Ex Parte Munshi

Board of Patent Appeals and Interferences

May 22, 2009

11285046 (B.P.A.I. May. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte M. ZAFAR A. MUNSHI
____________

Appeal 2009-001594
Application 11/285,046
Technology Center 1700
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Decided:1 May 22, 2009
____________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001594
Application 11/285,046

2
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 25, 27, 30, 31, 55, 56, 59-61, 63-70, and 72-74.2 (App.
Br. 5). We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant describes a lithium ion battery. (Spec. 13, ll. 1-9). Claims
25, 55, and 56, reproduced below, are representative of the subject matter on
appeal.
25. A lithium battery, comprising:
an anode comprising an electrode configured to occlude and
release lithium;
a cathode comprising an electrode configured to occlude and
release lithium; and
an electrolyte disposed between the anode and cathode;
said battery configured to have an initial substantially fully
charged state in which:
said anode is substantially free of occluded releasable
lithium, and comprises a lithium-metal layer
overlaying and adhered to at least a part of the
surface of said electrode of the anode; and
said cathode is substantially free of occluded releasable
lithium.

55. A battery in a fully charged state comprising:
an anode comprising:

2 Claims 1-24, 26, 28, 29, 32-54, 57, and 58 are no longer pending. (Appeal
Brief filed February 28, 2008, hereinafter “App. Br.,” 5). Claims 62 and 71
were indicated as containing allowable subject matter, but objected to as
being dependent upon a rejected base claim. (Final Rejection, October 30,
2007, 8).
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a carbon-based member substantially free of intercalated
reversible lithium; and
a lithium metal member abutting the carbon-based
member;
a cathode in operational relationship to the anode, the cathode
comprising a member substantially free of intercalated
reversible lithium; and
an electrolyte abutting at least a portion of the anode, and the
electrolyte abutting at least a portion of the cathode.

56. The battery according to claim 55 wherein said battery is
configured to have another fully charged state comprising the
carbon- based member of the anode intercalated with lithium,
the member of the cathode substantially free of intercalated
reversible lithium, and the lithium metal member substantially
absent.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Beard 5,147,739 Sep. 15, 1992
Alamgir 5,536,599 Jul. 16, 1996
Fujita 6,884,546 Apr. 26, 20053
Fujita WO 01/22519 Mar. 29, 2001

3 The Examiner’s Answer relies on WO 01/22519 in the New Ground of
Rejection but cites to English Equivalent U.S. Patent 6,884,546.
(Examiner’s Answer entered May 22, 2008, hereinafter “Ans.,”5). The
Appellant has not contested the accuracy of U.S. Patent 6,884,546 as
evidence of the content of WO 01/22519. Therefore, we shall also rely on
U.S. Patent 6,884,546 as evidence of the content of WO 01/2519 for
purposes of our discussion herein.
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Application 11/285,046

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There are four grounds of rejection for review on appeal4: (1) the
Examiner rejected claims 56 and 72 under 35 U.S.C. § 112, second
paragraph; (2) the Examiner rejected claims 25, 27, 30, 31, 65-69, and 72-74
under 35 U.S.C. § 102(b) as being anticipated by Beard; (3) the Examiner
rejected claims 25, 27, 30, 31, 55, 56, 60, 63-69, and 72-74 under 35 U.S.C.
§ 102(b) as being anticipated by Fujita; and (4) the Examiner rejected claims
61 and 70 under 35 U.S.C. § 103(a) as being unpatentable over Fujita in
view of Alamgir.
The Examiner determined that claims 56 and 72 were indefinite
because the claims require batteries having two simultaneous fully charged
states, which the Examiner stated, is impossible. (Ans. 4).
The Examiner found that Beard describes a lithium battery that, inter
alia, includes an anode comprising an electrode configured to occlude and
release lithium (Beard’s intercalation compound) as well as a lithium metal
layer overlaying and adhered to at least part of the surface of the electrode of
the anode. (Ans. 4-5).
The Examiner found that Fujita describes a secondary lithium ion
battery that includes an anode capable of occluding and releasing lithium, a
lithium metal layer laminated on the anode, an electrolyte, and a cathode that
is capable of occluding/releasing lithium. (Ans. 6). Regarding claims 61
and 70, the Examiner found that Fujita fails to disclose adding a redox

4 The Examiner withdrew the rejection of claims 63, 66, 67, 73, and 74 under
35 U.S.C. § 112, second paragraph in the Examiner’s Answer. (Ans. 2-3).
The Examiner’s objection to claims 56 and 72 under 37 C.F.R. § 1.75(c) as
being of improper dependent form for failing to further limit the subject
matter of a previous claim is petitionable and thus not properly before us on
appeal. (See Ans. 2; MPEP § 706.01 [R-2] 8th Ed. Rev. 3, Aug. 2005; 37
C.F.R. § 1.181 (a)(1) (2008)).
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shuttle to the electrolyte, but that Alamgir discloses that it is advantageous to
add a redox shuttle to secondary lithium ion batteries to provide overcharge
protection. (Ans. 7).
Appellant contends that claim 56 does not require that the battery
includes two simultaneously fully charged states, but only requires that the
battery includes a structure sufficient to achieve a second fully charged state.
(App. Br. 13). Appellant argues that in Beard’s battery, the lithium metal
layer does not overlay an anode configured to occlude and release lithium
(Beard’s intercalation compound); rather Beard’s intercalation compound
overlays the lithium metal layer. (App. Br. 19-20). Appellant argues that
Beard’s battery is charged by plating lithium metal onto the lithium metal
anode and not by occlusion of lithium metal in the intercalation compound.
(App. Br. 21). Appellant contends that Beard’s intercalation compound is
used as an intermediary in plating/stripping at the lithium metal anode.
(App. Br. 19). Appellant contends that Fujita’s battery contains a cathode
comprising reversible lithium as originally constructed. (App. Br. 16).
Appellant also argues that when charged, lithium is occluded in the anode of
Fujita’s battery. (App. Br. 17). Thus, Appellant contends that whether
charged or uncharged, Fujita teaches lithium occluded in either the anode or
the cathode. (App. Br. 18).

ISSUES
We frame the issues on appeal as:
Has Appellant shown that the Examiner reversibly erred in
determining that claims 56 and 72 require that the claimed battery has two
simultaneous fully charged states rendering the claims indefinite?
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Has Appellant shown that the Examiner reversibly erred in finding
that the structure of Beard’s anode anticipates the recited anode in the
appealed claims?
Has Appellant shown that the Examiner reversibly erred in finding
that both Fujita’s cathode and anode are “substantially free of occluded
releasable lithium” as required in the appealed claims?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant’s Specification states: “[t]he active cathode may be
selected from a wide range of oxides, sulfides and selenides, or any
other group well known in the prior art, e.g., . . . LixCoO2.” (Spec.
17, ll. 6-12).
2. Appellant’s Specification states: “the active anode may be selected
from the group including . . . lithium ion-insertion inorganic
electrodes, and carbon insertion electrodes.” (Spec. 17, ll. 12-14).
3. Beard describes an electrochemical cell (battery) having a
composite anode of a lithium substrate and an intercalation
compound that is coated or laminated to the lithium substrate.
(Col. 1, ll. 8-18).
4. Beard discloses that the intercalation compound:
need not exhibit particularly high capacity, reversible lithium
insertion capabilities. In this regard, for example, LixCoO2 does
not show good reversible properties with x>1.0 (voltages <1.75
V relative to a lithium reference electrode); however, cells
constructed with LiCoO2 coated lithium anodes have shown
good cycle behavior and no evidence of undesirable phase
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changes, dendrites, corrosion products, electrolyte degradation,
and other undesirable effects.
(Col. 3, ll. 26-35).

5. Figure 1A of Beard is reproduced below:

Figure 1A is a cross-sectional view of an electrochemical cell
depicting: an anode side 10 including a current collector 13, a
layer of lithium metal 14 coated by a layer of intercalation
compound 15; a separator 12; and a cathode side 11 including a
current collecting member 16, and an intercalation compound
mixed with a binder 17. (Col. 5, ll. 3-24).
6. Fujita describes a secondary battery, where the positive electrode
(cathode) includes lithium as a light metal. (Col. 4, ll. 24-53).
7. Fujita discloses that some of the lithium inside the battery may be
supplied by laminating lithium metal on the negative electrode
(anode). (Col. 4, ll. 56-63).
8. Fujita discloses that the negative electrode material is capable of
occluding/releasing lithium. (Col. 5, ll. 8-12).
9. Fujita discloses that when the secondary battery is charged, lithium
ions are released from the positive electrode active material and
occluded in the negative electrode material. (Col. 12, ll. 33-39).
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10. Fujita discloses that when the secondary battery is discharged,
lithium metal is occluded in the positive electrode. (Col. 12, ll. 58-
63).

PRINCIPLES OF LAW
The test for compliance for 35 U.S.C. § 112, second paragraph, is
whether the claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in light of the
application disclosure as they would be interpreted by one of ordinary skill
in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

ANALYSIS
For the 35 U.S.C. § 112, second paragraph rejection, we confine our
discussion to claim 56. For the rejection of the claims under 35 U.S.C. §
102(b) as being anticipated by Beard, Appellant has grouped claim 72
separately. Accordingly, we confine our discussion to claims 25 and 72.
Claims 25, 56, and 72 contain claim limitations representative of the
arguments made by Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii).5

5 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37 (c)(1) (vii) (2007).
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Rejection of claims 56 and 72 under 35 U.S.C. § 112, second
paragraph

We agree with the Examiner that claim 56 requires the simultaneous
presence of a first and second fully charged state. Although claim 56 recites
that the battery is “configured” to have another fully charged state, claim 56
also requires that “the lithium metal member [is] substantially absent.”
However, claim 25, from which claim 56 depends, recites the presence of a
“lithium-metal layer.” Thus, because a dependent claim “shall be construed
to incorporate by reference all the limitations of the claim to which it refers”
(35 U.S.C. § 112, fourth paragraph), claim 56 simultaneously recites a state
in which the lithium metal layers are both present and absent, or the
presence of two fully charged states. Therefore, Appellant has not shown
error in the Examiner’s determination that claim 56 would have been
indefinite to one of ordinary skill in the art.
We reverse pro forma the rejection of claim 72 under 35 U.S.C. §
102(b) as being anticipated by Beard and the rejection of claims 56 and 72
under 35 U.S.C. § 102(b) as being anticipated by Fujita. Rejections of
claims over prior art should not be based on “considerable speculation as to
the meaning of the terms employed and assumptions as to the scope of such
claims.” In re Steele, 305 F.2d 859, 862 (CCPA 1962). Any rejection of
claims 56 and 72 over prior art would require speculation as to the states of
the lithium ion batteries recited in the claims. We decline to engage in such
speculation. It should be understood that our decision is based solely on the
indefiniteness of the claimed subject matter and not on adequacy of the prior
art evidence. Ex parte Miyazaki, 89 USPQ2d 1207, 1217 (BPAI 2008).

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Rejection of claims 25, 27, 30, 31, 65-69, 73, and 74 as being
anticipated by Beard

Claim 25 recites “a lithium-metal layer overlaying and adhered to at
least a part of the surface of said electrode of the anode.” We are not
persuaded by Appellant’s argument that Beard fails to disclose the recited
structure. Appellant has not directed us to any persuasive evidence to
support the contention that “overlaying” as recited in the claims imparts a
particular order of layers with respect to the other components in the battery,
such as the proximity of the lithium metal layer to the electrolyte or cathode.
The claim only requires that the lithium metal layer overlays and is adhered
to “at least a part of the surface of said electrode of the anode.” Thus, in
Beard’s battery, lithium metal layer 14 overlays and is adhered to at least a
part of the surface the intercalation compound 15. (See FF 3 and 5).
Moreover, we are not persuaded by Appellant’s argument that Beard’s
battery is charged by plating lithium metal onto the anode and not by
occlusion of Li metal in the intercalation compound. As discussed above,
Beard discloses all of the structural components recited in claim 25.
Although Appellant contends that Beard discloses that the reversible
intercalating properties of the intercalation compound are not important,
Beard exemplifies an intercalation compound having the ability to occlude
and release lithium, which is included in the materials Appellant employs in
the claimed battery. (See claim 30; FF 4). Beard’s description of
charging/discharging of the battery by plating/stripping does not mean that
Beard’s structural components are incapable of producing the claimed
charged state. Appellant has not produced any persuasive evidence proving
otherwise.
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Rejection of claims 25, 27, 30, 31, 55, 60, 63-69, 73, and 74 as being
anticipated by Fujita

Contrary to the Examiner’s finding, Fujita’s cathode and anode are
not both “substantially free of occluded releasable lithium” as recited in
claim 25. We agree with Appellant that Fujita discloses a lithium ion
battery, where when the battery is constructed; lithium is occluded in the
cathode. (App. Br. 16; FF 6). Further, when Fujita’s battery is charged,
lithium is occluded in the anode, and when the battery is discharged lithium
is occluded in the cathode. (FF 9, 10). In addition, we agree with Appellant
that the claims only exclude “occluded releasable lithium” from the cathode
and the anode, and not lithium that is used to construct the cathode and/or
anode. (App. Br. 18). Thus, whether Appellant’s anode and cathode are
constructed of lithium-containing materials has no bearing on whether the
cathode and anode are “substantially free of occluded releasable lithium.”
Therefore, the Examiner has erred in finding that Fujita anticipates the
appealed claims.

Rejection of claims 61 and 70 as being unpatentable over Fujita in
view of Alamgir

In rejecting claims 61 and 70, the Examiner relies on Alamgir for
describing a redox shuttle in lithium redox shuttle. Alamgir fails to remedy
the deficiencies of Fujita discussed above. Accordingly, we reverse the
Examiner’s rejection of claims 61 and 70 under 35 U.S.C. § 103(a) as being
unpatentable over Fujita in view of Alamgir for the same reasons.

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CONCLUSION
Appellant has not demonstrated the Examiner reversibly erred in
determining that claims 56 and 72 require that the claimed battery has two
simultaneous fully charged states rendering the claims indefinite.
Appellant has failed to demonstrate that the Examiner reversibly erred
in finding that the structure of Beard’s anode anticipates the recited anode in
the appealed claims.
Appellant has demonstrated that the Examiner reversibly erred in
finding that both Fujita’s cathode and anode are “substantially free of
occluded releasable lithium” as required in the appealed claims.

ORDER
We affirm the Examiner’s decision rejecting claims 56 and 72 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 25, 27, 30, 31, 65-
69, 73, and 74 under 35 U.S.C. § 102(b) as being anticipated by Beard.
We reverse the Examiner’s decision rejecting claims 25, 27, 30, 31,
55, 60, 63-69, 73, and 74 under 35 U.S.C. 102(b) as being anticipated by
Fujita.
We reverse the Examiner’s decision rejecting claims 61 and 70 under
35 U.S.C. § 103(a) as being unpatentable over Fujita in view of Alamgir.
We reverse pro forma the Examiner’s decision rejecting claim 72
under 35 U.S.C. § 102(b) as being anticipated by Beard.
We reverse pro forma the Examiner’s decision rejecting claims 56 and
72 under 35 U.S.C. 102(b) as being anticipated by Fujita.
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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-IN-PART

PL initial:
sld

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