Ex Parte Yushin et alDownload PDFPatent Trial and Appeal BoardNov 28, 201714150374 (P.T.A.B. Nov. 28, 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. 14/150,374 01/08/2014 Gleb YUSHIN SN-0004B1D1 6878 103365 7590 11/30/2017 MUNCY, GEISSLER, OLDS & LOWE, P.C 4000 LEGATO ROAD SUITE 310 FAIRFAX, VA 22033 EXAMINER MOHADDES, LAD AN ART UNIT PAPER NUMBER 1726 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): meo.docket@mg-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GLEB YUSHIN, IGOR LUZINOV, BOGDAN ZDYRKO, OLEKSANDR MAGAZYNSKYY, and IGOR KOVALENKO Appeal 2017-002412 Application 14/150,3741 Technology Center 1700 Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’ rejections adverse to the patentability of claims 1—8, 10, and 11. We have jurisdiction under 35 U.S.C. § 6. We reverse. 1 GEORGIA TECH RESEARCH CORPORATION and CLEMSON UNIVERSITY are stated to be the real parties in interest. App. Br. 3. Appeal 2017-002412 Application 14/150,374 BACKGROUND Sole independent claim 1 is illustrative of the subject matter on appeal: 1. A battery electrode comprising: a conductive metal substrate; and an electrode active material comprising active particles, wherein each of the active particles is a silicon-carbon composite in the form of silicon-coated carbon, wherein (i) the silicon comprises sp3 bonded silicon atoms and (ii) the carbon comprises sp2 bonded carbon atoms, dispersed in a binder coupled to the conductive metal substrate, wherein the binder comprises an alginate material, wherein the electrode active material is substantially homogenously dispersed in the alginate material, and wherein the active particles comprise about 50 weight percent to about 95 weight percent silicon and about 5 weight percent to about 50 weight percent carbon. App. Br. 12 (emphasis added). Welsch Idota Pan Kobayashi REFERENCES US 6,226,173 B1 US 6,235,427 B1 US 2011/0123866 A1 US 2012/0156562 A1 May 1,2001 May 22, 2001 May 26, 2011 June 21, 2012 Cui, Carbon—Silicon Core—Shell Nanowires as High Capacity Electrode for Lithium Ion Batteries, 9 Nano Letters, 3370—3374 (2009). REJECTIONS ON APPEAL The Examiner rejects the claims as follows: I. Claims 1, 2, 10 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pan in view of Cui. II. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Pan in view of Cui and Welsch. 2 Appeal 2017-002412 Application 14/150,374 III. Claims 4—7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pan in view of Cui and Idota. IV. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Pan in view of Cui and Kobayashi. STATEMENT OF THE CASE The Examiner finds that Pan discloses battery electrodes containing, inter alia, carbon coated silicon as an active material and alginate as a binder. Final Act. 4. The Examiner thus determines that Pan discloses the claimed battery electrode except for the limitation requiring the “electrode active material” to be “active particles, wherein each of the active particles is a silicon-carbon composite in the form of silicon-coated carbon,” and relies on Cui’s disclosure to remedy this deficiency. Id. The Examiner concludes that it would have been obvious to use Cui’s silicon coated carbon nanotubes in Pan’s electrode in view of Cui’s disclosure that such nanotubes have “high charge storage capacity and good cycling life.” Id. Appellants contend that the Examiner’s obviousness conclusion is erroneous because the skilled artisan would have had no reasonable expectation of successfully 1) adding Cui’s silicon coated carbon nanotubes to Pan’s list of 18 active materials, 2) selecting such silicon coated carbon nanotubes from the list of 19 different active materials, 3) determining the silicon coated carbon nanotubes should be mixed with a binder, 4) selecting alginate from Pan’s listing of 68 different binders, and 5) combining the recited active material and binder to arrive at the claimed subject matter. App. Br. 4-8. In response, the Examiner disagrees and notes that the skilled artisan “would have noted that the listed binders [in Pan] including alginate binder 3 Appeal 2017-002412 Application 14/150,374 function well in binding silicon and carbon active materials together and to the metal current collector,” and “both silicon and carbon surfaces bind well using these binders and the combination would not affect the binding properties as silicon and alginate binding is taught by [Pan].” Ans. 5—6 (emphasis added). Appellants dispute the Examiner’s characterization of Pan’s teaching. Reply Br. 2-A. OPINION Appellants persuade us that the Examiner reversibly erred in concluding claim 1 is unpatentable under 35 U.S.C. § 103(a). Thus, we need only focus on independent claim 1. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). [A] patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art. Although common sense directs caution as to a patent application claiming as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does. Inventions usually rely upon building blocks long since uncovered, and claimed discoveries almost necessarily will be combinations of what, in some sense, is already known. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). “An obviousness determination requires that a skilled artisan would have perceived a reasonable expectation of success in making the invention in light of the prior art.” Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 4 Appeal 2017-002412 Application 14/150,374 1340, 1362 (Fed. Cir. 2009) (citing In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)). To be sure, ‘to have a reasonable expectation of success, one must be motivated to do more than merely [] vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful.’ Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Such is the case here. The Examiner establishes that the claimed elements were independently known in the prior art, but fails to convincingly explain why the skilled artisan would have been motivated to select the silicon coated carbon of Cui and the alginate binder of Pan from the myriad of disclosed active ingredients and binders to arrive at the claimed invention. As correctly observed by Appellants (App. Br. 7), the Examiner has not demonstrated where the prior art relied upon provides any guidance or direction to the skilled artisan regarding which binders and active materials, of the possible approximately 1300 combinations, “is likely to be successful.” Pfizer v. Apotex, 480 F.3d at 1365. We specifically observe that the Examiner’s rationale for making the proffered combination, i.e., “high charge storage capacity and cycling life” (Final Act. 4), seems at odds with Cui’s teaching and that of Idota. As correctly noted by Appellants (App. Br. 6, 7), Cui specifically teaches that “no binding or conductive additives are needed” when using silicon coated carbon nano fibers. Cui, p. 3371, col. 1. Idota teaches that using too much binder may result “in reduction of capacity per unit volume or weight of the 5 Appeal 2017-002412 Application 14/150,374 electrode.” Idota 11:26—29. Because Cui teaches that silicon coated carbon can be successfully employed as an active material without a binder, we determine that the skilled artisan would not have been motivated to add a binder to silicon coated carbon, much less specifically select the alginate binder from amongst the myriad of binders disclosed in Pan, because the unnecessary addition of a binder could negatively impact storage capacity. We furthermore agree with Appellants (Reply Br. 3 4) that the Examiner has failed to establish how alginate would be expected to “function well in binding silicon and carbon active materials” and that the binders of Pan “bind well” to both silicon and carbon surfaces. Ans. 5—6. Particularly conspicuous by its absence is the Examiner’s citation to a specific portion of Pan or other evidence that establishes the binding properties of alginate with silicon and/or carbon. Thus, on this record, we determine that the Examiner has not demonstrated that the skilled artisan would have had a reasonable expectation of successfully combining silicon coated carbon and alginate binder in the manner claimed. Without a reasonable expectation of success, the recited combination is not prima facie obvious. Amgen, 580 F.3d at 1362. We are, therefore, constrained to reverse the rejections. SUMMARY The decision of the Examiner is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation