Ex Parte Fukui et al

Patent Trial and Appeal Board

Sep 23, 2014

10363039 (P.T.A.B. Sep. 23, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/363,039 02/28/2003 Atsushi Fukui MAM-030 7698
20374 7590 09/23/2014
KUBOVCIK & KUBOVCIK
SUITE 1105
1215 SOUTH CLARK STREET
ARLINGTON, VA 22202
EXAMINER
WALLS, CYNTHIA KYUNG SOO
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
09/23/2014 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 ATSUSHI FUKUI,1
Takuya Hashimoto, Yasuyuki Kusumoto, Hiroshi Nakamura,
Masahisa Fujimoto, and Shin Fujitani
________________

Appeal 2013-000862
Application 10/363,039
Technology Center 1700
________________

Before CHUNG K. PAK, MARK NAGUMO, and KAREN M. HASTINGS,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Atsushi Fukui, Takuya Hashimoto, Yasuyuki Kusumoto,
Hiroshi Nakamura, Masahisa Fujimoto, and Shin Fujitani (“Fukui”) timely

1 The Real Party in Interest is listed as Sanyo Electric Co., Ltd. (Appeal
Brief, filed 23 January 2012 (“Br.”), 1.)
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Application 10/363,039

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appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 7, 9, 13, 16-19,
21, 24, 41, 79, and 81.3 We have jurisdiction. 35 U.S.C. § 6. We affirm.
OPINION
A. Introduction4
The subject matter on appeal relates to methods of making negative
electrodes for rechargeable lithium batteries (Spec. 1, ll. 7-9) said to provide
higher charge-discharge capacity and improved cycle performance (id. at 3,
ll. 4-7).
Claim 21 is representative of the dispositive issues and reads:
A method for fabrication of a negative electrode for a
rechargeable lithium battery, characterized as including the
steps of:
dissolving a binder in a solvent to prepare a binder
solution;
mixing active material particles containing silicon and/or a
silicon alloy, and a conductive metal powder which
contains copper or a copper alloy with said binder solution
to prepare a slurry:
applying said slurry on a surface of a conductive metal foil
selected from the group consisting of a copper foil, a copper
alloy foil, a metal foil having a copper surface layer, and a
metal foil having a copper alloy surface layer and having a
surface roughness Ra of 0.2 μm or larger to thereby

2 Office action mailed 22 June 2011 (“Office Action”; cited as “OA”).
Plural Requests for Continued Examination have been filed in this case.
3 The Examiner has withdrawn remaining copending claims 42-46, 49-69,
and 74, which are not before us. (OA 1, § 4a; Br. 2.)
4 We refer to the “039 Specification,” and cite it as “Spec.”
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provide a layer of a mixture of said active material
particles, said conductive metal powder, and said binder
on said surface of the conductive metal foil; and
sintering, under non-oxidizing atmosphere, said mixture
layer while
placed on said surface of the conductive metal foil
at a temperature within the range of 300°C - 400°C,
whereby copper in said conductive metal foil and/or
said conductive metal powder diffuses into said active
material,
and further wherein said binder is polyimide.
(Claims App., Br. 19-20; indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:5, 6
A. Claims 7, 9, 13, 16-19, 21, 24, 41, 79, and 81 stand rejected
under 35 U.S.C. § 103(a) in view of the combined teachings
of Nobufumi,7 Shindo,8 Furukawa,9 and MatWeb.10

5 Examiner’s Answer mailed 7 August 2012 (“Ans.”).
6 In response to the Brief, the Examiner re-opened prosecution by entering a
new ground of rejection. (Office Action mailed 16 March 2012.)
Subsequently, after an Examiner-initiated interview, the Office Action was
withdrawn and the Examiner was directed to enter an Examiner’s Answer to
the Brief. (TC 1700 Director, Decision on Petition, mailed 22 June 2012).
7 Nobufumi Mori, Nonaqueous secondary battery, JP 2000-012088 (2000)
[JPO Abstract in English]. (Although “Mori” is the surname, we follow the
record and refer to this reference as “Nobufumi.”)
8 Tadafumi Shindo et al., Electrode plate for secondary battery with
nonaqueous electrolyte and method of manufacturing the same, U.S. Patent
No. 6,045,947 (2000).
9 Jun Furukawa, Hydrogen-occlusion alloy for the electrodes of a sealed-
type storage battery, U.S. Patent No. 5,384,210 (1995).
10 MatWeb, Material Property Data, Overview of materials for polyimide,
http://www.matweb.com/search/DataSheet.aspx?MatGUID=ab35b368ab9c4
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B. Claims 7, 9, 13, 16-19, 21, 24, 41, 79, and 81 stand rejected
under 35 U.S.C. § 103(a) in view of the combined teachings
of Nobufumi, Shindo, Solomon,11 and MatWeb.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Briefly, the Examiner finds that Nobufumi describes a method of
making negative electrodes for lithium batteries meeting all the limitations
recited in claim 1 but for the dissolution of binder in a solvent, the use of
polyimide as the binder, and the sintering of the mixture of the binder, active
metal particles, and conductive metal powder. (OA 4-5.) The Examiner
finds that Shindo describes a process in which binders, including polyimide,
may be dissolved in an organic solvent and applied with other materials onto
a conductive metal foil. (Id. at para. bridging 4-5, citing Shindo, col. 10,
ll. 1-5.) The Examiner finds (OA 5, 1st full para.) that Furukawa discloses
sintering a dried slurry material comprising polyvinylidene fluoride particles
as a binder at a temperature of 200°C “so that the bonding agent became
melded and bonded (Furukawa, col. 5, l. 65, through col. 6, l. 7). Similarly,
the Examiner finds (OA 8, 1st full para.) that Solomon describes sintering a
dried slurry comprising binder particles “at a temperature sufficiently low to
not cause any deleterious polymer decomposition” (Solomon, col. 5,
ll. 12-14). The Examiner cites MatWeb as evidence that the melting

0848f545c35bdf1a672&ckck=1 (Examiner visited 6 December 2010; last
visited 4 September 2014).
11 Frank Solomon and Yury Genodman, Platinum black air cathode, . . . ,
U.S. Patent No. 4,927,514 (1990).
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temperature of polyimide ranges from 352-388°C, while the decomposition
temperature ranges from 570-623°C. (OA, para. bridging 5-6; 9, 1st full
para.)
The Examiner reasons that it would have been obvious to prepare a
slurry in which the binder is dissolved in an organic solvent, as taught by
Shindo, to obtain a more easily applied binder; and to sinter the slurry dried
on the conductive metal foil, as taught by either Furukawa or Solomon, at a
temperature above the melting point but below the decomposition point, in
order to obtain the benefit of binding the active materials together and to the
active material substrate.
Fukui urges that both Furukawa and Solomon sinter the disclosed
slurries in order to melt the binders, which are provided in the form of
powders deposited in the slurry. Fukui argues that the Examiner has not
explained adequately why a person having ordinary skill in the art would
have applied the sintering teachings of these references to a slurry in which
the binder was dissolved in the organic solvent of the slurry. In such
situations, in Fukui’s view, the binding ability would have been regarded as
sufficient, as indicated by Shindo, “which does not teach baking or sintering
of the active material layer.” (Br. 11, ll. 14-15; Reply12 6, ll. 1-4.)
Moreover, Fukui argues, sintering results in diffusion of ta metal component
present in the conductive metal foil and in the conductive metal powder in
the slurry, improving charge-discharge cycle characteristics. (Id. at 12, 2d
full para.) Fukui concludes that the rejections should be reversed.
(Id. at 12-13.)

12 Reply Brief filed 9 October 2012 (“Reply”).
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Fukui’s arguments are not persuasive of harmful error in the appealed
rejections. Our reviewing court has instructed that “[b]oth the suggestion
and the reasonable expectation of success must be founded in the prior art,
not in the applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493 (Fed.
Cir. 1991). The Examiner’s conclusion that binding would be improved at
elevated temperatures below the decomposition temperature of the binder is,
on its face, not unreasonable. Moreover, contrary to Fukui’s representations,
Shindo does disclose baking of the active material via a drying process.
(Shindo, col. 10, ll. 8-10.) In the working examples, Shindo describes plural
drying treatments at 80-100°C and at 130-140°C for polyvinylidene fluoride
binder coatings on negative electrodes. (Shindo, col. 12, ll. 40-59.) Shindo
also teaches that the coated layer may be subjected to a press-treatment
using, for example, a heating roll, “to further improve the uniformity of the
coated layer.” (Id. at ll. 55-60.) Thus, the Examiner’s reasonable argument
is supported by Shindo.
To the extent Fukui is arguing that the diffusion of copper recited in
the claims is an unexpected result, the limited argument does not direct our
attention to comparative examples with and without sintering, and with
polyimide versus other binder materials. We decline to scour the record in
search of evidence that may support the rejection and the rebuttal, and weigh
that evidence in the first instance, as our role is review, not advocacy in the
first instance.
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C. Order
We affirm the rejection of claims 7, 9, 13, 16-19, 21, 24, 41, 79,
and 81.
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

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