Stuart D. Hellring et al.

Patent Trials and Appeals Board

Oct 2, 2019

14242162 - (D) (P.T.A.B. Oct. 2, 2019)

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.
14/242,162 04/01/2014 Stuart D. Hellring 11008180A1 8284
24959 7590 10/02/2019
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
WEI, ZHONGQING
ART UNIT PAPER NUMBER
1727
MAIL DATE DELIVERY MODE
10/02/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________
Ex parte STUART D. HELLRING,
RANDY E. DAUGHENBAUGH, SHANTI SWARUP,
and ELLOR JAMES VAN BUSKIRK
______________
Appeal 2018-007199
Application 14/242,162
Technology Center 1700
______________
Before GEORGE C. BEST, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 6, 8, 10–19, 23, 25, 27–31, and
37–43 of Application 14/242,162. Final Act. (September 20, 2017). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies PPG Industries Ohio, Inc., as the real
party in interest. Appeal Br. 2.
Appeal 2018-007199
Application 14/242,162
2
BACKGROUND
The ’162 Application describes compositions for manufacturing
electrodes for use in an electrical storage device, such as a battery. Spec. ¶ 1.
The compositions contain polyvinylidene fluoride (PVDF) polymers, a
binder, water, and one or more electrode-forming materials. Id. The
Specification explains that
[p]olyvinylidene fluoride, because of its excellent
electrochemical resistance, has been found to be a useful
binder for forming electrodes to be used in electrical
storage devices. Typically, the polyvinylidene is
dissolved in an organic solvent and the electrode
material, that is the electrically active lithium compound
and a carbonaceous material, is combined with the PVDF
solution to form a slurry that is applied to a metal foil or
mesh to form the electrode.
Id. ¶ 3.
A commonly used solvent for dissolving the PVDF is N-methyl-2-
pyrrolidone (NMP). Id. ¶ 4. NMP, however, is toxic and creates health and
environmental issues. Id. ¶ 5.
The Specification describes an alternative solvent for PVDF that may
be used to produce high quality electrodes for batteries and other electrical
storage devices. Id. ¶ 9. The alternative solvent system comprises an
aqueous medium with a (meth)acrylic polymer dispersant. Id.
Claim 1 is representative of the ’162 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. An electrode binder of a lithium ion secondary battery
comprising an aqueous dispersion of:
(a) a polyvinylidene fluoride polymer and
(b) a (meth)acrylic polymer dispersant;
Appeal 2018-007199
Application 14/242,162
3
wherein the (meth)acrylic polymer dispersant is prepared from
a mixture of monomers comprising one or more carboxylic acid
group-containing (meth)acrylic monomers and one or more
hydroxyl group-containing (meth)acrylic monomers, wherein
carboxylic acid groups on the (meth)acrylic polymer dispersant
are at least partially neutralized with a base and wherein
(i) the mixture of monomers contains a monomer that
contains reactive groups that are reactive with the carboxylic
acid and/or the hydroxyl groups or are reactive with
themselves; and/or
(ii) the electrode binder further comprises a cross-
linking agent reactive with carboxylic acid groups.
Appeal Br. 22.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 8, and 10–12 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Mogi,2 Maeda,3 Amin-
Sanayei,4 and Swarup.5 Final Act. 2.

2 WO 2012/039366 A1, published March 29, 2012. We cite EP 2621005 A1
as the English-language equivalent. We note that the Examiner and
Appellant refer to this reference as Takeshi, which is the given name of the
first-named inventor. We, however, will follow our normal practice of
referring to references by the surname of the first-named inventor.
3 US 6,652,773 B2, issued November 25, 2003.
4 US 2010/0304270 A1, published December 2, 2010.
5 US 2003/0204013 A1, published October 30, 2003.
Appeal 2018-007199
Application 14/242,162
4
2. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Mogi, Maeda, Amin-Sanayei, Swarup, and
Sekmakas.6 Final Act. 6.
3. Claims 13–16, 18, 19, 23, 25, and 27–29 are rejected under 35
U.S.C. § 103 as unpatentable over the combination of Mogi,
Maeda, Amin-Sanayei, Swarup, and Sekmakas. Final Act. 7.
4. Claims 17 and 43 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Mogi, Maeda, Amin-
Sanayei, Sekmakas, and Ruka.7 Final Act. 12.
5. Claims 30, 31, and 37–42 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Mogi, Maeda, Amin-
Sanayei, and Sekmakas. Final Act. 13.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, 8, and 10–12 as
unpatentable over the combination of Mogi, Maeda, Amin-Sanayei, and
Swarup. Final Act. 2–6.
Appellant argues for reversal of this rejection with respect to two
groups of claims: (1) claims 1, 2, and 10–12 and (2) claim 8. We address
these two groups of claims below. Appeal Br. 6–14.
Claims 1, 2, and 10–12. We select claim 1 as representative of this
group of claims and limit our discussion accordingly. 37 C.F.R.
§ 41.37(c)(1)(iv).

6 US 4,022,737, issued May 10, 1977.
7 US 6,248,468 B1, issued June 19, 2001.
Appeal 2018-007199
Application 14/242,162
5
In rejecting claim 1, the Examiner found that Mogi does not describe
or suggest the claimed (meth)acrylic polymer dispersant. Final Act. 3. In
particular, the Examiner found that Mogi’s (meth)acrylic polymer is not
prepared from a mixture of monomers that includes “one or more hydroxyl
group–containing (meth)acrylic monomers” as recited in claim 1. Id. The
Examiner further found that Mogi describes the use of alkyl ester
(meth)acrylic acid monomers—e.g., propyl(meth)acrylate—in the
preparation of its polymer. Id. (citing Mogi ¶ 33). According to the
Examiner, these alkyl ester (meth)acrylic acid monomers are equivalent to
the claimed hydroxyl group-containing monomers. Id. (citing Maeda 4:11–
24; 6:60–64).
Appellant argues that the Examiner’s finding of equivalence is
erroneous. Appeal Br. 7–9. Appellant argues that Mogi requires that its
polymer have particular properties: (1) a highest occupied molecular orbital
(“HOMO”) value calculated by a semi-empirical molecular orbital method
of -10 eV or less; (2) a difference between the lowest unoccupied molecular
orbital (“LUMO”) value calculated by the semi-empirical molecular orbital
method and its HOMO value (the “HOMO-LUMO gap”) of at least 10.5 eV;
and (3) a fluorine atom content of 2–30 mass %. Id. at 7–8. Appellant argues
that hydroxypropyl methacrylate has a HOMO-LUMO gap of less than 10.5
eV. Id. at 8. According to Appellant, this fact means that a person having
ordinary skill in the art would not regard hydroxypropyl methacrylate as
equivalent to Mogi’s alkyl ester monomers of (meth)acrylic acid because
[u]sing a hydroxyl functional monomer as suggested by
the Examiner in amounts recommended by the reference
will likely yield a polymer outside the HOMO/LUMO
guideline taught by the [Mogi] reference. Therefore, one
skilled in the art would not be led to use a hydroxyl
Appeal 2018-007199
Application 14/242,162
6
functional monomer due to the possibility of failure of
compliance with the stringent HOMO and LUMO
requirements outlined by the [Mogi] reference in order to
meet the objects of the [Mogi] invention . . . .
Id. (emphasis omitted).
According to Appellant, a person of ordinary skill in the art at the time
of the invention would have been very reluctant to make changes to the
polymer composition described in Mogi because Mogi teaches that
a very specific polymer composition is required to attain
the desired properties of the [Mogi] binder for electrodes.
As noted in [Mogi] paragraph [0010], an electrochemical
device obtained from the [Mogi] binder composition for
electrodes can retain binding capacity and adhesion even
in a high-temperature environment, and its self-discharge
in a high-temperature environment is highly suppressed.
Id. at 9 (emphasis omitted).
Although Appellant’s argument seems attractive, ultimately, it is not
persuasive. This is because the argument is based upon factual assertions
that are not supported in the record. In particular, Appellant’s argument rests
upon the energy levels of the HOMO and LUMO of hydroxypropyl
methacrylic acid. See id. at 7–9. Appellant, however, does not provide a
citation to the record to support the values set forth in the Appeal Brief. 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).
Moreover, Appellant’s argument is speculative. Appellant argues that
using a hydroxyl functional monomer in the amounts recommended by Mogi
“will likely” result in a polymer that does not meet Mogi’s HOMO/LUMO
criteria. Appeal Br. 8. Once again, this is attorney argument not supported
by factual evidence. The argument, therefore, is unpersuasive. See In re
Appeal 2018-007199
Application 14/242,162
7
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems
to follow from common experience is just attorney argument and not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness.”).
Appellant next argues that the Examiner erred by not adequately
explaining the reason a person of ordinary skill in the art would have
combined the teachings of Mogi and Amin-Sanayei. Appeal Br. 9
(discussing Final Act. 4). This argument is not persuasive. As the Examiner
found, a person of ordinary skill in the art would have partially neutralized
the acid groups in order to maintain the effectiveness of the polymers as
thickeners. Final Act. 4 (citing Amin-Sanayei ¶¶ 58, 65); Answer 8–9.
Appellant also argues that claim 1 is drawn to an electrode binder of a
lithium ion battery comprising two distinct components: (1) a polyvinylidene
fluoride polymer and (2) a (meth)acrylic polymer dispersant. Appeal Br. 9–
10. According to Appellant, Mogi describes a binder composition for
electrodes which contains a single polymer component and an aqueous
medium. Id. at 10–11. This argument is not persuasive for the reasons set
forth by the Examiner at pages 9–13 of the Answer, which we adopt as our
own.
For the reasons set forth above, we affirm the rejection of claims 1, 2,
and 10–12.
Claim 8. Appellant presents an additional argument for reversal of the
rejection of claim 8. See Appeal Br. 12–14.
For ease of reference, we reproduce claim 8 below.
8. The electrode binder of claim 1 in which the mixture of
monomers contains N-alkoxymethyl (meth)acrylamide and/or
blocked isocyanatoethyl (meth)acrylate.
Appeal 2018-007199
Application 14/242,162
8
Id. at 23 (emphasis added).
In rejecting claim 8, the Examiner found that Mogi describes the use
of acrylamide such as N-methylolacrylamide as a monomer in the
polymerization described in Mogi. See Final Act. 4. The Examiner also
found that Swarup discloses that N-methylol(meth)acrylamide—which is a
homolog of N-methylolacrylamide and has similar properties thereto—and
N-alkoxymethyl(meth)acrylamides have similar properties and function
equivalently as cross-linking monomers in the polymerization. Id. (citing
Swarup ¶ 43). The Examiner further found that it would have been obvious
to one of ordinary skill in the art at the time of the invention to have
modified the combined [Mogi] by substituting N-
alkoxymethyl(meth)acrylamide for N-methylolacrylamide because the
substitution of a known equivalent for the same purpose is prima facie
obvious. Id.
Appellant argues that the Examiner erred in concluding that the
teachings of the prior art taken as a whole would have made obvious the
subject matter of claim 8. Appeal Br. 12–14. In particular, Appellant argues
that while Swarup describes N-methylol(meth)acrylamide and N-
alkoxymethyl(meth)acrylamides as equivalent for preparing a latex emulsion
for use in an automotive coating, this does not establish the equivalence of
these monomers for use in preparing a binder composition for battery
electrodes as described in Mogi. Id. at 13–14.
This argument is not persuasive. Although the end use of the polymers
in Swarup and Mogi are different, the N-methylol(meth)acrylamide and N-
alkoxymethyl(meth)acrylamides serve the same purpose in the
polymerization reactions described in these references.
Appeal 2018-007199
Application 14/242,162
9
We, therefore, discern no error in the Examiner’s finding that they are
equivalent for the purposes of establishing a prima facie case of
obviousness.
Appellant also argues that a person of ordinary skill in the art would
not have made the substitution proposed by the Examiner because “one
would want to avoid altering the HOMO and LUMO values which are
critical to the [Mogi] binder performance.” Appeal Br. 13.
This argument is not persuasive because it is not supported by any
evidence of record. Appellant does not point to any data suggesting that the
HOMO and LUMO values of the various compounds are such that they
would give any concern to a person of ordinary skill in the art with respect to
Mogi’s description of the desired HOMO and LUMO values of the polymers
used to create its electrode binder.
In view of the foregoing, we affirm the rejection of claim 8 as
unpatentable over the combination of Mogi, Maeda, Amin-Sanayei, and
Swarup.
Rejection 2. The Examiner rejected claims 5 and 6 under 35 U.S.C.
§ 103 as unpatentable over the combination of Mogi, Maeda, Amin-Sanayei,
Swarup, and Sekmakas. Final Act. 6–7.
Appellant argues that Sekmakas does not cure the alleged deficiencies
in the rejection of claim 1. Appeal Br. 14–15.
As discussed above, we have not been persuaded by Appellant that the
rejection of claim 1 was erroneous. We, therefore, also affirm the rejection
of claims 5 and 6.
Rejection 3. The Examiner rejected claims 13–16, 18, 19, 23, 25, and
27–29 as unpatentable over the combination of Mogi, Maeda, Amin-
Sanayei, Swarup, and Sekmakas. Appeal Br. 7–12.
Appeal 2018-007199
Application 14/242,162
10
Appellant argues that the rejection of these claims should be reversed
for the same reasons set forth with respect to the reversal of the rejection of
claims 1, 2, 5, 6, 8, and 10–12.
As discussed above, we have not discerned reversible error in the
rejection of those claims. Accordingly we also affirm the rejection of claims
13–16, 18, 19, 23, 25, and 27–29.
Rejection 4. The Examiner rejected claims 17 and 43 as unpatentable
over the combination of Mogi, Maeda, Amin-Sanayei, Sekmakas, and Ruka.
Final Act. 12–13.
Appellant argues that this rejection should be reversed for the same
reasons advanced for reversal of the rejection of claims 1, 2, 5, 6, 8, and 10–
12. Appeal Br. 18.
As discussed above, we do not discern reversible error in the rejection
of claim 1. Accordingly we also affirm the rejection of claims 17 and 43.
Rejection 5. The Examiner rejected claims 30, 31, and 37–42 as
unpatentable over the combination of Mogi, Maeda, Amin-Sanayei, and
Sekmakas. Final Act. 13–15.
Appellant argues that this rejection should be reversed for the same
reasons the rejection of claim 1 should have been reversed. Appeal Br. 20.
As discussed above, we do not discern reversible error in the rejection
of claim 1. Accordingly we also affirm the rejection of claims 17 and 43.
CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
1, 2, 8, 10–12 103 Mogi, Maeda, Amin-Sanayei, Swarup 1, 2, 8, 10–12
5, 6 103 Mogi, Maeda, Amin-Sanayei, Swarup, Sekmakas 5, 6
Appeal 2018-007199
Application 14/242,162
11
Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
13–16, 18, 19, 23,
25, 27–29 103
Mogi, Maeda, Amin-Sanayei,
Swarup, Sekmakas
13–16, 18,
19, 23, 25,
27–29

17, 43 103 Mogi, Maeda, Amin-Sanayei, Sekmakas, Ruka 17, 43
30, 31, 37–42 103 Mogi, Maeda, Amin-Sanayei, Sekmakas 30, 31, 37–42
Overall Outcome
1, 2, 5, 6, 8,
10–19, 23,
25, 27–31,
37–43

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED