Ex Parte Song et alDownload PDFPatent Trial and Appeal BoardMay 15, 201713602033 (P.T.A.B. May. 15, 2017) Copy Citation 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. 13/602,033 08/31/2012 Jay-Hyok Song 70013/S744 4359 23363 7590 05/17/2017 T ewis; Rnra Rnthcrerher Phrisitie T T P EXAMINER PO BOX 29001 Glendale, CA 91209-9001 WANG, EUGENIA ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 05/17/2017 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): pto@lrrc.com pair_cph @ firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAY-HYOK SONG, SANG-IN PARK, JI-HYUN KIM, KI-HYUN KIM, YONG-CHAN YOU, and HA-YOUNG LEE Appeal 2016-002034 Application 13/602,0331 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and JEFFREY R. SNAY, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1—10 and 12—14 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants identify Samsung SDI Co., Ltd. as the real party in interest. Appeal Br. 1, July 24, 2015. 2 Final Office Action, Mar. 6, 2015 (hereinafter Final Action); Examiner’ Answer, Oct. 2, 2015 (hereinafter Answer). Appeal 2016-002034 Application 13/602,033 BACKGROUND Appellants’ invention relates to a positive active material, which may be used in a lithium battery. See Spec. 12. Sole independent claim 1 is representative: 1. A positive active material comprising a lithium- containing compound represented by the following Chemical Formula 1: Chemical Formula 1 LiFe i -x-zMxM'zPy04 wherein, M is vanadium (V), M' is cobalt (Co), manganese (Mn), magnesium (Mg), zirconium (Zr), nickel (Ni), or a combination thereof, and about 0 < x < about 0.20, about 0 < z < about 0.20, and about 0.90 < y < about 1.20, and wherein the lithium-containing compound comprises secondary particles formed of agglomerated primary particles, the secondary particles having a particle size in the range of about 5 pm to about 30 pm. Appeal Br. 12. The Examiner maintains the following grounds of rejection: I. Claims 1—10 and 12—14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Choy.3 See Final Action 2—6. II. Claims 5, 6, and 8 are alternatively rejected under 35 U.S.C. § 103(a) as being unpatentable over Choy in view of Hemmer.4 See Final Action 6—9.5 3 Choy et al., US 2010/0233540 A1 (published Sept. 16, 2010). 4 Hemmer et al., US 2004/0151649 Al (published Aug. 5, 2004). 5 In the Final Action, the Examiner also rejected claims 1—4, 7—10, and 12— 14 under 35 U.S.C. § 103(a) as being unpatentable over Beck et al., US 2011/0052988 Al (published Mar. 3, 2011), in view of Choy. Final Action 9—13. The Examiner has withdrawn this rejection. See Answer 9. 2 Appeal 2016-002034 Application 13/602,033 In the Appeal Brief, Appellants separately argue independent claim 1 and dependent claims 2, 5, 6, and 8. See Appeal Br. 4—10. Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv) (2016), we limit our discussion to the argued claims. Claims 3, 4, 7, 9, 10, and 12—14 stand or fall with claim 1. DISCUSSION Claim 1 Choy teaches a material comprising an olivine-type lithium iron phosphate with a composition as follows: Lii+aFei-xM (P04-*)X, where “M is selected from Al, Mg, Ni, Co, Mn, Ti, Ga, Cu, V, Nb, Zr, Ce, In, Zn, Y and combinations thereof,†and wherein the following relations hold: -0.5 < a < 0.5, 0 < x < 0.5, 0 < b < 0.1. Choy 1147-49. Based on this disclosure, the Examiner finds that Choy teaches a genus of chemical structures that overlaps the genus defined by Chemical Formula 1 in claim 1. See Final Action 2—3. The Examiner also finds that Choy’s disclosed numerical values for a, x, and b overlap the corresponding values reflected in claim 1. See id. According to the Examiner, Choy’s disclosure renders claim 1 obvious because “one of ordinary skill in this art at the time this invention was made would have been able to select the claimed elements and related subscripts for each of the elements without undue experimentation, as they are encompassed within Choy et al.†Id. Appellants argue that “Choy discloses a genus with a very large number of species included,†and that the Examiner has not identified “any teaching, suggestion, or guidance to particularly select V, instead of any of 3 Appeal 2016-002034 Application 13/602,033 the 14 other elements listed, as the M element. In fact, none of the examples of Choy include V in the composition.†Appeal Br. 4. Appellants further argue that with the 15 listed elements, Choy teaches 210 combination of choices for M and M' in claim 1, and that this genus is too large to render claim 1 obvious. See id. at 5. Appellants also argue that the range for x in Choy of 0-0.5 is much larger than the range for x in claim 1 of about 0-0.2, and that the Examiner’s rejection relies solely on the overlapping composition. See id. at 5—6. Appellants argue that disclosure of a genus of compositions that includes the claimed composition is not sufficient, in itself, to establish a prima facie case of obviousness. Id. (citing MPEP 2144.05(1), 2144.08(II)(A)); see also Reply Br. 2—3. According to Appellants, the Examiner must instead conduct an evaluation of obviousness under the factors set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). See id. In determining whether a claim is obviousness, we must consider “the background knowledge possessed by a person having ordinary skill in the art,†and we may take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.†KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The genus of structures encompassed by the disclosure in Choy includes a limited number of compounds. Appellants have not pointed to any evidence sufficient to show that selecting vanadium from the 15 elements listed in Choy would have involved more than routine experimentation, or that the specific choice of vanadium leads to unexpected results. Thus, we find no error in the Examiner’s determination, see Final Action 2—3, that selecting vanadium from among the 15 elements listed in 4 Appeal 2016-002034 Application 13/602,033 Choy, or selecting vanadium in addition to one of five other optional elements, was within the skill in the art at the time of Appellants’ invention. Regarding the numerical limits for x in claim 1, Choy discloses a range that entirely overlaps that of claim 1. See Choy 149. “Aprima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.†In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff 919 F.2d 1575, 1578 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)). These cases have consistently held that the Appellants must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range, or that the applied prior art teaches away from the claimed invention. Appellants have not pointed to any persuasive evidence that the range for x in claim 1 of 0 < x < about 0.20 is critical in comparison to the range of 0-0.5, or to any other persuasive evidence that the range of 0-0.2 is not obvious in view of Choy’s disclosed range. Appellants argue that the Examiner has not established obviousness in part because “[cjhemistry is generally regarded as an unpredictable art,†and that this unpredictability is shown in Figure 8 of Choy, where the specific capacities of two preparations of LiFePCE are different “due to a difference in the preparation of the secondary particles of the two materials.†Reply Br. 4—5 (citing Choy Fig. 8). However, this evidence only shows that preparing secondary particles differently leads to different results—it does not show that the choice of elements in Choy’s Formula I, or the choice of numerical values for the subscripts, is so unpredictable that making such selections 5 Appeal 2016-002034 Application 13/602,033 would have required more than ordinary skill in the art at the time of Appellants’ invention. Notwithstanding Appellants’ arguments regarding the unpredictability of the chemical arts, Appellants have not directed us to evidence that establishes the claimed range provides unexpected results over the prior art or that the ranges claimed have consistent predictable results throughout. Therefore, for the above reasons, we find no reversible error in the Examiner’s rejection of claim 1. For the same reasons, we find no reversible error in the Examiner’s rejection of claims 3, 4, 7, 9, 10, and 12—14. Claim 2 Claim 2 requires that “x and y have a ratio of about 0.009 < x/y < about 0.07.†Appeal Br. 12. The Examiner finds that Choy discloses a range for x/y that encompasses the range in claim 1. See Final Action 3^4 (Choy discloses that 0 < x/y < 0.5). For the reasons discussed above with respect to claim 1, the Examiner has established a prima facie case by showing that Choy’s range for x/y overlaps that of claim 1. See Peterson, 315 F.3d at 1329. Appellants argue that the range of x/y in claim 2 is much narrower than the range disclosed in Choy, and that the range of claim 2 leads to unexpected results, as shown by the capacity retention data in Table 3 of the Specification. See Appeal Br. 7—8; see also Reply Br. 5—6. Table 3 is reproduced below: 6 Appeal 2016-002034 Application 13/602,033 Table 3 Table 3 presents data for a set of thirteen examples (Examples 1-1 through 6- 3) ofLiFei-x-zVxCozPy04 with different values for x, y, z, x/y, and x/z, and a column indicating “[cjapacity retention (cycle-life, %).†According to Appellants, “the capacity retention (cycle-life) of Examples 1-1 to 4-1 (having an x/y value between 0.009 and 0.07) is much higher than Examples 5-1 to 5-3 (having an x/y value greater than 0.07).†Appeal Br. 7. Evidence of unexpected results must show that the claimed range is critical relative to the prior art range. See Woodruff, 919 F.2d at 1577. However, Table 3 does not persuasively show that the range “about 0.009 < x/y < about 0.07†is critical with respect to Choy’s range of 0 < x/y < 0.5. As the Examiner correctly notes, see Answer 15, the table contains no data 7 Appeal 2016-002034 Application 13/602,033 for x/y < 0.009, and thus Appellants have not shown criticality with respect to this portion of the prior art range. In addition, evidence of unexpected results must be commensurate in scope with the claims. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results in inadequate proof.â€); In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (appellant must “show results covering the scope of the claimed range,†or “narrow the claimsâ€). Table 3 only presents data for when M' is cobalt or absent, and does not present data for when M' is Mn, Mg, Zr, or Ni, which are within the scope of claim 2. Finally, Appellants do not point to evidence that the results shown in Table 3 would have been unexpected to a person of ordinary skill in the art. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.â€). For the above reasons, we find no reversible error in the Examiner’s rejection of claim 2. Claims 5 and 6 Claim 5 depends from claim 1 and requires that “x and z have a ratio of about 0.5 < x/z < about 5.†Appeal Br. 12. Claim 6 also depends from claim 1 and requires that the ratio x/z is “about 2.†Id. The Examiner rejects claims 5 and 6 over Choy alone, on the basis that Choy discloses that M may include an element selected from a list of 15 elements including V, Co, Mn, Mg, Zr, Ni, “and combinations thereof,†and that if both x and z are between 0 and 0.5, the value of x/z of these combinations “would overlap/encompass the claimed ranges 0.5Copy with citationCopy as parenthetical citation