Ex Parte YEW et al

Patent Trial and Appeal Board

Jan 31, 2017

12881702 (P.T.A.B. Jan. 31, 2017)

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.
12/881,702 09/14/2010 Kyoung-Han YEW P59156 1562
8439 7590 02/02/2017
ROBERT E. BUSHNELL & LAW FIRM
2029 K STREET NW
SUITE 600
WASHINGTON, DC 20006-1004
EXAMINER
ALEJANDRO, RAYMOND
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
rebushnell @ aol. com
mail @ rebushnell. com
info @ rebu shnell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYOUNG-HAN YEW, SANG-MIN LEE,
YOUNG-HWAN KIM, and DUCK-CHUL HWANG
Appeal 2015-007612
Application 12/881,7021
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and
MICHAEL G. MCMANUS, 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—18 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Samsung SDI Co., Ltd. as the real party in interest.
Appeal Br. 3, Mar. 25, 2015.
2 Office Action, Oct. 24, 2014 [hereinafter Action]; Examiner’s Answer, June
17,2015 [hereinafter Answer],
Appeal 2015-007612
Application 12/881,702
BACKGROUND
Appellants’ invention relates to “a negative electrode for a
rechargeable lithium battery.” Spec. 12. Independent claim 1 is
representative:
1. A negative electrode for a rechargeable lithium
battery, comprising:
a current collector;
a negative active material composition layer disposed on
the surface of the current collector including a negative active
material; and
an inorganic salt layer disposed as a separate layer on
the surface of the negative active material composition layer
including an inorganic salt,
wherein the negative active material comprises a core
including silicon and a carbon layer disposed on the surface of
the core, and
the inorganic salt comprises an alkaline metal cation
selected from a Na cation, a K cation, or a combination thereof
and an anion selected from a carbonate anion, a halogen anion,
or a combination thereof.
Appeal Br. 17 (emphasis added). Claim 10 is also independent, and contains
similar limitations including “an inorganic salt layer disposed as a separate
layer on the surface of the negative active material composition layer,” and
“a core including silicon and a carbon layer disposed on the surface of the
core.” Id. at 18.
2
Appeal 2015-007612
Application 12/881,702
The Examiner maintains the following grounds of rejection:
1. Claims 1—18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yokouchi3 in view of either Wakita4 or Oishi.5 See Action
3-8.
2. Claims 3 and 13 are alternatively rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yokouchi in view of Wakita or Oishi, in
further view of the admitted prior art (hereinafter AAPA) in paragraphs 3—6
of the Specification. See Action 8.
In the Appeal Brief, Appellants address claim 1 in their main
arguments, see Appeal Br. 6—13, and present a separate argument jointly for
claims 3 and 13, see id. at 14. Appellants present no additional substantive
arguments for the remaining claims. See id. at 13—15. Therefore, consistent
with 37 C.F.R. § 41.37(c)(l)(iv) (2016), we limit our discussion to claims 1
and 3, and claims 2 and 4—18 stand or fall with claim 1.
3 Yokouchi, Inf 1 Patent Pub. No. WO 2008/029888 (published Mar. 13,
2008) . The Examiner cites to its English-language equivalent Patent
Application Pub. No. US 2009/0274960 A1 (published Nov. 5, 2009).
4 Wakita, Patent Application Pub. No. JP 2009-016245 (published Jan. 22,
2009) (English machine translation provided by the Examiner)
5 Oishi, Patent Application Pub. No. JP 11-144718 A (published May 28,
1999) (translation provided by the Examiner).
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Appeal 2015-007612
Application 12/881,702
DISCUSSION
Figures 6A and 6B of Yokouchi are reproduced below:
Figures 6A and 6B depict a method of manufacturing an anode active
material 10. In this embodiment, a carbon layer 3 is sandwiched between
two metallic films lf to form a metal-carbon laminate 6 on a substrate 5.
Yokouchi 1100. Yokouchi also teaches that “[t]he order in which formation
of a metallic film and formation of a carbon coat are conducted in this
embodiment is not limited,” and may include a two-layer structure in which
a carbon layer is on the top, or a three-layer structure in which the metallic
layer is sandwiched between two carbon layers. See id. 1103. The laminate
6 can be peeled off the substrate 5 and pulverized to make particles 10. See
id. 1100.
The Examiner finds that Yokouchi teaches a negative electrode
according to the limitations of claim 1, except that it “does not expressly
disclose the specific inorganic salt layer disposed on the negative active
material layer.” Action 5—6. However, the Examiner finds that Wakita
and/or Oishi teaches coating the surface of a negative active material
composition layer with an inorganic salt. See id. at 6—7.
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Appeal 2015-007612
Application 12/881,702
In particular, the Examiner finds that Wakita “discloses that the
alkaline metal salt layer on the negative active material provides a battery
capable of improving cycle characteristics with enhanced input/output
characteristics; improves intercalation/deintercalation of lithium ions at
charging and discharging; and enhances chemical stability of the anode
active material.” Id. at 6 (citing Wakita Abstract, || 126—133). The
Examiner also finds that Oishi “teaches that it is known in the art to form a
layer/film of a metal salt on the surface of an anode active material wherein
the metal salt can be either NaCl or KC1.” Id. (citing Oishi Abstract, ]f]f 5—
8). Therefore, the Examiner concludes that “it would have been obvious to a
skilled artisan at the time the invention was made to dispose, form or deposit
the specific inorganic salt layer of [Wakita and/or Oishi on] the surface of
the negative active material layer of Yokouchi.” Id.
Appellants argue that Wakita only teaches depositing an inorganic salt
on the particles used to form the negative active material composition layer,
and not on the layer itself. See Appeal Br. 8. According to Appellants, the
Examiner merely asserts “the benefits of Wakita et al.’s invention,” but
“does not explain why one of ordinary skill[] in the art would take a salt
layer that is disposed on individual anode active material particles and place
it as a separate layer on the surface of a negative active material composition
layer.” Appeal Br. 12. This argument does not persuade us that the
Examiner erred in rejecting claim 1, because Appellants do not point to
evidence disputing the Examiner’s determination, see Answer 9-10, that
even if the particles of Wakita are coated individually before formation into
a negative active material composition layer, the layer itself is still coated
with a layer of salt according to the limitations of claim 1, because some of
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Appeal 2015-007612
Application 12/881,702
the particles will form the outer surface of the aggregate layer. We interpret
claim terms according to “the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art,” and as informed by the Specification. In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). By its ordinary meaning, claim 1 does not require
either (1) that the entire surface of the negative active material composition
be coated with a single contiguous salt layer, or (2) that only the surface, and
not also the surfaces of particles within the aggregate structure, be coated
with a salt layer.
Without citing to factual evidence on this record, Appellants also
argue that if the metal salt layer is deposited directly on the particles
themselves, rather than on the layer as a whole, the metal salt “will be
separated from the negative active material due to the volume expansion of
the material,” and that because of the uneven surface of the carbon-coated
particles, “one of ordinary skill in the art would recognize it would be very
difficult to uniformly coat salts onto the individual negative active material
particles that are presently claimed.” Appeal Br. 11; see also Reply Br. 4.
Because this argument does not cite evidentiary support, we do not find it
persuasive of reversible error. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”)
Moreover, Oishi teaches that salt may be laminated over a base
consisting of a negative electrode active material. See Oishi || 5—6. Thus,
Oishi teaches an alternative method to that of Wakita for applying salt to a
negative active material that does not require the coating of individual
particles. See Action 6 (“[Oisha] teaches that it is known in the art to form a
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Appeal 2015-007612
Application 12/881,702
layer/film of a metal salt on the surface of an anode active material wherein
the metal salt can be NaCl or KC1.”).6 Appellants argue that Oishi is not an
analogous reference because it relates to a very different battery chemistry
for non-rechargeable, lithium-thionyl chloride cells, and the salt was applied
to solve a problem specific to that chemistry. See Reply Br. 2—3. However,
Oishi is a reference in the field of forming battery electrodes, and Oishi is
“reasonably pertinent to the particular problem with which the inventor is
involved,” that of applying an inorganic salt layer to a negative active
material composition layer. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004).
Appellants also argue that the two or three-layer particle structures in
Yokouchi do not constitute “a silicon core with a carbon layer disposed on
the surface of the core as presently claimed.” Appeal Br. 8. We find this
unpersuasive, because Yokouchi clearly teaches an embodiment in which a
silicon layer is sandwiched on both sides by carbon layers. See Yokouchi
1103. According to the broadest reasonable interpretation of claim 1, the
silicon core is not required to be entirely enveloped by a carbon layer, so
long as a carbon layer is disposed on at least a portion of the surface of the
core.
Appellants also argue that the Specification demonstrates that claim 1
unexpectedly results in “superior initial efficiency, stable high temperature
performance and improved cycle life.” Appeal Br. 13; see also Spec. Tbls.
6 Because we affirm the Examiner’s rejection based on either the
combination of Yokouchi and Wakita or the combination of Yakouchi,
Wakita, and Oishi, we need not address Appellants’ arguments regarding the
Examiner’s alternative basis of rejection based solely on the combination of
Yokouchi and Oishi.
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Application 12/881,702
1—3. However, the preponderance of the evidence does not support a finding
that these results are unexpected. To show unexpected results, Appellants
must establish “(1) that there actually is a difference between the results
obtained through the claimed invention and those of the prior art, . . . and (2)
that the difference actually obtained would not have been expected by one
skilled in the art at the time of invention.” In re Freeman, 474 F.2d 1318,
1324 (CCPA 1973) (citation omitted). While Tables 1—3 of the Specification
show differences between using example salts within the scope of claim 1
and using either no salt or two lithium salts, Appellants do not direct our
attention to evidence that a person of ordinary skill in the art would not have
expected these results. Moreover, Examples 1—6 appear to represent
negative electrodes formed by the same method, except for the use of a
different salt. See Spec. 73—88. Thus, the evidence does not address the
effect on these results of other variables within the full scope of claim 1,
such as variations in particle composition and size, and the amount of
inorganic salt used. See Appeal Br. 17—20 (dependent claims cover
variations in core composition, carbon type and amount, layer and particle
size, etc.). Evidence of unexpected results must be commensurate in scope
with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir.
2003).
Claim 3 requires that “the carbon layer comprises an amorphous
carbon.” The Examiner finds that “Yokouchi discloses that it is known to
use an amorphous carbon.” Action 5 (citing Yokouchi || 77, 134).
Alternatively, the Examiner finds that “the AAPA discloses that it is known
in the battery art to use carbon-based materials such as a hard carbon (an
example of amorphous carbon) in the negative active electrode to enhance
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Appeal 2015-007612
Application 12/881,702
conductivity and discharge potential.” Id. at 8. Thus, the Examiner
concludes that
it would have been obvious to a skilled artisan at the time the
invention was made to use the specific amorphous carbon mate­
rial (i.e. hard carbon) of the AAPA as the amorphous carbon ma­
terial in the negative electrode of Yokouchi, [Wakita] and/or [Oi-
shi], as instantly combined, because the AAPA teaches that it is
commonplace to use carbon based materials such as a hard car­
bon (an example of amorphous carbon) in the negative active
electrode to enhance conductivity and discharge potential.
Id.
In response to the Examiner’s determination based on the AAPA,
Appellants argue that
[t]he mere mention of an amorphous carbon as a stand-alone neg­
ative active material in paragraph [0005] of the background of
the invention of the specification, does not establish that the in­
vention of claim 3, which includes a negative active material
comprising a core including silicon and an amorphous carbon
layer disposed on the surface of the core, used in conjunction
with an inorganic salt layer disposed on the surface of a negative
active material composition layer is obvious over the prior art.
Appeal Br. 14. We do not find this argument persuasive of reversible error,
because it does not address the Examiner’s finding that Yokouchi teaches
amorphous carbon, and it mischaracterizes the Examiner’s findings
regarding the AAPA, which include a rationale for combining the AAPA
with the teachings of Yokouchi and Wakita.
For the above reasons, we are not persuaded that the Examiner
reversibly erred in rejecting claims 1 and 3. Likewise, we are not persuaded
of reversible error in the Examiner’s rejection of claims 2 and 4—18.
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Appeal 2015-007612
Application 12/881,702
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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