UChicago Argonne, LLC

Patent Trials and Appeals Board

Jul 16, 2020

2019004840 (P.T.A.B. Jul. 16, 2020)

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.
15/006,456 01/26/2016 Guiliang Xu 051583-0698 9154
23524 7590 07/16/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
SIDDIQUEE, MUHAMMAD S
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
07/16/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUILIANG XU, ZONGHAI CHEN, and KHALIL AMINE
Appeal 2019-004840
Application 15/006,456
Technology Center 1700
Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–11, 13–16, and 18–20.3
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed January 26, 2016 (“Spec.”); Final Office Action dated July 20, 2018
(“Final”); Appeal Brief filed January 23, 2019 (“Appeal Br.”); Examiner’s
Answer dated April 12, 2019 (“Ans.”); and Reply Brief filed June 3, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as UChicago
Argonne LLC. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
The invention relates to phosphorus-carbon composites that can be
used as battery anode materials. Claims 11 and 16, reproduced below from
the Appeal Brief Claims Appendix, are illustrative of the claimed subject
matter:
11. A phosphorus-carbon composite comprising
conductive carbon matrix and nano-sized
phosphorus particles, wherein:
the nano-sized phosphorus particles
comprise black phosphorus;
the nano-sized phosphorus particles are uniformly
dispersed on the surface and/or pores of the
carbon matrix; and
the carbon matrix comprises:
one or more of graphite, graphene, expanded
graphite, reduced graphene oxide,
acetylene black, carbon black, a
metal-organic framework, porous
carbon, carbon spheres, or carbon
aerogel; and
one or more of single-walled carbon
nanotubes, multi-walled carbon
nanotubes, carbon nanofibers, carbon
nanotube arrays, polypyrrole, or
polyaniline.
16. A method to prepare the phosphorus-carbon composite
of claim 11, the method comprising ball milling a
mixture comprising two or more precursors for
the conductive carbon matrix; and phosphorus.
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REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Name Reference Date
Park
Wang
Kim
Tour
Hahn
US 2008/0038626 A1
US 2013/0224369 A1
US 2016/0301103 A1
US 2016/0379764 A1
US 2017/0092439 A1
Feb. 14, 2008
Aug. 29, 2013
Oct. 13, 2016
Dec. 29, 2016
Mar. 30, 2017
REJECTIONS
1. Claims 1, 9, 11, 13–16, and 18–20 are rejected under 35 U.S.C.
§ 103 as unpatentable over Park in view of Wang and Hahn.
2. Claims 2–7 are rejected under 35 U.S.C. § 103 as unpatentable over
Park in view of Wang, Hahn and Tour.
3. Claims 8 and 10 are rejected under 35 U.S.C. § 103 as unpatentable
over Park in view of Wang, Hahn, Tour, and Kim.
OPINION
The Examiner found that “Park discloses a battery comprising an
anode wherein the anode comprises . . . a black phosphorus-carbon
composite material.” Final 3. The Examiner acknowledged that “Park [is]
silent about nano-sized phosphorous particles and the carbon matrix as
claimed.” Id. The Examiner found, however, that one of ordinary skill in the
art would have included these features in Park’s anode based on Wang’s and
Hahn’s disclosures. See id. at 3–5; e.g., id. at 5 (noting that “the substitution
of one known element for another would have yielded predictable results to
one of ordinary skill in the art at the time of the invention”). More
specifically, the Examiner found that “Wang discloses a battery comprising
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an anode wherein the anode comprises . . . phosphorus uniformly deposited
and adsorbed in [a] plurality of micropores of the porous conductive carbon
material,” and the phosphorus particles have diameters ranging from about
10 nanometers to about 100 micrometers. Id. at 3–4. The Examiner found
that “Hahn teaches an electrochemical cell wherein the carbon in the
composite material . . . of the anode is preferably in a polymorph selected
from the group consisting of carbon nanotubes, carbon nanofibers, graphene,
functionalized graphene, activated carbon, and mixtures thereof.” Id. at 4–5.
As to the rejection of claims 1, 9, 11, 13–16, and 18–20, the Appellant
contends that the Examiner reversibly erred in rejecting the claims because:
“(1) modification of the cited prior art would render it unsatisfactory for its
intended use; (2) [the] combination of the cited prior art fails to provide the
required expectation of success; and (3) the conclusions of obviousness were
made through impermissible hindsight.” Appeal Br. 5; see generally id. at 7–
11. The Appellant also argues separately in support of patentability of claim
16, contending that the applied prior art fails to teach or suggest “a mixture
comprising two or more precursors for the conductive carbon matrix.” Id. at
11–12. We agree with the Examiner that these arguments are not persuasive
of reversible error essentially for the reasons explained in the Answer. See
generally Ans. 6–10. We add the following primarily to address the
arguments made in the Appellant’s Reply Brief.
The Appellant argues that Park produces a black phosphorus-carbon
composite through high energy ball-milling of a mixture of red phosphorus
and carbon-based powder. Appeal Br. 7. The Appellant argues that Wang
produces a red phosphorus composite by subliming and condensing red
phosphorus onto a porous, conductive, carbon material (id.), and that “[t]he
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property of nano-sized phosphorus particles . . . is conferred by the
sublimation-condensation process itself” (Reply Br. 2). The Appellant
argues that “[t]he Examiner provides no rationale as to how one of ordinary
skill in the art would modify Park to incorporate Wang's teaching of nano-
sized phosphorus particles,” and the Examiner has not shown that the
ordinary artisan would have had a reasonable expectation of success in
obtaining nano-sized, black, phosphorus particles using Park’s ball-milling
process. Id. at 3–4. We are not persuaded that the Examiner failed to meet
the initial burden to establish a prima facie case of obviousness.
As explained in the Answer, and acknowledged by the Appellant, the
Examiner relied on Wang for a teaching that “it is well known in the art that
utilizing nanoparticles of active materials can exhibit improved performance
in energy storage devices compared to traditional electrodes that do not take
advantage of nanomaterials.” Ans. 7; see Reply Br. 2. However, a finding
that the ordinary artisan would have modified Park’s phosphorus-carbon
composite to include nano-sized phosphorus particles was unnecessary to
support a conclusion of obviousness. See Reply Br. 5 (arguing that “one of
ordinary skill in the art would not be motivated to look to Wang’s teachings
and modify Park based on Wang’s process”). As found by the Examiner (see
Ans. 8), in preparing the composite, Park uses process conditions similar to
those used by the Appellant and, therefore, Park’s method would have been
expected to produce a composite comprising nano-sized particles. Compare
Spec. ¶¶ 55–57 (“The ball milling may be performed at a rotation speed of
about 300 to about 1500 rpm. . . . In some embodiments, the rotation speed
is about 300 [or] . . . 600 . . . . The ball milling may be performed for a time
period of about 1 to about 40 hours. . . . This includes a time period of . . .
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about 10 to about 15 hours . . . under inert atmosphere (e.g., argon gas) . . .
.”), id. ¶ 14, Figure 1 (describing a high energy ball milling process using
stainless steel balls) and id. ¶ 73 (Example 1: “The weight ratio of the balls
and the mixture was maintained in a ratio of 10.”), with Park ¶ 28 (“The
prepared mixture is put into the cylindrical vial with a ball and then the
mechanical synthesis is carried out with a rotation velocity of 300 times or
more per minute using the general high energy ball-milling devices . . . . The
exemplary ratio of the ball to the powder is 16–24:1 . . . .”) and id. ¶ 37
(“Then, the mixture and stainless steel ball . . . were put into a hardened steel
cylindrical vial . . . and the HEMM [(high energy mechanical milling (id.
¶ 22))] process was conducted with a rotation velocity of 600 times per
minute under an Ar atmosphere in a glove box for 12 hours . . . .”). Park and
the Appellant also describe similar starting materials. Compare Spec ¶ 6
(“[T]he nano-sized phosphorus particles include black phosphorus, red
phosphorus, or any combination thereof), ¶ 80 (“[T]he particle size of bulk
black phosphorus is about hundreds of micrometers.”) and ¶ 42 (“The
conductive carbon matrix may include, but is not limited to, graphite, . . .
acetylene black, carbon black, . . . carbon nanotubes, . . . polypyrrole,
polyaniline, and mixtures of any two or more such materials.”), with Park
¶ 37 (exemplary preparation of black phosphorus-carbon composite using
“[c]ommercially available Red Phosphorus powder . . . average size: 75
μm”) and ¶ 25 (listing exemplary carbon-based powders including acetylene
black, carbon black, and graphite carbon).
When an examiner demonstrates that a claimed process appears to be
identical to a prior art process or that the claimed and prior art products
appear to be the same, the burden is properly shifted to the applicant to show
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that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1254–56 (CCPA 1977). The Appellant has not made
persuasive arguments or identified sufficient objective evidence to meet this
burden.
The Appellant argues that Park’s and the Appellant’s process
conditions differ because “the Appellant explicitly teaches in Example 1 that
ball milling is conducted at 1425 rpm for 700 minutes, conditions that are
higher in ball milling speed and duration and not similar to Park’s
conditions.” Reply Br. 5. The Specification disclosure cited in the
comparisons with Park’s disclosure, above, however, does not support a
finding that the specific Example 1 process conditions are necessary to
produce the claimed nano-sized phosphorus particles.
The Appellant also argues that the Examiner’s statement that “[t]here
are plenty of teachings in the prior art where high energy ball-milling is used
to make nanoparticles” “amounts to improper Official Notice” because the
Examiner did not provide proper citation. Reply Br. 7. This finding is
unnecessary to establish a prima facie case of obviousness for the reasons
discussed above. Accordingly, because we do not rely on this finding, we
decline to consider the Appellant’s argument that “the Examiner's Answer
has failed to satisfy its obligations under MPEP § 2144.03” (Reply Br. 7).
In the Appeal Brief, the Appellant argues that Hahn fails to provide
any guidance to use a dual-component conductive carbon matrix as claimed
in each of independent claims 1, 9, and 11, or “a method comprising ball
milling a mixture comprising two or more precursors for the conductive
carbon matrix; and phosphorus” as recited in claim 16. Appeal Br. 9, 11–12.
The Examiner has fully addressed these arguments and explained why they
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are not persuasive. See Ans. 8–11. We additionally note that Wang, like
Hahn, discloses that the carbon matrix components are selected from a
limited list that includes materials from both of the groups recited in the
independent claims: “the porous conductive carbon material is selected from
the group consisting of porous carbon, charcoal, carbon black, mesophase
carbon micro beads, hollow carbon fiber, carbon nanotubes with open ends,
and combinations thereof” (Wang claim 5 (emphasis added)). As to claim
16, the Appellant has not addressed the Examiner’s finding that Wang
discloses ball milling a mixture comprising porous carbon powders and
phosphorus (Final 5 (citing Wang ¶ 54)). See Appeal Br. 11–12.
In sum, for the reasons stated above and in the Answer, the Appellant
has not convinced us of reversible error in the Examiner’s rejection of
claims 1, 9, 11, 13–16, and 18–20 over Park in view of Wang and Hahn.
We turn next to the rejection of claims 2–7 over Park in view of
Wang, Hahn and Tour. Each of dependent claims 2–7 recites that the claim 1
electrochemical device comprises a specific type of battery: sodium-ion
(claims 2, 7), zinc-ion (claim 3), calcium-ion (claim 4), magnesium-ion
(claim 5), and aluminum-ion (claim 6). The Examiner found that
“Park/Wang teaches a lithium ion battery” and Tour teaches that “it [was]
known in the art to utilize similar material[s]/technique[s] in . . . similar
electrochemical device[s].” Final 5–6. The Appellant argues that there is no
“teaching or suggestion that simply because Tour’s nickel hydroxide
nanoporous film electrodes may be use[d] in numerous battery types, then
the instantly claimed phosphorus-carbon composite may also be used in
numerous battery types as claimed.” Appeal Br. 10.
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The Appellant’s argument is not persuasive of reversible error
because the Appellant has not explained why it was erroneous or
unreasonable for the Examiner to find that Tour’s batteries, as well as the
claimed batteries, would have been expected to work in similar manner
because they are all metal-ion batteries. See Ans. 9. We add that in addition
to teaching a lithium ion battery, Park explicitly states that the “black
phosphorus-carbon composite also can be applied to other kinds of
rechargeable batteries such as Magnesium rechargeable batteries etc.” Park
¶ 48.
In sum, the Appellant has not convinced us of reversible error in the
Examiner’s rejection of claims 2–7 over Park in view of Wang, Hahn, and
Tour for the reasons stated above and in the Answer.
As to the rejection of claims 8 and 10 over Park in view of Wang,
Hahn, Tour, and Kim, the Examiner has fully addressed the Appellant’s
arguments and we are not persuaded of reversible error for the reasons stated
in the Answer. See Ans. 10.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9, 11,
13–16,
18–20
103 Park, Wang, Hahn 1, 9, 11,
13–16,
18–20

2–7 103 Park, Wang, Hahn, Tour 2–7
8, 10 103 Park, Wang, Hahn, Tour,
Kim
8, 10
Overall
Outcome:
1–11, 13–
16, 18–20

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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).
AFFIRMED