Appeal 2007-3414
Application 10/194,032
Kumar describes a process for forming lithium metal oxides. As
possible products, Kumar exemplifies lithium manganese oxide and other
metal oxides such as lithiated vanadium oxides (Kumar, col. 2, ll. 27-30);
there is no mention of forming lithiated non-metal oxides. Phosphorous is a
non-metal, and, therefore, not included in the genus of Kumar’s products.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006), quoted with approval in KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1741, 82 USPQ2d 1385, 1396 (2007).
The teachings of Kumar are limited to forming a genus of products
different from the LiFePO4 of Goodenough. Therefore, it was incumbent on
the Examiner to provide evidence, or articulated reasoning with some
rational underpinning, as to why one of ordinary skill in the art would have a
reasonable expectation of success in applying the teachings of Kumar to a
material containing phosphorous, an element outside the metal genus
articulated by Kumar. The Examiner does not provide such evidence or
reasoning in the present case.
III. CONCLUSION
Neither the rejection of claims 18-27, 30, 31, 34, 37, and 39-41 as
anticipated by Zhen, nor the rejection of claims 18, 35, 36, and 38 as
obvious over Goodenough in view of Kumar is supported by a
preponderance of the evidence.
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