Ex Parte Paik et al

Patent Trials and Appeals Board

May 31, 2019

12896976 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/896,976 10/04/2010
28395 7590 06/04/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Chi Paik
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.
83141837 1978
EXAMINER
SHEIKH, HAROON S
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHI PAIK,
ROBERT J. KUDLA, and ANDREW ROBERT DREWS
Appeal 2018-003364
Application 12/896,976
Technology Center 1700
Before GEORGE C. BEST, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-6, 8-14, 16, 17, 19, and 21-24
of Application 12/896,976 under 35 U.S.C. § 103(a) as obvious. Final Act.
(January 25, 2017). Appellants1 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 reverse.
1 Ford Global Technologies, LLC is identified as the real party in interest.
Appeal Br. 1.
Appeal 2018-003364
Application 12/896,976
BACKGROUND
The '976 Application describes lithium-containing electrode materials
for use in electrochemical cells. Spec. 1. In particular, the reflector material
comprises ( 1) a lithium-containing oxide of the formula Li(NixCoyMz)02,
where Mis an element other than Li, Ni, Co, or O; x, y, and z are non-zero;
and x + y + z = 1, and (2) an oxygen scavenger that contacts at least a
portion of the lithium-containing oxide. Id. at 1-2.
Claims 1, 14, and 19 are independent. Claim 1 is representative of the
'976 Application's claims and is reproduced below from the Claims
Appendix of the Appeal Brief:
1. An electrode material comprising:
a Li-containing oxide of the formula of Li(NixCoyMz)02,
wherein Mis an element different from Li, Ni, Co, or 0,
wherein x, y, and z are each independently between O and 1,
and the sum of x, y, and z is 1;
an oxygen scavenger oxide, including at least one of Y 203,
Ce02, and CeO, contacting the Li-containing oxide; and
a dopant intermixed with the Li-containing oxide and including
Ce.
Appeal Br. Claims App. 1.
2
Appeal 2018-003364
Application 12/896,976
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3-6, and 8-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watanabe2 and Johnson.3
Answer 3.
2. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watanabe, Johnson, and
Ogawa4• Answer 4.
3. Claims 14, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watanabe, Johnson, and
Ogawa. Answer 6.
4. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Watanabe, Johnson, Ogawa, and Liu. 5
Answer 9.
5. Claims 19 and 2 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watanabe, Johnson, and
Ding.6 Answer 8.
6. Claims 22 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watanabe, Johnson, and
Ding. Answer 10.
2 US 2009/0200510 Al, published August 13, 2009.
3 US 2004/0191633 Al, published September 30, 2004.
4 US 2010/0279176 Al, published November 4, 2010.
5 US 2005/0130042 Al, published June 16, 2005.
6 Yanhuai Ding et al., Effect of rare earth elements doping on structure and
electrochemical properties of LiNi113Co113Mn11302for lithium-ion battery,
178 Solid State Ionics 967 (2007).
3
Appeal 2018-003364
Application 12/896,976
7. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Watanabe, Johnson, Ogawa, and Ding.
Answer 10.
DISCUSSION
Each of the rejections on appeal is based upon the combination of
Watanabe and Johnson. See Answer 3-10. We agree with Appellants that
the Examiner has not provided adequate reasoning to support this
combination in the manner proposed in the rejections. We, therefore,
reverse the rejections of claims 1-6, 8-14, 16, 17, 19, and 21-24 of the '97 6
Application.
In rejecting claim 1, the Examiner found that Watanabe describes or
suggests each limitation of claim 1 except for the oxygen scavenging oxide
that is in contact with the lithium-containing oxide. Id. at 3. The Examiner
also found that Johnson describes or suggests
deposition of oxygen scavengers ( colloidal particles) at the
surface electrode particles including lithium-metal-oxides in
order to improve the electrochemical cycling stability of spinel-
or layered-typed [sic] electrodes in lithium-ion cells by
effectively scavenging unwanted species in the electrolyte, and
thereby protecting the electrode particles from corrosion, the
oxygen scavenger including Zr02, Y203 and/or Ti02.
Id. at 3-4 ( citing Johnson ,-J,-J 30-31 ). The Examiner further found that a
person of ordinary skill in the art at the time of the invention would have
combined Watanabe and Johnson because including Johnson's oxygen
scavenging materials contacting the lithium-metal-oxides in Watanabe's
lithium-containing electrodes would improve the electrochemical cycling
ability of the electrodes. Id. at 4.
4
Appeal 2018-003364
Application 12/896,976
Appellants argue that the rejections should be reversed because
Johnson teaches away from using Watanabe's electrode material. See
Appeal Br. 4-8. In particular, Appellants argue that the Examiner has not
adequately explained why a person of ordinary skill in the art would have
chosen to combine Watanabe's electrode material with the oxygen
scavenging material described in Johnson. Id.
We agree with Appellants. Watanabe specifies that its electrodes are
comprised of composite oxide particles having the chemical formula
LiaNixCOyAlz02, where
0.3 :S a :S 1.05,
0.6 :S X :S 0.9,
0.1 :S y :S 0.4,
0.01 :S z :S 0.2, and
x+y+z=l.
Watanabe ,-J,-J 13-14. Watanabe further states that the amounts of cobalt and
aluminum must be maintained within the stated ranges or the performance of
the electrode will be compromised. Id. ,-i,-i 32-33. If the coefficients y or z
are below the stated ranges the safety of the composite oxide particles'
crystal structure may be degraded, decreasing the charge/discharge repetition
capacity and the safety of the cathode active material. Id. If the coefficients
y or z are above the stated ranges, the cathode active material's discharge
capacity may be reduced. Id.
Johnson, on the other hand, describes the use of lithium metal oxide or
lithium metal oxide fluoride cathodes, specifically spinel-type
(Lic1+x)Mnc2-x)04) and layered-type electrodes lacking cobalt and/or
aluminum. Appeal Br. 5. According to Johnson, electrodes of these types
5
Appeal 2018-003364
Application 12/896,976
provide superior performance to certain cobalt-containing electrodes.
Johnson ,i,i 4-5.
For the rejections at issue in this appeal to be proper, the Examiner
must explain why a person of ordinary skill in the art would have had reason
to use Watanabe's electrodes, with their known limitations, instead of the
electrodes described in Johnson. In this case, the Examiner has not provided
the necessary explanation. Rather, the Examiner assumed that the person of
ordinary skill in the art at the time of the invention would have selected
Watanabe's electrodes as a starting point even though Watanabe itself
describes the limitations and drawbacks of these electrodes. According to
the Examiner, the person of ordinary skill in the art then would have chosen
to use the oxygen scavenging materials described in Johnson in combination
with Watanabe's electrodes. Answer 4.
In reaching this conclusion, the Examiner failed to consider all of the
description provided by Johnson. In particular, the Examiner has not
explained why a person of ordinary skill in the art would have rejected
Johnson's electrode materials, which are not described as having limitations
of the sort inherent in Watanabe's electrode materials.
Based on the descriptions provided in Watanabe and Johnson, it might
have been the case that a person of ordinary skill in the art would have
decided to use Watanabe's electrode materials (in spite of their known
limitations) because they have some property-e.g., charge/discharge
cycling properties-different from those described for Johnson's electrode
materials. The Examiner, however, did not identify the different properties
and explain why a person of ordinary skill would have elected to continue to
work with Watanabe's electrode materials.
6
Appeal 2018-003364
Application 12/896,976
In other words, the Examiner must explain why a person of ordinary
skill in the art would have elected to accept the limitations specifically
described in Watanabe's electrode materials in view of the apparently
superior properties of Johnson's electrode materials. On the record before
us, the Examiner has not met this burden.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1-
6, 8-14, 16, 17, 19, and 21-24.
REVERSED
7