
process that yields amorphous sulfur nanoparticles. See Answer 4 ("It is
expected that the resulting sulfur structure of Ji with the sulfur method of Pol
to be homogenously distributed amorphous based upon the nucleation sites
of Ji.") ( emphasis added). Appellant does not cite to factual evidence
indicating that such finding is inaccurate. Accordingly, Appellants have not
shown error in this regard.
Second, Appellants argue that "because crystalline materials have a
structural regularity not present in amorphous materials, Pol actually teaches
away from the method of Claim 15." Appeal Br. 7.
Prior art may teach away if it "criticize[ s ], discredit[ s ], or otherwise
discourage[s] the solution claimed." In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). "A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009). Rather, teaching away requires "clear
discouragement" from implementing a technical feature. In re Ethicon, Inc.,
844 F.3d 1344, 1351 (Fed. Cir. 2017).
Here, Appellants and the Examiner agree that Pol teaches a crystalline
sulfur. Answer 4; Appeal Br. 7. Appellants, however, do not cite to any
specific criticism by Pol of the use of sulfur in its amorphous form.
Accordingly, Pol does not teach away from the use of sulfur in an
amorphous form.
Third, Appellants additionally submit a one-sentence argument that
amorphous sulfur does not "inherently result" from the combined teachings
of Pol and Ji "because the teachings of Pol establish that amorphous sulfur
5
Appeal2018-005930
Application 14/202, 715
does not inherently result." Appeal Br. 7. This is, at its crux, a technical
disagreement as to the result of the Examiner's hypothetical combination.
As Appellants do not support their position with factual evidence, it is mere
attorney argument. See Estee Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588,
595 (Fed. Cir. 1997) (An argument made by counsel in a brief does not
substitute for evidence lacking in the record.); Gemtron Corp. v. Saint-
Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) ("[U]nsworn attorney
argument ... is not evidence and cannot rebut ... other admitted
evidence."). Accordingly, Appellants have not shown error in this regard.
For their fourth argument, Appellants contend that one of skill in the
art would not have had a reasonable expectation of success in producing an
amorphous sulfur material. Appeal Br. 8. In this regard, Appellants observe
that "Ji relies on epoxy groups in addition to hydroxyl groups for binding of
sulfur to graphene oxide." Id. Appellants argue that, as a result, "even if the
process of Pol were performed on the material of Ji, there is reason to expect
that the method would proceed differently and that it would not 'allow
formation of homogeneously distributed amorphous sulfur nanoparticles on
a surface of the hydroxy lated graphene' as recited in Claim 15." Id.
"The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention." Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
821 F.3d 1359, 1367 (Fed. Cir. 2016). Here, the Examiner has found that
"the surface structure of Ji' s hydroxyl group is different than the surface
structure of the carbon material of Pol. The nucleation sites of sulfur are
therefore different." Answer 4. The Examiner further determined that "[i]t
is expected that the resulting sulfur structure of Ji with the sulfur method of
Pol to be homogenously distributed amorphous based upon the nucleation
6
Appeal2018-005930
Application 14/202, 715
sites of Ji." Id. (emphasis added); see, e.g., Grunenthal GMBH v. Alkem
Labs. Ltd., 919 F.3d 1333, 1344 (Fed. Cir. 2019) (finding a reasonable
expectation of success where "it was reasonably predictable that these [prior
art] methods would result in purity levels described in the claims.").
Appellants have argued that the Examiner's findings are unsupported but
have not cited to evidence suggesting error. Appellants have not put forward
evidence or reasoning why the epoxy groups of Ji would have affected the
expected result of the process. Accordingly, Appellants' contentions are
mere attorney argument.
Rejection 2. The Examiner rejected claims 16 and 17 over the
combination of Ji and Pol as applied to Claim 15 and further in view of Fan.
Final Act. 5-7. Appellants argue that the rejection of claims 16 and 17, each
of which depends from claim 15, should be reversed in view of their
arguments offered in regard to claim 15. As we have not found Appellants'
arguments regarding claim 15 to be persuasive, we determine that
Appellants have not shown error with regard to the rejection of claims 16
and 17.
CONCLUSION
The rejection of claims 15 and 18-25 as obvious over Ji in view of Pol
is affirmed. The rejection of claims 16 and 17 as obvious over Ji in view of
Pol and further in view of Fan is affirmed.
7
Appeal2018-005930
Application 14/202, 715
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
8