Silatronix, Inc.

Patent Trials and Appeals Board

Jan 7, 2022

2022000761 (P.T.A.B. Jan. 7, 2022)

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. 15/813,243 11/15/2017 Jose Pena Hueso 48442.058 2798 25005 7590 01/07/2022 Intellectual Property Dept. DeWitt LLP 2 East Mifflin Street Suite 600 Madison, WI 53703-2865 EXAMINER MCDERMOTT, HELEN M ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 01/07/2022 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-DOCKET@dewittllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSE PENA HUESO, DAVID OSMALOV, JIAN DONG, MONICA USREY, MICHAEL POLLINA, and ROBERT C. WEST ____________ Appeal 2022-000761 Application 15/813,243 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and JEFFREY B. ROBERTSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 31, 32, and 41-54. See Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Silatronix, Inc. as the real party in interest (Appeal Br. 2 (albeit the pages are not numbered)). Appeal 2022-000761 Application 15/813,243 2 CLAIMED SUBJECT MATTER Claim 31 illustrates the subject matter on appeal (emphasis added to highlight key disputed limitations): 31. An electrolyte composition comprising a compound having a structure as shown in Formula III: wherein R1, R2, and R3 are the same or different and are independently selected from the group consisting of C1 to C6 linear or branched alkyl and halogen, and wherein at least one of R1, R2, or R3 is halogen; “Spacer” is selected from the group consisting of C1 to C2 alkylene, alkenylene, and alkynylene; and R4 is selected from the group consisting of cyano (-CN), cyanate (-OCN), isocyanate (-NCO), thiocyanate (-SCN) and isothiocyanate (-NCS); in combination with a lithium-containing salt. (Appeal Br., Claims App. 1.) Dependent claim 32 is directed to an “electrochemical device comprising an electrolyte composition as recited in claim 31.” (Appeal Br., Claims App. 1). Appeal 2022-000761 Application 15/813,243 3 REFERENCES The Examiner relied upon the following prior art: Name Reference Date Lee US 2007/0059588 A1 Mar. 15, 2007 Zhang US 2015/0203516 A1 July 23, 2015 Toriida (as translated) JP 2000243440 A Sept. 8, 2000 REJECTIONS ON APPEAL Claims 31, 32, and 41-46 are rejected under 35 U.S.C. § 103 as unpatentable over Toriida in view of Zhang (Final Act. 3). Claims 47-54 are rejected under 35 U.S.C. § 103 as unpatentable over Toriida in view of Zhang and Lee (Final Act. 4). OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejections (see generally Ans.). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- Appeal 2022-000761 Application 15/813,243 4 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant’s main argument focuses on the belief that Zhang’s chemical structure is so distinct from that of Toriida that one of ordinary skill in the art would not have combined their teachings so as to result in the claimed compound (Appeal Br. 4-6). Appellant contends that the Examiner erred in stating that the fluorine atoms are responsible for the beneficial results of Zhang’s electrolytic compound (e.g., Appeal Br. 7-8). Appellant also contends the Examiner improperly dismissed the objective evidence in the Hueso Rule 132 Declaration filed October 17, 2019 (Appeal Br. 10). Finally, Appellant argues that Lee is non-analogous art such that the rejection of dependent claims 47-54 is improper (Appeal Br. 10-11). Some of these arguments are reiterated in the Reply Brief. Appellant’s arguments are not persuasive of reversible error as they fail to consider the applied prior art as a whole and the inferences that one of ordinary skill would have made, as aptly explained by the Examiner (Ans. 6-12). There is no dispute that but for the presence of at least one R group being a halogen, the compound of Toriida encompasses the claimed compound of claim 31 and device of claim 32. As pointed out by the Examiner, Toriida and Zhang are each directed to a silane compound having three R groups and both are useful for the same purpose in a nonaqueous electrolyte solution for lithium ion batteries (Ans. 6). Appellant does not sufficiently address the Examiner’s finding that Zhang explicitly teaches that the presence of the Si-F (halogen) bond can “improve the stability of the Appeal 2022-000761 Application 15/813,243 5 electrochemical properties” (Zhang ¶ 8; Ans. 7; Final Act. 4, 6 (citing Zhang ¶¶ 7, 8, 78)). One of ordinary skill in the art would have readily appreciated that the Si-halogen bond of Zhang may be useful for the electrolytic compound of Toriida. Appellant has not explained sufficiently why the claimed subject matter is any more than the predictable use of a known Si- halogen bond in an electrolytic silane compound as taught in Zhang in the electrolytic silane compound of Toriida to improve the stability of its electrochemical properties. Cf. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” (quoting KSR, 550 U.S. at 420)). Under the flexible inquiry set forth by the Supreme Court, the USPTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). One of ordinary skill would have readily inferred and appreciated from the applied prior art as a whole that the use of an Si-F (or Si-Cl) as exemplified in the electrolytic compound of Zhang in Toriida’s electrolytic compound would have been within the skill and creativity of one of ordinary skill in the art. Having determined that the Examiner has established a prima facie case of obviousness, the issue now turns to Appellant’s proffered evidence of unexpected results (Appeal Br. 9-10 (discussing the Hueso Decl.)). It is well settled that the burden rests with Appellant to establish (1) that the Appeal 2022-000761 Application 15/813,243 6 alleged unexpected results are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).2 The Examiner reasonably determined that the proffered evidence is not compared to the closet prior art of Toriida (Ans. 9). Furthermore, as pointed out by the Examiner, the improved properties of decreased viscosity and increased conductivity due at least in part to a Si-halogen bond is explicitly taught in Zhang (Ans. 9-10, Zhang 78). Zhang specifically teaches a stable SEI is formed similar to the results discussed in the Declaration (Ans. 10 (citing to Zhang’s Fig. 3, ¶¶ 11, 80, 81)). In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. Süd-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“evidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion”). Here, the case of obviousness is so strong that Appellant’s alleged unexpected results of improved properties is ultimately insufficient, since 2 “It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims.” In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Appeal 2022-000761 Application 15/813,243 7 the applied prior art evinces the known use of an Si-halogen bond in a silane electrolytic compound with similar properties (see also, e.g., Ans. 10, 11). Appellant’s arguments with respect to dependent claims 47-54 are unavailing for reasons set out by the Examiner (e.g., Ans. 11-12 (explaining that Lee is indeed analogous art as it is in the same field of endeavor, and one of ordinary creativity and skill would have readily appreciated the alternative use of a cyanate, isocyanate, thiocyanate, or isothiocyanate for the cyano R4 group of Toriida)). Accordingly, weighing all the evidence in this appeal, we determine that the evidence of obviousness outweighs any evidence of nonobviousness and we sustain the Examiner’s rejections on appeal. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 31, 32, 41-46 103 Toriida, Zhang 31, 32, 41-46 47-54 103 Toriida, Zhang, Lee 47-54 Overall Outcome 31, 32, 41-54 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