FMC Corporation

Patent Trials and Appeals Board

Apr 20, 2021

2020002518 (P.T.A.B. Apr. 20, 2021)

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.
15/975,470 05/09/2018 Marina Yakovleva 073396.1111 1595
45309 7590 04/20/2021
Williams Mullen
301 Fayetteville Street
Suite 1700
Raleigh, NC 27601
EXAMINER
NGUYEN, HAIDUNG D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
04/20/2021 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):
ip@williamsmullen.com
jassenza@williamsmullen.com
khotz@williamsmullen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARINA YAKOVLEVA, YUAN GAO,
KENNETH BRIAN FITCH, PRAKASH THYAGA PALEPU,
YANGXING LI, and CHRISTOPHER JAY WOLTERMANN
Appeal 2020-002518
Application 15/975,470
Technology Center 1700

Before ADRIENE LEPIANE HANLON, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 3–5. See Final Act. 2, 3, 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “FMC Lithium USA
Corp.” Appeal Br. 3.
Appeal 2020-002518
Application 15/975,470

2
CLAIMED SUBJECT MATTER
Claim 3, reproduced below, is illustrative of the claimed subject
matter:
3. An anode comprising a host material capable of absorbing
or desorbing lithium in an electrochemical system and a
polymer-coated stabilized lithium metal powder dispersed in the
host material, wherein the stabilized lithium metal powder is
coated with a continuous polymer layer having a thickness of 25
to 200nm and the polymer is selected from the group consisting
of polyurethanes, polytetrafluoroethylene, polyvinyl fluoride,
polyvinyl chloride, polystyrenes, polyethylenes, polypropylenes,
polyformaldehyde, styrene-butadiene-styrene block polymers,
ethylene vinyl acetate, ethylene acrylic acid copolymers,
polyethylene oxide, polyimides, polythiophenes,
poly(paraphenylene), polyaniline, poly(p-phenylenevinylene),
silica titania-based copolymers, unsaturated polycarboxylic
acids and polysiloxanes.
Claims Appendix (Appeal Br. 13).
REFERENCE
The Examiner relies on the following prior art references:

Name Reference Date
Holman US 2004/0018430 A1 Jan. 29, 2004
Hong, Surface characterization of emulsified lithium powder electrode,
Science Direct, Electrochimica Acta, Vol. 50, 535–539 (2004), (accessed
Mar. 17, 2021), www.sciencedirect.com.

REJECTION
Claim 5 is rejected under 35 U.S.C. § 112(a) or pre–AIA 35 U.S.C.
§ 112, first paragraph, for failure to meet the written description
requirement. Final Act. 2.
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Application 15/975,470

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Claims 3, 5 are rejected under pre–AIA 35 U.S.C. § 103(a) as
unpatentable over Holman. Final Act. 3.
Claim 4 is rejected under pre–AIA 35 U.S.C. § 103(a) as unpatentable
over Holman and Hong. Final Act. 4.
OPINION
Written Description
Claim 5 depends from claim 3 and additionally recites “wherein the
host material is comprised of carbon.”
The Examiner rejects claim 5 for failure to meet the written
description requirement. Final Act. 3. Appellant argues that the Examiner
reversibly erred and points to paragraph 46 of the Specification as written
description support. Appeal Br. 4. Appellant specifically cites the statement
in the Specification that “[n]o adverse effects on electrochemical properties
of polymer additive to graphite electrode were observed” as support. Id.
(citing Spec. ¶ 46). Appellant additionally cites Figure 6 which
“demonstrates the effect of a polymer-coated lithium on the electrochemical
performance” (Spec. ¶ 16) and argues that “Figure 6 also states that the host
material is MCMB (mesocarbon microbeads), which is a synthetic graphite,
and one skilled in the art would readily recognize graphite or mesocarbon
microbeads are carbon.” Appeal Br. 4.
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the [claimed] invention.” Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). In this
case, the Specification fails to specifically disclose a host material comprised
of carbon as required by claim 5. Compare Appeal Br. 4, with Final Act. 2.
Appeal 2020-002518
Application 15/975,470

4
The Examiner finds that paragraph 46 of the Specification broadly discloses
an “electrode” but neither paragraph 46 nor Figure 6 specifically provides
that the graphite is included in the host material. Ans. 7. Appellant, on the
other hand, argues that the Examiner “has taken an unreasonably restrictive
view” of the issue and that a skilled artisan would understand the disclosure
to support claim 5. Reply Br. 2.
By statute, the Patent Trial and Appeal Board functions as a board of
review, not a de novo examination tribunal. 35 U.S.C. § 7(b) (“The [board]
shall . . . review adverse decisions of examiners upon applications for
patents.”). To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner’s written description
rejection. See 37 C.F.R. § 41.37(c)(1) (iv) (2012); see also In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011). In this case, we are not persuaded that
reversible error has been identified. Appellant’s argument that a skilled
artisan would understand the Specification to support carbon as the host
material as recited in claim 5 is unsupported by evidence. “Attorneys’
argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989). Given that Appellant’s argument lacks
evidentiary support, we have no reason to disturb the Examiner’s rejection.
Moreover, we note that to the extent the Specification describes the species
graphite as part of the electrode, the record before us does not show support
for the broader disclosure of the genus carbon as recited in claim 5.
We sustain the Examiner’s written description rejection of claim 5.
Obviousness (Claim 3)
The Examiner acknowledges that “Holman does not expressly
disclose that these electroactive material particles are being dispersed in a
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Application 15/975,470

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host material.” Final Act. 3. The Examiner, however, finds that the anode of
Holman “is capable of absorbing or desorbing lithium in an electric system”
and that a skilled artisan would have found it obvious to mix an electroactive
material with the graphite which is included in the anode. Id. (citing Holman
¶¶ 7, 8); see also Ans. 9 (citing the same).
Appellant argues the Examiner reversibly erred because mixing
electroactive material with graphite is “contrary to the ultimate purpose of
Holman’s teachings.” Appeal Br. 10. More specifically, Appellant argues
that paragraphs 7 and 8, cited by the Examiner for the teaching of this claim
element, describe prior art upon which Holman seeks to improve by
removing host material such as carbon from the electrode. Id. Appellant
argues that combining Holman’s improvement over what Holman describes
as prior art with such prior art having a “drawback with using carbon-based
materials as the electrically conductive material” would be contrary to the
purpose of Holman. Id. Appellant argues that Holman seeks to address the
prior art shortcomings “by designing an electrode without using a host
material such as graphite or carbon black[.]” Id. Appellant argues that
Holman’s statement that “[t]o assure sufficient levels of electronic
conductivity, the particles of electroactive material of the electrodes are
usually mixed with fine particles of an electrically conductive material such
as graphite or carbon black” (Holman ¶ 7) is no more than Holman’s
discussion of the state of art prior to Holman and does not provide the
requisite rational underpinning to combine Holman’s inventive electrode
with what Holman describes as an inferior prior art electrode. Id.
The Examiner does not respond to this argument, nor does the
Examiner refute Appellant’s assertion that Holman’s inventive electrode (as
Appeal 2020-002518
Application 15/975,470

6
opposed to the prior art electrode discussed in Holman) is free of host
material such as carbon. See, e.g., Ans. The record before us lacks a
rationale showing why a skilled artisan would have combined (1) Holman’s
inventive electrode which seeks to improve the purported drawbacks of
using carbon as host material in a prior art electrode with (2) the prior art
electrode having carbon as host material with the drawbacks as noted by
Holman. We therefore cannot sustain the rejection.
CONCLUSION
The Examiner’s written description rejection of claim 5 is affirmed.
The Examiner’s obviousness rejection of claims 3–5 is reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5 112(a) Written
Description
5
3, 5 103(a) Holman 3, 5
4 103(a) Holman, Hong 4
Overall
Outcome
5 3, 4

AFFIRMED-IN-PART