Zhengcheng Zhang et al.

Patent Trials and Appeals Board

Oct 2, 2019

13551115 - (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.
13/551,115 07/17/2012 Zhengcheng Zhang 051583-0551 3674
23524 7590 10/02/2019
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
CREPEAU, JONATHAN
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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 ZHENGCHENG ZHANG, JIAN DONG, and KHALIL AMINE1
____________

Appeal 2017-011573
Application 13/551,115
Technology Center 1700
____________

Before JANET A. GONGOLA, Vice Chief Administrative Patent Judge, and
ROMULO H. DELMENDO, and JAMES T. MOORE, Administrative
Patent Judges.

GONGOLA, Vice Chief Administrative Patent Judge.

DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from a rejection
of claims 11 and 14–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but designate our affirmance as a new ground of
rejection under 37 C.F.R. § 41.50(b).
BACKGROUND

1 Appellants identify the real party in interest as UChicago Argonne LLC.
Appeal Brief filed April 5, 2017 (“App. Br.”) 2.

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Appellants’ claims are directed to an electrolyte for a lithium ion
battery; the electrolyte includes an organosilicon solvent, propylene
carbonate, and a salt. Specification filed July 17, 2012 (“Spec.”) ¶¶ 2–3.
The Specification discloses that propylene carbonate “is not a suitable
electrolyte component for lithium-ion batteries having a graphite anode,”
due to exfoliation of the graphite and decomposition of propylene carbonate.
Id. at ¶ 23. The Specification discloses, however, that using “an
organosilicon compound as a cosolvent for propylene carbonate . . .
effectively suppresses [propylene carbonate] decomposition and successfully
eliminates the exfoliation of the graphite anode.” Id. at ¶ 24.
Claim 11 is representative of the subject matter on appeal and is
reproduced below:
11. A lithium ion battery comprising
an anode comprising synthetic graphite, natural graphite,
amorphous carbon, hard carbon, soft carbon, acetylene black,
mesocarbon microbeads (MCMB), carbon black, Ketjen black,
mesoporous carbon, porous carbon matrix, carbon nanotube,
carbon nanofiber, or graphene;
a cathode; and
an electrolyte, the electrolyte comprising:
propylene carbonate;
a salt; and
an organosilicon solvent of formula SiR1R2R3OR4;
wherein:
R1 and R2 are individually alkyl, aryl, alkoxy, or siloxy;
R3 is

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, or

; and

R4 is -(CH2CH2O)nCH3 or -(CH2CH2CH2O)nCH3;
a is 0 or l;
b is 0, 1, 2, or 3;
n is from 1 to 20; and
a ratio of organosilicon solvent to propylene carbonate in
the electrolyte is from about 1:9 to about 9:1.

App. Br. 13 (Claims App.).
REJECTION ON APPEAL
The Examiner rejected claims 11 and 14–19 under 35 U.S.C. § 103(a)
as unpatentable over Rossi2 and Sakata.3 Final Office Action entered
October 12, 2016 (“Final Act.”) 2.
Appellants do not argue any claim separately from claim 11. See
App. Br. 5–11. Accordingly, we select claim 11 as representative of

2 Rossi et al., Silicon-Containing Carbonates-Synthesis, Characterization,
and Additive Effects for Silicon-Based Polymer Electrolytes, 2 Silicon
201–208 (2010).
3 Sakata et al., U.S. Pat. Pub. No. 2011/0052980 A1, published March 3,
2011.
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dependent claims 14–19 and decide this appeal based on the rejection of
claim 11. 37 C.F.R. § 41.37(c)(1)(iv).
DISCUSSION
I. Teachings of the Prior Art References
The Examiner finds that Rossi teaches an electrolyte comprising an
organosilicon solvent having the formula:

Final Act. 2, citing Rossi 205. The Examiner finds that Rossi’s
organosilicon solvent 4a is encompassed by the formula recited in claims 11
and 16. Id. The Examiner finds that Rossi teaches using the solvent with
0.8M of a lithium salt. Id., citing Rossi 206. The Examiner finds that Rossi
also teaches propylene carbonate is used in commercially available lithium
batteries due to both its low viscosity, which enhances ionic mobility, and its
high dielectric constant, which achieves high free ion concentration. Id. at
3–4, citing Rossi 201.
The Examiner acknowledges that Rossi does not expressly teach
propylene carbonate combined with the organosilicon solvent or a lithium
battery with the claimed anode and cathode. See id. at 2–3. The Examiner,
however, finds that Sakata teaches a lithium battery having a positive
electrode (i.e., cathode) and an anode made of (i) graphite, (ii) mesocarbon
microbeads, or (iii) activated carbon. Id. at 3, citing Sakata ¶ 87, claim 1.
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The Examiner finds that Sakata teaches propylene carbonate as an
electrolyte. Id., citing Sakata ¶ 35.
The Examiner finds that because propylene carbonate was widely
used in lithium ion batteries, it would have been obvious to use the
organosilicon solvent of Rossi as an electrolyte with the propylene carbonate
of Sakata to obtain the advantages of the combined solvents. Id. at 4. The
Examiner finds the combination would have yielded predictable results to
one of ordinary skill in the art at the time of the invention. Id. at 3.
With respect to the ratio of organosilicon solvent to propylene
carbonate, the Examiner finds that “the solvent ratio has an effect on
viscosity and ion conductivity.” Id. at 4. Accordingly, the Examiner finds
that the claimed range is a result-effective variable that would have been
obvious to optimize. Id.
Appellants contend the prior art does not teach or suggest all
limitations of representative claim 11. See App. Br. 10. First, Appellants
contend that “Rossi does not use the cyclic carbonate siloxane material in
combination with [propylene carbonate] . . . . The silicon-containing cyclic
carbonates of Rossi are used instead of . . . [ethylene or propylene
carbonate].” Id. (emphasis added). Second, Appellants contend that Rossi
fails to teach “the claimed ratio” and “the use of silicon-containing cyclic
carbonates with carbon-based or graphite electrodes.” Id.
We are not persuaded by Appellants’ arguments as to Rossi.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
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fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We observe that Rossi teaches
that the “cyclic carbonate-based silane and siloxane compounds described
here could potentially be used commercially as additives in lithium
batteries.” Rossi 208. Thus, in direct contrast to Appellants’ allegation,
Rossi suggests that the disclosed organosilicon compounds are additives for
existing electrolytes in lithium batteries, e.g., propylene carbonate, and not
replacements thereof.
As to Appellants’ second argument, Rossi teaches that “upon addition
of more than 20% w/w of the additives, the ionic conductivity begins to
decrease . . . due to, in part, an increase in a viscosity of the mixture.” Id.
Accordingly, again in direct contrast to Appellants’ allegation, Rossi
suggests using the organosilicon solvent as an additive in an amount up to
20%, i.e., a ratio of 2:8, with a solvent having less viscosity, e.g., propylene
carbonate.
Appellants further contend that Sakata describes a nonaqueous
electrolyte that includes a fluorinated nitrile compound. App. Br. 10, citing
Sakata ¶¶ 23, 24, and 41–43. Appellants contend that Sakata “fails to
provide any indication of the use of the presently claimed electrolytes or the
silicon-containing cyclic carbonates of Rossi.” Id. In particular, Appellants
contend that Sakata does not teach or suggest using propylene carbonate in
“combination with oligoether electrolytes described in Rossi, or in
combination with the silicon containing cyclic carbonates as presently
claimed.” Id.
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We are not persuaded by Appellants’ arguments with respect to
Sakata. Sakata teaches propylene carbonate may be used as a part of a
“mixed solvent” nonaqueous electrolyte solution. Sakata ¶ 35. Moreover,
Sakata teaches that “additives other than the fluorinated nitrile compound(s)
further can be added to the nonaqueous electrolytic solution.” Sakata ¶ 51.
Specifically, Sakata teaches that further additives include “a silicon-
containing organic solvent” “preferably 30 mass% or less” so that the
electric characteristics do not deteriorate. See id. at ¶¶ 55–56. Hence, in
contrast to Appellants’ allegation, we observe that Sakata suggests a mixed
solvent electrolyte including propylene carbonate with additives, such as
fluorinated nitriles and silicon-containing organic solvents.
In summary, the combined prior art teaches a lithium ion battery
comprising a carbon-based anode, a cathode, an electrolyte comprising
propylene carbonate, a salt, and 10–30% of an organosilicon solvent
additive. Therefore, we are not persuaded that the Examiner erred in finding
the combined prior art teaches all of the limitations of representative claim
11.

II. Reason to Combine the Prior Art References
Appellants contend the Examiner “appears to take a leap of logic in
asserting that because ‘all the claimed elements were known in the prior art
and one skilled in the art could have combined the elements as claimed by
known methods with no change in their respective functions and the
combination would have yielded predictable results.’” App. Br. 10–11.
Appellants contend that the combination results in a modification of the
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respective functions of the prior art components “in that in the presence of
the silicon-containing cyclic carbonates and [propylene carbonate] with a
carbon/graphite based electrode, the [propylene carbonate] does not degrade,
the electrode does not exfoliate, and lithium battery cell operation is not
negatively impacted.” Id. at 11.
We find that the prior art provides express reasoning to combine the
references. “In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
Appellants’ claims are directed to a lithium ion battery comprising a
number of components. The Examiner has identified these components in
the prior art. The prior art further teaches that the components were
previously known for use in lithium ion batteries. More specifically, Sakata
teaches lithium ion batteries including carbon-based anodes, cathodes, and a
mixed nonaqueous electrolyte. See Sakata ¶¶ 33–35, 87. Sakata teaches the
mixed nonaqueous electrolyte may include propylene carbonate, a salt, and
preferably up to 30% additives, such as a silicon-containing organic solvent.
Sakata ¶¶ 35, 37, 55–56. Rossi teaches that “that the cyclic carbonate-based
silane and siloxane compounds described here could potentially be used
commercially as additives in lithium batteries,” in amounts up to 20% w/w.
Rossi 208. Therefore, Rossi expressly suggests using the claimed
organosilicon solvent as an additive for a mixed solvent system in a lithium
battery, e.g., as taught by Sakata. Because the prior art provides an express
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reason to combine Rossi’s organosilicon additive with Sakata’s mixed
solvent electrolyte, we conclude that the claims would have been prima facie
obvious over the prior art.
Nevertheless, because the Examiner did not articulate a reason to
combine the references based on the additional factual findings discussed
above, we designate our affirmance as a New Ground of Rejection to
provide Appellants a fair opportunity to address these teachings and our now
express findings.

III. Consideration of Unexpected Results
Appellants contend “the combination of the propylene carbonate []
and the siloxane in the stated ratio of the claim, when in the presence of the
stated anode, [] provides a synergistic effect.” App. Br. 6. Appellants
submit the Declaration of co-inventor Zhengcheng Zhang4 to support the
alleged synergistic effect. Id. Appellants assert that “when cells are
prepared with [propylene carbonate] alone, a cyclic carbonate siloxane, or a
polyethylene oxide siloxane, the cells degrade rapidly due to exfoliation of
the graphite and no, or minimal, [solid electrolyte interface] formation.”
App. Br. 7, citing Zhang Decl. ¶¶ 8–10. Appellants assert, by contrast,
“when cells are prepared using the siloxane having both polyethyleneoxide
and cyclic carbonate moieties [i.e., the compound of claim 16], the
performance is greatly enhanced.” App. Br. 7–8, citing Zhang Decl. ¶ 6.
The Examiner responds that “[e]vidence to show criticality or
unexpected results must show a comparison of the claimed invention to the

4 Declaration of Zhengcheng Zhang dated August 8, 2016 (“Zhang Decl.”).
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closest prior art.” Examiner’s Ans. dated July 7, 2017 (“Ans.”) 4. The
Examiner finds “Appellants are asserting that the claimed siloxane (cyclic+
EO groups) itself has a synergism over any of the compounds individually
. . . . However, this [is] not commensurate with the claimed invention, nor it
is the proper comparison to make.” Id. at 4–5. The Examiner states that
“the claimed invention is a siloxane with cyclic + EO groups . . . This
comparison has yet to be made.” Id. at 5.
We do not find Appellants’ evidence of unexpected results persuasive.
“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). We agree with Appellants that the Zhang Declaration
establishes that the claimed organosilicon solvent alone provides greatly
improved performance as compared to propylene carbonate alone.
However, the claims require the combination of propylene carbonate with
organosilicon solvent. Appellants have provided no evidence that an
electrolyte made of the combination of propylene carbonate and
organosilicon solvent provides a result that is different from the
organosilicon solvent alone. Without such evidence, it is impossible to
determine whether the results are synergistic. Moreover, consistent with the
Examiner’s position (Ans. 5), Rossi is the closest prior art against which a
comparison should be made because it discloses the claimed organosilicon
solvent.
Appellants further contend that the Specification itself discloses a
synergistic effect. App. Br. 6–7, citing Spec. ¶¶ 24–25. We are not
persuaded by Appellants’ contention. The Specification contains only
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conclusory statements about the effectiveness of the claimed invention
unsupported by any evidence such as comparative experimental data.
Specifically, the Specification states:
It has been found that the use of an organosilicon compound as
a co-solvent for propylene carbonate shows a significant
synergic effect . . . The present inventors have found that
surprisingly, organosilicon has a highly efficient performance
in reducing the irreversible capacity at the anode side when
PCbased electrolytes were used. . . . It has been observed that
this mixture provides for an unexpected effect in lithium ion
batteries employing such solvents exhibit improved capacity
retention, thermal stability, and durability compared to lithium
ion batteries employing only one of these materials.

Spec. ¶¶ 24–25. A showing of unexpected results must be based on
evidence, not argument or speculation. In re Mayne, 104 F.3d 1339, 1343-44
(Fed. Cir. 1997) (conclusory statements that claimed compound possesses
unusually low immune response or unexpected biological activity that is
unsupported by comparative data held insufficient to overcome prima facie
case of obviousness).
SUMMARY
We affirm the Examiner’s rejection of claims 11 and 14–19 under
35 U.S.C. § 103(a) as unpatentable over the combination of Rossi and
Sakata.
We designate our affirmance as a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . . or

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.

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).

AFFIRMED

37 C.F.R. § 41.50(b)