Ex Parte Venkatachalam et al

Patent Trial and Appeal Board

Feb 27, 2018

13755263 (P.T.A.B. Feb. 27, 2018)

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.
13/755,263 01/31/2013 Subramanian Venkatachalam 5024.05US02 2091
62274 7590 02/27/2018
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
33 South Sixth Street
Suite 3950
Minneapolis, MN 55402
EXAMINER
BUCHANAN, JACOB
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
02/27/2018 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 SUBRAMANIAN VENKATACHALAM, HERMAN LOPEZ, and
SUJEET KUMAR
(Applicant: ENVIA SYSTEMS INC.)1
____________

Appeal 2016-002835
Application 13/755,263
Technology Center 1700
____________

Before MARK NAGUMO, MONTÉ T. SQUIRE, and LILAN REN,
Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.
DECISION ON REHEARING
Appellant requests rehearing under 37 C.F.R. § 41.52 of a DECISION
ON APPEAL docketed October 30, 2017 (“Decision”), wherein we affirmed
the Examiner’s § 103 rejections of all appealed claims. Request for
Rehearing filed December 28, 2017 (“Request”).
We have thoroughly reviewed the arguments set forth by Appellant in
the Request, and we have reconsidered our Decision in light of those
comments. We, however, are not persuaded of reversible error in the
disposition of the rejections and decline to modify the Decision.

1 Appellant is the Applicant, Envia Systems Inc., which, according to the
Appeal Brief (“App. Br.”), is the real party in interest. App. Br. 3.
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2
Appellant argues that the Decision should be modified because the
Board misapprehended/overlooked issues related to the Examiner’s
rejection. Request 3. Appellant argues that the Board’s finding regarding
the combination of elements in the prior art is based on the “inappropriate
use of hindsight analysis” and the Board considered the Matsumoto
reference “out of context and not in view of the remaining references.” Id.
at 3, 4.
In particular, Appellant contends that Matsumoto is the least relevant
reference of the three combined references (Request 4); none of the
references alone or combined teach or suggest drying of any lithium metal
hydroxide under an oxygen free atmosphere (id. at 5); and Lee teaches away
from performing the drying in an oxygen free atmosphere (id. at 6), as
required by the claims. Appellant also contends that combining the
teachings of Matsumoto and Lee, as found by the Examiner, would render
Lee’s method unsuitable for its intended purpose. Id. at 6.
We do not find Appellant’s arguments in this regard persuasive of
reversible error because they are largely the same arguments Appellant made
previously in the Appeal Brief and/or Reply Brief, which we considered in
the course of rendering the Decision. Compare App. Br. 13 with Request 5
(arguing none of the references teach/suggest drying lithium metal
hydroxide under an oxygen free atmosphere); compare Reply Br. 4 with
Request 6 (arguing that Lee teaches away).
Contrary to what Appellant’s argument suggests, the fact that in a
prior art combination one reference may be more or less relevant than
another reference with respect to certain claim elements does not negate the
Examiner’s findings regarding the combined teachings of the references and
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what the combined teachings of the references would have suggested to one
of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness . . . is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); cf.
also In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979) (“[A] reference must
be considered not only for what it expressly teaches, but also for what it
fairly suggests.”).
Appellant’s disagreement with the Examiner’s factual findings
regarding the teachings of the prior art and contention that the Lee reference
is a more relevant reference than the Matsumoto reference, without more,
are insufficient to establish reversible error. See SmithKline Beecham Corp.
v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements
of disagreement . . . as to the existence of factual disputes do not amount to a
developed argument.”).
Moreover, the fact that Lee discusses an experiment where certain
“(Ni1/3Co1/3Mn1/3)(OH)2 powders” were dried at 110°C in air (Lee 941) does
not necessarily teach away from drying in an oxygen free atmosphere in the
manner claimed. See In re Fulton, 391 F.3d 1195, 1201 (finding that there is
no teaching away where the prior art’s disclosure “does not criticize,
discredit, or otherwise discourage the solution claimed”).
Although Lee may describe certain powders being dried at 110°C in
air, as the Examiner finds (Ans. 2–3), the reference also discloses that the
lithium metal oxide powder can be made by using a co-precipitation process
that occurs “under nitrogen atmosphere” (Lee 940) and an “inert atmosphere
during co-precipitation” plays an important role to decide the purity of the
metal hydroxide (id. at 941).
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Appellant’s argument is also misplaced because, as previously
discussed in the Decision (Decision 7), the Examiner relies on Matsumoto––
and not Lee––for disclosing the claim step of drying the mixed metal
hydroxide composition in an oxygen free atmosphere to form a dry mixed
metal hydroxide composition. In particular, as the Examiner finds (Ans. 4),
Matsumoto discloses a lithium battery material formed by co-precipitation of
a lithium metal oxide and that the resulting precipitate is dried at 140°C in
argon (an oxygen free atmosphere) before it is mixed with a lithium source
and subsequently heat treated. Matsumoto ¶ 2, ll. 11–17, ¶ 3, ll. 3, 35–41.
Moreover, Appellant does not direct us to sufficient evidence or
provide an adequate technical explanation explaining how the combined
teachings of Matsumoto and Lee would render Lee’s method unsuitable for
its intended purpose. Attorney argument is not evidence. In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant further argues that the Decision is not based on a proper
obviousness analysis under the law (Request 7); the Examiner provides no
motivation for combining the references in the manner claimed (id. at 10);
and the “motivation cited by the Examiner for combining elements from the
references . . . is pulled out of thin air” (id. at 11).
These arguments are not persuasive of reversible error because they
are, again, essentially the same arguments Appellant made in the Appeal
Brief, which were considered in the course of rendering the Decision.
Compare App. Br. 11–13 with Request 10–11 (arguing there is no
motivation to combine the references).
As previously stated in the Decision (Decision 7–8) and contrary to
what Appellant argues, we find that the Examiner does provide a reasonable
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basis and identifies a preponderance of the evidence in the record to evince
why one of ordinary skill would have combined the teachings of the
references to arrive at Appellant’s claimed invention. Ans. 3–4; Final Act.
4.
The fact that Appellant disagrees with the Examiner’s reasons for
combining the references, without more, is insufficient to rebut the
Examiner’s findings or otherwise establish reversible error. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Appellant also argues that the Decision improperly shifts the burden
of proof to the Appellant, i.e., it requires Appellant to prove that the claimed
invention is nonobvious. Request 14.
We do not find this argument persuasive because the Decision does
not shift the burden of proof of nonobviousness to Appellant. Rather, in
conformity with long-standing appellate practice, Appellant does bear the
burden of identifying harmful error in the decision below, or in our previous
decision. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner's rejections.” (citing Ex Parte Frye, 94 USPQ2d 1072
(BPAI 2010) (precedential)).
As previously discussed at pages 6–9 of the Decision, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s fact finding and determination that the combination of Kang,
Lee, and Matsumoto suggests all of the steps of claim 1 and conclusion that
the combination would have rendered the claimed method obvious. Kang,
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Abstract, ¶ 25; Lee, Abstract, 939–940; Matsumoto ¶ 2, ll. 11–17, ¶ 3, ll. 3,
35–41.
We find further (Decision 7–8) that the Examiner provides articulated
reasoning with rational underpinning for combining the teachings of the
cited art to arrive at the claimed invention, and thus, establishes a prima
facie case of obviousness. See In re Huang, 100 F.3d 135, 139 (Fed. Cir.
1996) (“Once a prima facie case of obviousness has been established, the
burden shifts to the applicant to come forward with evidence of
nonobviousness to overcome the prima facie case.”).
Appellant argues that, with respect to the patentability of claim 12, the
Board misapprehended/overlooked Appellant’s arguments regarding
unexpected results and improperly imposed the burden of persuasion on
Appellant. Request 18–19. Appellant further argues that, with respect to the
patentability of claims 17–20, the Board improperly applied the law on
inherency. Id. at 21.
We do not find Appellant’s arguments in this regard persuasive of
reversible error because, once more, they are essentially the same arguments
Appellant made previously in the Appeal Brief and/or Reply Brief, which
were considered in the course of rendering the Decision. Compare App. Br.
16–20 with Request 17–22; compare Reply Br. 8–10 with Request 17–22.
Accordingly, for principally the same the reasons previously
discussed in our Decision, we continue to agree with the Examiner that the
combinations of prior art references would have suggested all of the
limitations of the claims and maintain our finding that the Examiner
provides a reasonable basis and identifies sufficient evidence in the record to
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evince why one of ordinary skill would have been motivated to combine the
teachings of the references to arrive at Appellant’s claimed invention.
Appellant’s Request does not reveal any factual findings regarding the
prior art’s teachings and the claimed invention which we have
misapprehended or overlooked or that otherwise establishes reversible error
in this regard.
Accordingly, we have considered the request, but decline to modify
our Decision affirming the Examiner’s § 103 rejections of the appealed
claims. Hence, we deny Appellant’s Request for Rehearing.

DENIED