LG CHEM, LTD.

Patent Trials and Appeals Board

Oct 1, 2021

2020006111 (P.T.A.B. Oct. 1, 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.
15/363,767 11/29/2016 Jung Woo YOO 3881-0289PUS1 7517
2292 7590 10/01/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNG WOO YOO, JUN SOO PARK,
JI HEE YOON, and JE YOUNG KIM
Appeal 2020-006111
Application 15/363,767
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–19, which constitute all the claims

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/363,767 filed Nov. 29, 2016 (“the ’767 App.”); the Final Office Action
dated Jan. 16, 2020 (“Final Act.”); the Appeal Brief filed May 15, 2020
(“Appeal Br.”); and the Examiner’s Answer dated June 26, 2020 (“Ans.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as LG Chem, Ltd.
Appeal Br. 1.
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pending in this application. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a binder for a secondary battery having
improved properties and a negative electrode for a secondary battery. Spec.
1:10–12. The binder is said to possess an optimal composition ratio by
controlling the weight of styrene-butadiene-based rubber and acryl-based
rubber. Id. 1:13–15. Claim 1, reproduced below, illustrates the claimed
subject matter:
1. A negative electrode for a secondary battery comprising:
a negative electrode active material;
a conductor;
a binder; and
a viscosity agent,
wherein the binder includes styrene-butadiene-based
rubber to acryl-based rubber in a weight ratio of 74.2:25.8 to 8:2.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Inuzuka et al.
(“Inuzuka”)
US 6,024,773 Feb. 15, 2000
Sano et al.
(“Sano”)
US 2003/0113636 A1 June 19, 2003
Sonobe et al.
(“Sonobe”)
US 2015/0125746 A1 May 7, 2015
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REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103:
A. Claims 1–19 over Sonobe;
B. alternatively, Claims 13 and 14 over Sonobe in view of Sano;
and
C. alternatively, Claim 15 over Sonobe in view of Inuzuka.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010)
(precedential) (cited with approval in 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.”). After considering
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
A. Obviousness of Claims 1–19 over Sonobe
Appellant argues claims 1–19 as a group. See Appeal Br. 8–13. We
select claim 1 as representative of the group. Claims 2–19 stand or fall with
claim 1. 37 C.F.R. § 42.37(c)(1)(iv).
The Examiner finds that Sonobe teaches a negative electrode for a
secondary battery comprising each component recited in claim 1. Final Act.
5. The Examiner finds that Sonobe’s binder includes an amount of 0.1 to 50
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parts by mass (or weight) of acryl-based rubber (B) based on 100 parts by
mass of the styrene-butadiene-based rubber (A). Id. Using these disclosed
values, the Examiner calculates that the weight ratio of styrene-butadiene-
based rubber (A) to acryl-based rubber (B) is 6.67:3.33 to 9.99:0.01. Id.
The Examiner finds that Sonobe’s weight ratio range overlaps the
claimed weight ratio range of styrene-butadiene-based rubber to acryl-based
rubber of 74.2:25.8 (i.e., 7.42:2.58) to 8:2. Id. The Examiner determines
that “it would have been obvious to one of ordinary skill in the art at the
time of invention to have selected the overlapping portion of the [claimed]
range 7.42:2.58 to 8:2 in” Sonobe’s “range of 6.67:3.33 to 9:99:0.01”
because “because selection of [the] overlapping portion of ranges has been
held to be a prima facie case of obviousness.” Final Act. 6 (citing In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974)).
Appellant argues that the claimed weight ratio of 74.2:25.8 to 8:2
would not have been derived from the relied-upon prior art in view of
Sonobe’s “maximum limit of styrene-butadiene-based rubber to acryl-based
rubber of . . . around 66.7:33.3.” Appeal Br. 7. Appellant argues that
Sonobe also discloses narrower ranges in which the amount of acryl-based
rubber (B) is preferably from 1 to 30 parts by mass and more preferably 5 to
20 parts by mass based on 100 parts by mass of styrene-butadiene based
rubber (A). Id. Appellant contends that Sonobe exemplifies a binder which
contains 50 parts by mass of acryl-based rubber (B) based on 100 parts by
mass of styrene-butadiene rubber. Id. at 8. Appellant argues, inter alia, that
“the configuration and effect of the presently claimed invention cannot be
derived from the objective, effect, or weight ratio of styrene-butadiene-based
rubber to acryl-based rubber disclosed in Sonobe.” Id.
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Appellant’s arguments are not persuasive of reversible error by the
Examiner in rejecting claim 1 as obvious over Sonobe.
Our reviewing court recognizes that “[a] prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Malagari, 499
F.2d at 1303). The resulting presumption of obviousness “will be rebutted if
it can be shown: (1) That the prior art taught away from the claimed
invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); or (2) that
there are new and unexpected results relative to the prior art, In re Woodruff,
919 F.2d [at] 1578 . . . .” Iron Grip Barbell Co. v. USA Sports, Inc., 392
F.3d 1317, 1321 (Fed. Cir. 2004).
Sonobe discloses both broader and preferred ranges for parts by mass
of acryl-based rubber (B) based on 100 parts by mass of the styrene-
butadiene-based rubber (A). See Sonobe ¶ 76. We understand Appellant to
argue that Sonobe discloses preferable narrower ranges in a negative
electrode’s binder than those employed by the Examiner. Appeal Br. 7.
One of ordinary skill in the art reasonably would have been motivated to
look to the preferred ranges because a range described as preferred is likely
to provide the greatest expectation of success in employing the binder in a
negative electrode. However, the Examiner correctly explains that use of
Sonobe’s preferred amount 1 to 30 parts by mass of acryl-based rubber (B)
based on 100 parts by mass of styrene-butadiene based rubber (A) would
have provided a weight ratio of 100:30 to 100:1. See Ans. 4 (explaining that
“3.333 to 100 . . . also overlaps with the claimed range of 2.876 to 4,” i.e.,
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the simplified range of the claimed range 7.42:2.58 to 8:2). Thus, Sonobe’s
disclosure produces a weight ratio of styrene-butadiene-based rubber to
acryl-based rubber that overlaps the claimed values in the weight ratio of
3.333 to 4. Ans. 4. Appellant’s arguments do not negate obviousness here.
See Appeal Br. 7–8.
Appellant maintains that it discovered how to improve the electrode
adhesive strength and reduce the electrode resistance in the negative
electrode through the claimed weight ratio. Appeal Br. 8. However, “it is
not required . . . that the prior art disclose or suggest the properties newly-
discovered by an applicant in order for there to be a prima facie case of
obviousness.” In re Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) (en banc).
“From the standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381,
391 (CCPA 1963). The Examiner’s calculations using Sonobe’s preferred
values show that Sonobe’s preferred amounts overlap the claimed range in
the weight ratio of 3.333 to 4. See Ans. 4. “[M]ere recitation of a newly
discovered function or property, inherently possessed by things in the prior
art, does not distinguish a claim drawn to those things from the prior art.” In
re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Where a missing claim
limitation is the natural result of the combination of prior art elements,
inherency may supply it in an obviousness analysis. PAR Pharm., Inc. v.
TWi Pharms., Inc., 773 F.3d 1187, 1195–96 (Fed. Cir. 2014). Accordingly,
Appellant has not shown error in the Examiner’s prima facie case of
obviousness.
Therefore, we look to Appellant’s contentions regarding unexpected
results. Appellant bears the burden of proving unexpected results. In re
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Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“the burden of showing
unexpected results rests on he who asserts them”). To be probative evidence
of nonobviousness, the applicant must at least establish that (1) there
actually is a difference between the results obtained through the claimed
invention and those of the prior art, and (2) 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) (citing
Klosak, 455 F.2d 1077 and In re D’Ancicco, 439 F.2d 1244 (CCPA 1971).
In addition, unexpected results must also be “commensurate in scope with
the degree of protection sought by the claims on appeal.” In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005). An applicant must show that whatever
property it is asserting is unexpected throughout the claimed range, but not
outside that critical range. See Peterson, 315 F.3d at 1330; Harris, 409 F.3d
at 1344. Criticality of a claimed range may be shown by providing evidence
that the claimed range achieves unexpected results relative to the prior art
range. Geisler, 116 F.3d at 1470–71 (quoting Woodruff, 919 F.2d at 1578).
In the Appeal Brief, Appellant argues that “the difference in the
performance from the Examples and Comparative Example 3 (weight ratio
of 85.9:14.1) . . . rebut any hypothetical prima facie case of obviousness.”
Appeal Br. 8. Specifically, Appellant contends that Example 2, having the
lower end of the claimed weight ratio of 74.2:25.8, “exhibits that the
adhesive strength is excellent, and particularly, the resistance is low at a
preferable level.” Id. Appellant contrasts the results obtained by Example 2
with Comparative Example 3 and Example 1, each having weight ratios
falling outside of the claimed weight ratio range. Id. at 9. According to
Appellant, Comparative Example 3 “exhibits significantly reduced
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resistance properties when compared to Example 2” and Example 1
“exhibits similar adhesive strength to Example 2, but significantly reduced
resistance properties when compared to Example 2.” Id. Based on these
results, Appellant concludes that “the weight ratio (74.2:25.8 to 8:2) of the
styrene-butadiene rubber and the acryl-based rubber recited in []claim 1 . . .
simultaneously achieves the two effects” and “that such results are superior
and would have been unexpected by a person having ordinary skill in the
art.” Id. Appellant contends that “criticality is demonstrated for a claimed
range.” Id. at 10.
However, Appellant provides a single data point in support of the
claimed weight ratio 74.2:25.8 to 8:2. Appeal Br. 9; Spec. Table 2. The
data, therefore, is insufficient to establish the criticality of the lower range of
claimed weight ratio 74.2:25.8 to 8:2 for the negative electrodes tested,
much less, for the negative electrode claimed.
Moreover, Appellant provides nothing other than attorney argument to
support that superior adhesive strength and resistance are unexpected. It is
well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
On balance, a preponderance of the evidence supports the Examiner’s
conclusion of obviousness. Therefore, we sustain the Examiner’s rejection
of claim 1 as obvious over Sonobe for the reasons expressed by the
Examiner and set forth supra. For the same reasons as claim 1, we sustain
the rejection of claims 2–19. 37 C.F.R. § 42.37(c)(1)(iv).

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B. Obviousness of Claims 13 and 14 over Sonobe in view of Sano
Appellant argues that Sano fails to remedy the deficiencies of Sonobe.
Appeal Br. 11. Appellant argues that Sano fails to “teach or suggest the
superior and unexpected results achieved by the presently claimed
invention.” Id.
Having found no deficiencies in Sonobe and that Appellant has not
met its burden of proving unexpected results, Appellant’s arguments are not
persuasive for the reasons set forth supra.
C. Obviousness of Claim 15 over Sonobe in view of Inuzuka
Appellant argues that Inuzuka fails to remedy the deficiencies of
Sonobe. Appeal Br. 12. Appellant argues that Inuzuka fails to “teach or
suggest the superior and unexpected results achieved by the presently
claimed invention.” Id.
Having found no deficiencies in Sonobe and that Appellant has not
met its burden of proving unexpected results, Appellant’s arguments are not
persuasive for the reasons set forth supra.
CONCLUSION
The Examiner’s decision to reject claims 1–19 is sustained.
More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103 Sonobe 1–19
13, 14 103 Sonobe, Sano 13, 14
15 103 Sonobe, Inuzuka 15
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Overall
Outcome
1–19
TIME PERIOD FOR RESPONSE
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