Ex Parte Scott et al

Board of Patent Appeals and Interferences

Aug 16, 2012

11243734 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/243,734 10/05/2005 Erik R. Scott 038469-0224 (P20169.00) 2138
26371 7590 08/17/2012
FOLEY & LARDNER LLP
777 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202-5306
EXAMINER
ENIN-OKUT, EDU E
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
08/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIK R. SCOTT and WILLIAM G. HOWARD

____________

Appeal 2011-007947
Application 11/243,734
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-52
directed to a lithium-ion battery and a medical device comprising a lithium-
ion battery. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
1. A lithium-ion battery comprising:

a positive electrode;

a negative electrode comprising an active material that includes
carbon fiber or a mixture including coke and mesocarbon microbeads; and
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Application 11/243,734

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an electrolyte containing a first and second additive;

wherein the first additive comprises a compound including a boroxine
ring and the second additive comprises an alkene capable of reacting on a
surface of the negative electrode to form an ionically conductive layer.

The Examiner relies upon the following as evidence of unpatentability
(Ans. 3):1
Barker US 5,744,264 Apr. 28, 1998
Mao US 5,891,592 Apr. 6, 1999
Amine US 2005/0019670 A1 Jan. 27, 2005
Torgerson WO 01/83029 A1 Nov. 8, 2001

THE REJECTIONS
Appellants seek review of the following rejections under 35 U.S.C.
§ 103(a): Claims 1-7, 11-18, 21-24, and 40-49 over Amine in view of Mao;
claims 9, 10, 19, 20, and 25-26 over Amine and Mao in view of Barker; and
claims 27-39 and 50-52 over Torgerson in view of Amine and Mao. App.
Br. 8. Claim 8 is neither rejected nor allowed, but Appellants treat claim 8
as rejected and thus seek review of the rejection of claims 1-52. Id. at 4.

ISSUES
The following dispositive issues arise:
1. Does the Examiner err in concluding that the subject matter of
claim 1 would have been obvious over the applied art, notwithstanding the
large number of possible combinations of additives disclosed in Amine?

1 Our analysis makes reference to the Examiner’s Answer mailed
February 11, 2011 (“Ans.”), the Appeal Brief filed December 7, 2010
(“App. Br.”), and the Reply Brief filed April 8, 2011 (“Reply Br.”).
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Application 11/243,734

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2. Does the Examiner err in concluding that the subject matter of
claim 1, and in particular, the limitation requiring a “first additive” that
“comprises a compound including a boroxine ring,” would have been
obvious over the applied art?
3. Does the Examiner err in concluding that the subject matter of
claim 6 would have been obvious over the applied art, notwithstanding
Appellants’ position that the composition of claim 6 exhibits “an unexpected
synergistic effect”?
We answer these questions in the negative and AFFIRM. We find no
reversible error in the Examiner’s fact finding and application of law.
Therefore, we adopt the fact findings and responses to argument presented in
the Answer and add the following analysis primarily for emphasis.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claim 1 is directed to a lithium-ion battery that comprises “an
electrolyte containing a first and second additive; wherein the first additive
comprises a compound including a boroxine ring and the second additive
comprises an alkene” having specified capabilities.2 The Examiner finds
that Amine discloses each limitation of claim 1, including an alkene as a
second additive, except that Amine fails to disclose a first additive that

2 Appellants argue claims 1-52 as a group with respect to the first two
issues. App. Br. 10-19. Appellants argue claims 6, 7, 12, 35, 36, and 39 as a
group with respect to the third issue. App. Br. 19. We select claims 1 and 6
as representative of the subject matter on appeal. Claims 2-5, 9-11, 13-34,
37-38, and 40-52 stand or fall with claim 1. Claims 7, 12, 35, 36, and 39
stand or fall with claim 6. To the extent claim 8 is at issue, see App. Br. 4,
Ans. 2, claim 8 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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Application 11/243,734

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comprises a boroxine ring, such as trimethoxyboroxine. Ans. 4; see claim 2.
The Examiner points out that, instead of a boroxine ring additive, Amine
discloses a metal(chelato)borate additive that “promotes the formation [of] a
protective film on the anode that protects it from chemical attack.” Ans. 4
(citing Amine ¶¶ 7, 42). The Examiner further relies on Mao, which
discloses “the use of a trimethylboroxine (or a trimethylboroxin) as an
additive . . . that reduces capacity loss (fade) by inhibiting the
passivation/decomposition occurring at the anode surface via formation of a
passivation film thereon.” Id. (citing Mao, Abstract, 7:11-26). The
Examiner thus concludes that it would have been obvious to substitute one
known element (the trimethoxyboroxine of Mao) for another known element
(the metal(chelato)borate of Amine) to yield predictable results, namely, the
formation of a protective film on an anode. Id. (citing MPEP 2143).
Appellants disagree on the grounds that “Amine discloses a nearly
limitless number of electrolyte additive combinations, and the effort required
to test each additive combination in Amine would be monumental.” App.
Br. 13 (citation omitted). However, Appellants admit that one of “four
classes” of suitable first additives disclosed in Amine is a “substituted or
unsubstituted alkene.” Reply Br. 6 (quoting Amine ¶ [0008]) (emphasis
omitted). Although Appellants are correct that “[w]ithin each class are
many, many different” particular compounds, claim 1 broadly embraces
alkenes as the first additive. App. Br. 6. Furthermore, as Appellants admit,
“Claims 3 and 5” of Amine “select a subset of the materials listed in the
application.” App. Br. 6. In our view, these facts strongly reinforce the
Examiner’s view that the additives embraced by claim 1 are not buried in an
overwhelming mass of choices in Amine. See Ans. 7. In any event, the fact
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that Amine “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.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (citing In re Corkill , 771 F.2d 1496, 1500 (Fed.Cir. 1985)
(obviousness rejection of claims affirmed in light of prior art teaching that
“hydrated zeolites will work” in detergent formulations, even though “the
inventors selected the zeolites of the claims from among ‘thousands’ of
compounds”); see In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness
rejection affirmed where the disclosure of the prior art was “huge, but it
undeniably include[d] at least some of the compounds recited in appellant's
generic claims and it is of a class of chemicals to be used for the same
purpose as appellant's additives”)
The question remains whether the Examiner erred in substituting the
boroxine ring additive of Mao for the metal(chelato)borate additive of
Amine. Appellants contend that “there is no disclosure, teaching, or
suggestion” in the applied art “that would have led” an ordinary artisan to
make this substitution. Appellants admit, however, that each additive at
issue here is used to “form a protective film on the anode.” App. Br. 14.
Specifically, Appellants admit that Mao’s boroxine ring “helps form a
passivation film” on the anode and that this is the same purpose served by
both additives in Amine. Reply Br. 8; see App. Br. 14; Ans. 4. More
importantly, the applied art discloses that Amine’s metal(chelato)borate and
Mao’s boroxine ring serve the same function in forming a protective film on
the anode. Ans. 4 (citing Amine ¶¶ [0007, 0042]; Mao, abstract; 7:11-26).
In our view, the commonality of purpose disclosed in the prior art fully
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supports the Examiner’s determination that these additives are, in fact,
interchangeable. See Ans. 4. Where two known alternatives are
interchangeable for a desired function, an express suggestion to substitute
one for the other is not needed to render a substitution obvious. In re Fout,
675 F.2d 297, 301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568
(CCPA 1967). On this record, we discern no error in the substitution of
Mao’s boroxine ring for Amine’s metal(chelato)borate and, therefore, find
that the Examiner makes out a prima facie showing that claim 1 would have
been obvious over Amine in view of Mao.
Appellants do not challenge the rejections based on Barker or
Torgerson, except to argue that these references “do not cure the deficiencies
of the combination of Amine and Mao.” App. Br. 12. These rejections are
thus affirmed for the reasons stated above.
We have considered Appellants’ position that the data in Table 2 of
the Specification establishes that the composition of claim 6 exhibits “an
unexpected synergistic effect in the combination of materials” specified, but
find that evidence insufficient to overcome the Examiner’s prima facie
showing that the specified combination would have been obvious in view of
the applied art. App. Br. 19-20 (citing Spec., Table 2). Specifically, we
agree with the Examiner that Appellants’ evidence at best represents the
recognition of an advantage that flows naturally from “following the
suggestion of the prior art” to combine the specified materials. Ans. 8-9
(quoting Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“[t]he fact that
appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the difference would otherwise have been obvious”)); see
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In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (citing In re Kubin, 561
F.3d 1351, 1357 (Fed. Cir. 2009)).
No persuasive argument or evidence having been brought forward by
Appellants, we affirm the rejections of claims 1-52.

CONCLUSION
We affirm the rejections of claims 1-52.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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