Ex Parte Ndzebet et al

Patent Trial and Appeal Board

Sep 27, 2017

13597848 (P.T.A.B. Sep. 27, 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.
13/597,848 08/29/2012 Ernest NDZEBET 33962-0068 3516
139891 7590
LSIP Law LLC
P.O. Box 2229
Vienna, VA 22183-2229
09/27/2017 EXAMINER
STAGG, MIRIAM
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
09/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERNEST NDZEBET, JOSHUA DEAN, MARIO
DESTEPHEN, UMAMAHESWARI JANAKIRAMAN,
GREGORY MILLER, and MIN QI YANG
Appeal 2016-003326
Application 13/597,8481
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—4, 7—11, 13, 15, 20, 23, and 26—29. We have
jurisdiction. 35 U.S.C. § 6(b). We AFFIRM.
1 According to Appellants, the real party in interest is EaglePicher
Technologies, LLC. Appeal Br. 2.
Appeal 2016-003326
Application 13/597,848
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a cathode material for
use in a non-aqueous electrochemical cell. Spec. 11. Claim 1, reproduced
below with formatting added for readability, is the only independent claim
on appeal and is illustrative of the claimed subject matter:
1. A non aqueous electrochemical cell comprising:
an anode;
an electrolyte; and
a cathode that comprises copper-manganese-vanadium-
oxide represented by the formula CuxMnyVzOw and
fluorinated carbon;
wherein:
the copper has an oxidation state between about 1
and about 3,
the manganese has an oxidation state between about
1 and about 7,
the vanadium has an oxidation state between about
2 and about 5,
x, y, and z are each greater than zero,
the sum of x + y + z is between about 1 and about
3, and
w has a value greater than zero and is consistent
with the values of x, y, and z and with the oxidation
states of the copper, manganese, and vanadium.
2 In this opinion, we refer to the Final Office Action dated February 4, 2015
(“Final Act.”), the Appeal Brief filed August 25, 2015 (“Appeal Br.”), the
Examiner’s Answer dated December 1, 2015 (“Ans.”), and the Reply Brief
filed February 1, 2016 (“Reply Br.”).
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Application 13/597,848
Appeal Br. Claims App’x.
We note that Appellants cancelled claims 14, 17—19, 21, 22, 24, and
25 after the Final Action. Ans. 2.
REJECTION AND REFERENCES
On Appeal, the Examiner maintains a rejection of claims 1—4, 7—11,
13, 15, 20, 23 and 26—29 under 35 U.S.C. § 103 as unpatentable over
Otsuka, et al., JP 61-142669 A, June 30, 1986 (hereinafter “Otsuka”) in view
of Chang et al., WO 2010/054305 Al, May 14, 2010 (hereinafter “Chang”).3
ANALYSIS
We review the appealed rejection for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 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”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellants do not separately argue any dependent claims. We
therefore limit our discussion to claim l.4 The remaining claims on appeal
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
3 The Examiner has withdrawn the prior rejection pursuant to 35 U.S.C. §
112. Ans. 3.
4 We note that Appellants’ claim appendix includes a typographical error in
claim 13 where it recites “[t]he non aqueous electrochemical cell according
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Application 13/597,848
The Examiner finds that Otsuka teaches an electrochemical cell with
an anode and a copper-manganese-vanadium-oxide cathode that satisfies the
recited formula of claim 1. Ans. 4—5 (providing citations to Otsuka). The
Examiner finds that Otsuka does not teach that the cathode also comprises
fluorinated carbon. Id. at 5.
The Examiner finds that Chang teaches a copper manganese oxide
cathode material with “fluorinated carbonaceous active material present in
the cathode.” Id. (providing citations to Chang). The Examiner concludes
that “[i]t would have been obvious to one of ordinary skill in the art at the
time of the invention to modify [Otsuka’s] active material by adding a
fluorinated carbon as taught by [Chang] for the advantage of having a high
energy cathode material....” Id. at 6. The Examiner cites Chang’s third
paragraph which states that fluorinated carbon is “a high energy cathode
material.” Chang 13. A preponderance of the evidence supports the
Examiner’s findings and conclusion.
Appellants argue that the Examiner has not provided a sound technical
or legal reason why a person of ordinary skill would have been motivated to
modify Otsuka with Chang. Appeal Br. 5. Appellants emphasize that Chang
teaches away from the present invention by teaching that fluorinated carbon
should be combined with a material of high energy density and should not be
combined with a material that would have lower capacity than a cathode
made of purely fluorinated carbon. Id. at 7—9. Appellants further argue that,
to claim 0....” This error does not affect our review as our discussion is
limited to claim 1.
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Application 13/597,848
given the teachings of Chang, the Examiner’s combination is improperly
based on hindsight. Id. at 9-12.
Appellants’ argument is unpersuasive for several reasons. First,
Appellants state that copper-manganese-vanadium-oxide is a low capacity
material and is thus the kind of material Chang discourages using. See, e.g.,
Appeal Br. 6, 8—9. Appellants present no evidence, however, that would
establish that copper-manganese-vanadium-oxide is low capacity. Estee
Lauder Inc. v.L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(“’Arguments of counsel cannot take the place of evidence lacking in the
record.”) (internal quotes and citation omitted). This lack of evidence
undermines Appellants’ argument.
Appellants’ argument also fails to squarely address the Examiner’s
rationale for combining Otsuka and Chang. In particular, the Examiner’s
obviousness combination begins with Otsuka as its starting point. Ans. 11
(emphasizing that Otsuka is cited as the primary reference). The Examiner
finds that a person of ordinary skill would have understood that combining
copper-manganese-vanadium-oxide with fluorinated carbon would have “the
advantage of having a high energy cathode material....” Ans. 6. This
finding provides rational underpinning for the Examiner’s obviousness
conclusion, and Appellants present no evidence or argument to dispute this
finding. Appellants’ arguments therefore do not identity error on this point.
Cf. Ex parte Frye, 94 USPQ2d at 1075.
Appellants also focus on Chang’s preference for copper manganese
oxide. Appeal Br. 7—9; Reply Br. 3—6. The evidence indeed supports that
Chang focuses on copper manganese oxide. See, e.g., Chang, Title. Chang
teaches fluorinated carbon as an option to add to a copper manganese oxide
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Application 13/597,848
cathode. Id. at 11. Despite Chang teaching that copper manganese oxide is
an advantageous cathode material, the cited references as a whole (including
Otsuka) suggest that a person of ordinary skill would have also recognized
that other cathode materials could be used for different purposes.
Importantly, Chang does not indicate that fluorinated carbon may not also be
an optional additive for other cathode materials (i.e., materials outside the
scope of Chang’s primary concern) and does not indicate that fluorinated
carbon would not be desirable in combination with copper-manganese-
vanadium-oxide. In other words, Chang’s teachings that copper manganese
oxide is the best material for the particular purpose Chang is attempting to
accomplish (whether or not combined with optional fluorinated carbon) does
not speak to whether or not fluorinated carbon may also be useful to add to
other cathodes designed for other purposes. Indeed, Chang indicates that
fluorinated carbon is “often used” with other cathode material. Id. at 15.
As such, the preponderance of the evidence does not support that Chang
truly teaches away from the combination presented by the Examiner. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”).
Because Appellants’ arguments do not establish harmful Examiner
error, we sustain the Examiner’s rejection.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1^1, 7-11, 13, 15, 20, 23, and 26-29.
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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).
AFFIRMED
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