Ex Parte Stux et al

Board of Patent Appeals and Interferences

Feb 8, 2012

11307367 (B.P.A.I. Feb. 8, 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.
11/307,367 02/03/2006 Arnold M. Stux 97200-US1 2366
26384 7590 02/08/2012
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
DOVE, TRACY MAE
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
02/08/2012 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 ARNOLD M. STUX and KAREN SWIDER LYONS
____________

Appeal 2010-003936
Application 11/307,367
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and KAREN M. HASTINGS,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 6, 7, and 10 through 18, all of the pending claims in
the above-identified application.1 We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “lithium-metal-oxide (Li-
M-O) composite materials and batteries” (Spec. 1, para. 0001). Details of
the appealed subject matter are recited in representative claims 1, 6, 17, and

1 See Appeal Brief (“App. Br.”) filed June 9, 2009, 4; and Examiner’s
Answer (“Ans.”) filed September 10, 2009, 2.

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182 reproduced from the Claims Appendix to the Appeal Brief as shown
below:
1. A composite material comprising:

particles of a lithium-metal-oxide compound;

particles of Li2RuO3;

a conductive matrix; and

a polymeric binder;

wherein the particles of a lithium-metal-oxide compound are
free of Li2RuO3; and

wherein the particles of Li2RuO3 are free of the lithium-metal-
oxide compound.

6. The composite material of claim 1, wherein the lithium-metal-
oxide compound is LiCoO2.

17. The composite material of claim 1;

wherein the lithium-metal-oxide compound is LiCoO2; and

2 Appellant only argues claims 1, 6, 17, and 18. (See App. Br.8-15 and
Reply Br. 1-3.) Therefore, for purposes of this appeal, we select claims 1, 6,
17, and 18 to decide the propriety of the Examiner’s rejections set forth in
the Answer. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims
subject to the same ground of rejection are argued as a group by appellant,
the Board may select a single claim from the group of claims that are argued
together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.”).

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wherein the weight ratio of LiCoO2 to Li2RuO3 is from about 90:10 to
about 10:90.

18. The composite material of claim 1;

wherein the lithium-metal-oxide compound is LiCoO2; and

wherein the weight ratio of LiCoO2 to Li2RuO3 is from about 90:10 to
about 55:45.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 2 of the
Answer:
Mayer WO 97/01191 Jan. 9, 1997
Moore, G.J. et al., “The electrochemical behavior of xLiNiO2· (1-x)Li2RuO3
and Li2Ru1-yZryO3 electrodes in lithium cells,” Journal of Power Source,
119-121, pp. 216-220 (2003) (hereinafter referred to as “Moore”).

Appellants seek review of the following grounds of rejection
maintained by Examiner in the Answer:
1) Claim 18 under 35 U.S.C. §112, first paragraph, as failing to
comply with the enablement requirement;
2) Claims 1, 6, 7, and 10 through 18 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Moore; and
3) Claims 1, 6, 7, and 10 through 18 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Mayer and Moore. (See App.
Br. 7 and Ans.2.)

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RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUE,
ANALYSIS AND CONCLUSION
I. ENABLEMENT
The dispositive question is: Has the Examiner reversibly erred in
determining that the Specification does not enable one of ordinary skill in
the art to make and use the composite material recited in claim 18? On this
record, we answer this question in the affirmative.
It is well established that the Examiner has the “burden of giving
reasons, supported by the record as a whole, why the [S]pecification is not
enabling . . . Showing that the disclosure entails undue experimentation is
part of the PTO’s initial burden.” In re Angstadt, 537 F.2d 498, 504 (CCPA
1976). In determining whether any given disclosure would require undue
experimentation to practice the claimed subject matter, the Examiner must
consider not only the breadth of the claims, the amount of direction or
guidance presented and the presence or absence of working examples, but
also the nature of the invention, the state of the prior art, the relative skill of
those in the art and the predictability or unpredictability of the art. In re
Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). This enablement requirement
found in the first paragraph of 35 U.S.C. § 112 is separate and distinct from
the written description requirement of that provision. See, e.g., Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010)(en banc) (“Since its inception, this court has consistently held that §
112, first paragraph, contains a written description requirement separate
from enablement.”)

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Here, the Examiner has not provided any adequate reason why the
Specification does not enable one of ordinary skill in the art to make and use
the claimed composite material having LiCoO2 and Li2RuO3 in the weight
ratio from about 90:10 to about 55:45, without any undue experimentation.
Nowhere has the Examiner explained why the factors enumerated in Vaeck,
as applied to the present circumstance, support the Examiner’s determination
that that the Specification does not enable one of ordinary skill in the art to
make and use the composite material recited in claim 18.
Accordingly, we find no basis for the Examiner to conclude that claim
18 is not in compliance with the enablement requirement of the first
paragraph of 35 U.S.C. § 112.
2. OBVIOUSNESS BASED ON MOORE
Appellants contend that Moore does not teach or suggest employing a
mixture of particles of a lithium-metal-oxide compound, such as LiNiO2,
and particles of Li2RuO3 in forming a positive electrode (cathode). (See
App. Br. 10-11.)
Thus, the first critical question is: Has the Examiner reversibly erred
in determining that one of ordinary skill in the art, armed with the
knowledge reflected in the teachings of Moore, would have been led to
employ a mixture of particles of a lithium-metal-oxide compound, such as
LiNiO2 or LiCoO2, and particles of Li2RuO3 in forming a composite material
or a cathode electrode that also contains a conductive matrix and a
polymeric binder? On this record, we answer this question in the negative.
As correctly found by the Examiner at page 3 of the Answer, Moore
teaches using particles of an active material, carbon (conductive matrix) and
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polyvinylidene fluoride (PVDF) binder to prepare a positive electrode
(cathode electrode). (See also Moore, p. 217, col. 1.) Moore teaches
preference for using xLiMO2·(1-x)Li2RuO3 (M=Co, Ni or Mn) as an active
material as indicated by Appellants at pages 10 and 11 of the Appeal Brief
(See also Moore, p. 216, col. 2.) However, Moore also teaches, at pages 216
and 217, that LiNiO2, LiCoO2 or Li2RuO3 was a known active material for
forming a positive (cathode) electrode. See, e.g., Merck & Co., Inc. v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“But in a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976).
Although Moore does not mention using a mixture of particles of
LiCoO2 or LiNiO2 and Li2RuO3 in forming a positive (cathode) electrode,
we concur with the Examiner that one of ordinary skill in the art, knowing
the usefulness of such particles for the same purpose, i.e., an active material
for a positive (cathode) electrode, would have been led to employ mixtures
of such particles, i.e., mixtures of LiNiO2, LiCoO2 and Li2RuO3 particles,
with a reasonable expectation of successfully forming a useful positive
(cathode) electrode. See, e.g., KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)
(“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.”); In re
Longi, 759 F.2d 887, 897 (Fed. Cir. 1985) (“[A] reasonable expectation of
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success, not absolute predictability,” supports a conclusion of obviousness.);
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima facie obvious
to combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.”)
Appellants also contend that the Rule 132 Declaration of record
executed by Arnold M. Stux on April 21, 2008 shows that the subject matter
recited in claims 1, 6, 17, and 18 imparts unexpected results, thereby
rebutting any prima facie case of obviousness established by the Examiner
(App. Br. 11-13). The Declaration states that:
The use of both particles produces properties that would
be unexpected to one of ordinary skill in the art. Tables II and
III of the present specification show that cathodes made from
LiCoO2 and Li2RuO3 can have higher specific capacities than
would be predicted from the specific capacities of the
individual components. At 2C discharging rates, the capacities
of the materials were higher than that of either of the individual
components. [(See p. 1, para. 2.)]

Thus, the second critical question is: Have Appellants demonstrated
that Tables II and III at pages 15 and 16 of the Specification referred to in
the Declaration show that the subject matter recited in claims 1, 6, 17, and
18 imparts unexpected results? On this record, we answer this question in
the negative.
It is well established that Appellants bear the burden of showing that
the claimed invention imparts unexpected results. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Such burden requires Appellants to provide a showing that is
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unexpected and is reasonably commensurate with the scope of protection
sought by the claims on appeal as indicated by the Examiner at pages 11 and
12 of the Answer. See Klosak, id. at 1080; In re Grasselli, 713 F.2d 731,743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
As correctly found by the Examiner at page 11 of the Answer, Tables
II and III do not demonstrate that the claimed subject matter imparts
unexpected superior result s over the prior art positive electrode formed of
Li2RuO3 discussed in Moore. In particular, Tables II and III show that a
positive (cathode) electrode made of a mixture of LiCoO2 and Li2RuO3
particles in the weight ratio of 87:13 included in claims 1, 6, 17, and 18 does
not have greater C/5 and 2C capacities than the positive electrode formed of
Li2RuO3 taught by Moore, but has C/5 and 2C capacities between those
formed of either LiCoO2 and Li2RuO3 taught by Moore as reasonably
expected by one of ordinary skill in the art from such mixtures. Longi, 759
F.2d at 897 (“[A] reasonable expectation of success, not absolute
predictability” supports a conclusion of obviousness.) Thus, we concur with
the Examiner that Appellants have not shown that the subject matter
encompassed by claims 1, 6, 17, and 18 imparts unexpected results over that
taught by Moore.
As correctly indicated by Appellants at pages 11-13 of the Appeal
Brief, Tables II and III also show that a positive (cathode) electrode made of
a mixture of LiCoO2 and Li2RuO3 in the weight ratio of 58:42 shows a 2C
capacity superior to that made of Li2RuO3, but a C/5 capacity inferior to that
made of Li2RuO3. However, nowhere does the Declaration or the
Specification relied upon by Appellants indicate that the improvement in a
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2C capacity is more significant or important than the improvement in a C/5
capacity. Even were we to accept that the improvement in a 2C capacity by
the positive (cathode) electrode made of a mixture of LiCoO2 and Li2RuO3
in the weight ratio of 58:42 is significant and unexpected, the fact remains
that claims 1, 6, 17, and 18 are not so limited. Claim 1 includes different
mixtures of lithium metal oxides and other materials3 in different weight
ratios than that shown, including those ratios which do not impart
unexpected results. Claim 6 also includes mixtures containing LiCoO2,
Li2RuO3 and other materials with different weight ratios than that shown,
including those weight ratios which do not impart unexpected results.
Claims 17 and 18 include a mixture of LiCoO2 and Li2RuO3 in the weight
ratios that do not show unexpected results as discussed supra. Thus, we
concur with the Examiner that Appellants have not shown that the showing
in Tables II and II is reasonably commensurate with the scope of protection
sought by the claims on appeal. As stated by our reviewing court in In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) which states:
The Board also correctly reasoned that the showing of
unexpected results is not commensurate in scope with the
degree of protection sought by the claimed subject matter
because the elemental composition of CMSX®-486 is at
or near the midpoint of the claimed range. While Harris's
evidence may show a slight improvement over some

3 The transitional term “comprising” in a claim is interpreted as permitting
the inclusion of elements and/or steps, which are not specifically claimed.
In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as one of the
monomers in the reaction is [claimed] propylene, any other monomer may
be present, because the term ‘comprises’ permits the inclusion of other steps,
elements, or materials.”)
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alloys, the record does not show that the improved
performance would result if the weight-percentages were
varied within the claimed ranges. Even assuming that the
results were unexpected, Harris needed to show results
covering the scope of the claimed range.
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103(a).

III. OBVIOUSNESS BASED ON MAYER AND MOORE
The dispositive question is: Has the Examiner reversibly erred in
determining that one of ordinary skill would have been led to employ
particles of Li2RuO3 as one of the lithium compounds in forming the cathode
electrode taught by Mayer? On this record, we answer this question in the
affirmative.
As correctly pointed out by Appellants, Mayer teaches combining
particles of lithium compounds meeting certain conditions to form a
particular cathode electrode. The lithium compounds meeting such
conditions listed by Mayer does not include Li2RuO3. Although the
Examiner relies on Moore to show that such Li2RuO3 is known to be used as
an active material for forming a cathode electrode, the Examiner has not
shown that Li2RuO3 is useful for forming the particular cathode electrode
taught or suggested by Mayer. In particular, the Examiner has not
demonstrated that Li2RuO3 particles meet the conditions required by Mayer.
The Examiner’s decision to ignore the conditions required by Mayer is a
fatal flaw in establishing a prima facie case of obviousness because
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combining the prior art references in the manner proposed by the Examiner,
without taking into consideration of the requirements of the principle
reference, Mayer, would destroy the invention on which the principle
reference is based. See Ex parte Hartman, 186 USPQ 366, 367 (BPAI
1974); see also In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (There is no
reason or suggestion to combine the prior art references if the proposed
combination would change the basic principles under which principle
reference was designed to operate).
Under these circumstances, we concur with Appellants that the
Examiner has reversibly erred in determining that one of ordinary skill
would have been led to employ particles of Li2RuO3 as one of the lithium
compounds in forming the cathode electrode taught by Mayer within the
meaning of 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner rejecting claim 18 under
35 U.S.C. §112, first paragraph, as failing to comply with the enablement
requirement is REVERSED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 1, 6, 7, and 10 through 18 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Moore is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 1, 6, 7, and 10 through 18 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Mayer and Moore is REVERSED; and
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FURTHER ORDERED that 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)(iv).
AFFIRMED

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