                     NOTE: This disposition is nonprecedential.


United States Court of Appeals for the Federal Circuit

                                      2006-1450
                             (Interference No. 105, 281)



                 SHYAMA MUKHERJEE and TERJE A. SKOTHEIM,

                                                      Appellants,

                                          v.


                    MAY-YING CHU, LUTGARD C. DE JONGHE,
                     STEVEN J. VISCO, and BRUCE D. KATZ,

                                                      Appellees.



       Laurence S. Rogers, Ropes & Gray LLP, of New York, New York, for
appellants. With him on the brief was Douglas J. Gilbert.

      Charles L. Gholz, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of
Alexandria, Virginia, for appellees. With him on the brief were James J. Kelly and
Frank J. West. Of counsel was Alton D. Rollins.

Appealed from: United States Patent and Trademark Office,
               Board of Patent Appeals and Interferences
                      NOTE: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit
                                       2006-1450
                              (Interference No. 105, 281)


                 SHYAMA MUKHERJEE and TERJE A. SKOTHEIM,

                                                            Appellants,

                                           v.

        MAY-YING CHU, LUTGARD C. DE JONGHE, STEVEN J. VISCO, and
                            BRUCE D. KATZ,

                                                            Appellees.


                           __________________________

                            DECIDED: February 15, 2007
                           __________________________


Before MICHEL, Chief Judge, RADER and SCHALL, Circuit Judges.

MICHEL, Chief Judge.

      Shyama Mukherjee and Terje A. Skotheim (collectively “Mukherjee”) appeal the

decision of the United States Patent and Trademark Office Board of Patent Appeals and

Interferences (“Board”) holding Mukherjee’s claims in Interference No. 105,281

unpatentable for failure to comply with the written description requirement of 35 U.S.C.

§ 112, ¶1. For the reasons discussed below, we affirm.

                                I.     BACKGROUND

      May-Ying Chu, Lutgard C. De Jonghe, Steven J. Visco, and Bruce D. Katz

(collectively “Chu”) are the inventors named in U.S. Patent No. 6,030,720 (“the ’720
patent”) directed to liquid electrolyte lithium-sulfur batteries. U.S. Patent No. 6,030,720

(filed Oct. 10, 1997) (issued Feb. 29, 2000). On February 27, 2001, Mukherjee filed

U.S. Patent Application No. 09/795,915 directed to rechargeable lithium-sulfur batteries

and entitled “Novel Composite Cathodes, Electrochemical Cells Comprising Novel

Composite Cathodes, and Processes for Fabricating Same.” U.S. Patent Application

No. 09/795,915 (filed February 27, 2001) (published May 9, 2002) (“Mukherjee

application”).

       In lithium-sulfur batteries, the anode (i.e., negative electrode) usually contains

lithium metal; the cathode (i.e., positive electrode) usually contains sulfur; and the

electrolyte allows charged ions to migrate between the anode and cathode.             The

Mukherjee application discloses that in addition to sulfur, the cathodes contain an

Electroactive Transition Metal Chalcogenide1 (“ETMC”) composition. As defined in the

Mukherjee application, ETMC is “an electroactive material having a reversible lithium

insertion ability, wherein the transition metal is at least one selected from the group

consisting of Ti, V, Cr, Mn, Fe, Nb, Mo, Ta, W, Co, Ni, Cu, Y, Zr, Ru, Rh, Pd, Hf, Re,

Os, and Ir, and the chalcogenide is at least one selected from the group consisting of O,

S, and Se.” Mukherjee application at 19.

       Along with his February 27, 2001 application, Mukherjee filed a preliminary

amendment which, inter alia, added claims 94-100 for the purpose of provoking an

interference with the ’720 patent.    On April 13, 2005, Administrative Patent Judge

(“APJ”) James T. Moore (of the Board) declared Interference No. 105,281 between the



       1
             Chalcogenides are compounds that contain chalcogen elements, i.e.,
elements from the chalcogen group of the periodic table of chemical elements.
Chalcogens include sulfur (S) and selenium (Se).


2006-1450                                   2
Mukherjee application and the ’720 patent, designating Mukherjee as the senior party

and Chu as the junior party. Chu v. Mukherjee, No. 105,281 (B.P.A.I. Apr. 13, 2005)

(“Patent Interference Decision”). The sole count of the interference was either claim 94

of the Mukherjee application or claim 41 of the ’720 patent.         Patent Interference

Decision at 4. Claim 94 of the Mukherjee application reads:

      94.    A battery cell comprising:
                (a) an anode comprising a metal or an ion of a metal;
                (b) a cathode comprising a mixture of:
                    (i) an electrochemically active material comprising sulfur in the form
                        of at least one of elemental sulfur, a sulfide of the metal, and a
                        polysulfide of the metal; and
                    (ii) an electronically conductive material; and
                (c) a liquid electrolyte comprising a solvent for at least some discharge
             products of said cathode,
                wherein the battery cell is characterized by a separation distance
             between a back boundary where the liquid electrolyte is farthest removed
             from said anode and a front boundary where the liquid electrolyte is
             nearest said anode, wherein the separation distance is about 125
             micrometers.

Patent Interference Decision at 4 n.2.      Noticeably absent from claim 94 is any

requirement that the cathode contain an ETMC. APJ Moore designated claims 94-96,

98, 100, and 1012 of the Mukherjee application (“Mukherjee’s involved claims”) and

claims 28-49 of the ’720 patent as claims corresponding to the interference count.

Patent Interference Decision at 4. None of Mukherjee’s involved claims recites that the

cathode contains an ETMC composition.

      Mukherjee and Chu filed a number of preliminary motions as part of the

interference proceeding. Chu moved for a judgment that Mukherjee’s involved claims

were unpatentable for failure to comply with the written description requirement of



      2
            Mukherjee added claim 101 in an Amendment dated August 18, 2003.
See Chu v. Mukherjee, No. 105,281 (B.P.A.I. Apr. 7, 2006).


2006-1450                                  3
35 U.S.C. § 112, ¶13 (“Chu’s Motion 4”), arguing that because the involved claims do

not recite ETMC as part of the cathode component of a battery cell, the claims are

broader than the specification on which they are based. On April 7, 2006, the Board

granted Chu’s Motion 4, holding that one of skill in the art would have understood from a

reading of the disclosure as a whole that Mukherjee’s invention was limited to battery

cells with cathodes that contain an ETMC composition. Chu v. Mukherjee, No. 105,281

(B.P.A.I. Apr. 7, 2006) (“Board Decision”).      Accordingly, the Board entered final

judgment against Mukherjee and dismissed the remaining preliminary motions as moot.

Mukherjee filed a timely appeal based on 35 U.S.C. § 141.          We have jurisdiction

pursuant to 28 U.S.C. § 1295(a)(4)(A).

                                 II.     DISCUSSION

      Our review of the Board’s decision is limited by statute. Pursuant to 5 U.S.C. §

706, we must affirm the Board’s “action, findings, and conclusion” unless they are

“arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with

law . . . [or] are unsupported by substantial evidence.” See also Dickinson v. Zurko, 527

U.S. 150, 152, (1999) (holding that 5 U.S.C. § 706 governs our review of findings of fact

made by the Patent and Trademark Office). Written description is a question of fact,

judged from the perspective of one of ordinary skill in the art as of the relevant filing

      3
             The statute provides in pertinent part:
                    The specification shall contain a written description of the
                    invention, and of the manner and process of making and
                    using it, in such full, clear, concise, and exact terms as to
                    enable any person skilled in the art to which it pertains, or
                    with which it is most nearly connected, to make and use the
                    same, and shall set forth the best mode contemplated by the
                    inventor of carrying out his invention.
35 U.S.C. § 112, ¶1.



2006-1450                                  4
date, which we review in this appeal for substantial evidence. 5 U.S.C. § 706; Vas-

Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Substantial evidence

is evidence “a reasonable person might accept as adequate to support a conclusion.”

In re Zurko, 258 F.3d 1379, 1384 (Fed. Cir. 2001) (internal citations omitted).

       In an extensive and meticulous sixty-four page decision, the Board (in a panel

consisting of APJs Delmendo, Medley, and Moore) examined every section of the

Mukherjee application to determine whether it provided written description support for

Mukherjee’s involved claims. The Board found that the Technical Field Section states

that ETMC is included in the cathode material.         The Board determined that in the

Background Section, Mukherjee criticizes non-ETMC cathodes in the prior art and

distinguishes his invention over this prior art by disclosing that cathodes that contain

ETMC (“ETMC cathodes”) overcome the drawbacks associated with the prior art (e.g.,

problems stemming from the excessive out-diffusion of anionic reduction products from

non-ETMC cathodes into the rest of the cell) and by disclosing that ETMC cathodes

improve the life and capacity of batteries.       The Board observed that the Detailed

Description of the Invention Section continued with the notion that an ETMC cathode is

a distinguishing feature of the invention, citing the following as support:

       The present invention also pertains to the design and configuration of
       composite cathodes of the present invention. The relative configuration of
       the electroactive sulfur-containing cathode material and the electroactive
       transition metal chalcogenide composition in the composite cathode is
       critical. In all cases, in order to retard out-diffusion of anionic reduction
       products from the cathode compartment in the cell, the sulfur-containing
       cathode material must be effectively separated from the electrolyte or
       other layers or parts of the cell by a layer of an electroactive transition
       metal chalcogenide composition.




2006-1450                                     5
Board Decision at 55 (citing Mukherjee application) (emphasis added).          The Board

noted that (1) the non-ETMC cathodes used as experimental controls in the Example

Section had inferior properties or performance and (2) the sole independent claim in the

originally filed claims required ETMC in the cathode component. Based on its review of

the entire specification, the Board found that the application does not disclose non-

ETMC cathodes as the invention or alternatives to the invention and does not

characterize ETMC as an optional part of the cathode.

       Next, the Board reviewed the testimony of Dr. Anderman (a battery cell expert for

Chu) and Dr. Reddy (a battery cell expert for Mukherjee). Dr. Anderman testified that

every description of a battery cell in Mukherjee’s application contained a composite

cathode and that every composite cathode contained (a) an electroactive sulfur-

containing cathode material and (b) an ETMC. Id. at 10-11 (citing Dr. Anderman’s

testimony). Therefore, Dr. Anderman concluded that every battery described in the

Mukherjee application contained ETMC.        Dr. Anderman found no description of a

battery cell that lacked ETMC and no statement that ETMC was an optional component

of the cathode. Dr. Anderman further testified that it would have been clear to one of

skill in the art that the Mukherjee invention was limited to ETMC cathodes because it

was the presence of chalcogenide in the cathode that overcame the drawbacks of

previous sulfur batteries. Id. at 11.

       On the other hand, Dr. Reddy testified that ETMC was optional because it was

not required to make a battery cell work and only improved the function of batteries.

Id. at 14 (citing Dr. Reddy’s testimony).       Dr. Reddy also testified that the relative

configuration of the electroactive sulfur-containing cathode material and ETMC is critical




2006-1450                                   6
only when the chalcogenide composition is included in the composite cathode. Id. The

Board credited Dr. Anderman’s testimony over that of Dr. Reddy because

Dr. Anderman’s testimony was consistent with the text of the disclosure. Id. at 40. The

Board observed that Dr. Reddy had concluded that ETMC was optional based on

Mukherjee’s reference to non-ETMC cathodes in the prior art background section and in

comparison data shown in the examples. The Board gave no weight to Dr. Reddy’s

mistaken belief that any reference to non-ETMC cathodes in the Mukherjee application

makes these cathodes part of the disclosed invention. Instead, the Board correctly

found that the Mukherjee application as a whole only disclosed non-ETMC cathodes in

the context of “touting the advantages or importance of the [ETMC] composition.”

Id. at 45-46. Determining that Mukherjee was not in possession of an invention that

excludes ETMC from the cathode, the Board found that there was no written description

support for Mukherjee’s involved claims because as they do not claim ETMC as a

component of the cathode, they are far broader than the written description.         See

Tronzo v. Biomet Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (internal citations omitted).

       On appeal Mukherjee argues that the Board erred because it did not consider all

of Dr. Reddy’s testimony. We find this argument unpersuasive. As discussed above,

the Board reviewed Dr. Reddy’s testimony and gave it less weight than Dr. Anderman’s

testimony.   We defer to the Board’s determination of the weight and credibility of

evidence. See, e.g., Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating

that it is “within the discretion of the trier of fact to give each item of evidence such

weight as it feels appropriate”).




2006-1450                                   7
       Mukherjee further argues that the Board’s decision is erroneous because it fails

to consider the one part of its application that, Mukherjee contends, discloses methods

of making composite cathodes that do not contain an ETMC composition. Mukherjee

asserts that although his application discusses several methods that involve the use of

chalcogenides, page thirty nine of the application discloses one method that describes

cathodes in terms of their thickness and not their use of ETMC. Page thirty nine of the

Detailed Description states in relevant part:

               It is well known in the art of battery electrode fabrication that, by
       casting a slurry of electrode components and removing the solvent, thin
       films and coatings with the desired thickness can be made. One of skill in
       the art will appreciate that, by flash evaporation of the solvent from a slurry
       of electroactive transition metal chalcogenide and the electroactive sulfur-
       containing cathode material, one can produce finely divided powders with
       varying particle sizes. Powdered composite cathode materials prepared
       by the processes of the present invention can be hot or cold pressed,
       slurry coated or extruded onto current collecting materials by techniques
       known to those skilled in the art of battery electrode fabrication.

              Examples of preferred composite cathodes prepared using the
       processes of the present invention include thin film structures up to about
       25 µm in thickness, coatings on current collectors up to about 100 µm in
       thickness, and powdered composite structures.

Mukherjee application at 39 (emphasis added).         Contrary to Mukherjee’s assertion,

page thirty nine discloses only ETMC cathodes because the described protocol uses a

slurry that contains ETMC.      Therefore, the product of this disclosed method is a

composite cathode, not a generic, non-ETMC cathode.            As repeatedly described in

Mukherjee’s application, composite cathodes necessarily contain ETMC. In fact, for the

composite cathodes disclosed as Mukherjee’s invention, ETMC is critical.

       Although Mukherjee argues that this passage discusses the thickness of

cathodes in general, this argument is unpersuasive because the passage discloses




2006-1450                                       8
composite cathodes, not cathodes in general. Therefore, when the passage discusses

the thickness of composite cathodes, it in fact refers to the thickness of only ETMC

cathodes.

       As discussed above and contrary to Mukherjee’s contention, the Board reviewed

the entire application, including page thirty nine, and determined that the written

description does not support the broad cathode limitation recited in Mukherjee’s

involved claims because the disclosure of the application is limited to cathodes that

contain ETMC.     We hold that there is substantial evidence to support the Board’s

determination that the Mukherjee application does not comply with the written

description requirement of 35 U.S.C. § 112, ¶14 because a reasonable person would

find the testimonial and documentary evidence sufficient to support the Board’s finding.

As a result, we discern no error in the Board’s decision and hence no reason to disturb

the Board’s result. We have considered Mukherjee’s other arguments and conclude

that they are either unpersuasive or their review is unnecessary for the disposition of

this appeal.




       4
             Although Mukherjee’s new claims may have embraced new matter that
lacked adequate support in his original specification, i.e., a classic written description-
new matter problem, Chu did not argue and the Board did not address whether
Mukherjee’s added claims violated the proscription against new matter under 35 U.S.C.
§ 132(a).


2006-1450                                    9
