Ex Parte Kuriki

Patent Trial and Appeal Board

Apr 3, 2018

13038413 (P.T.A.B. Apr. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/038,413 03/02/2011 Kazutaka KURIKI
22204 7590 04/05/2018
NIXON PEABODY, LLP
799 Ninth Street, NW
SUITE 500
WASHINGTON, DC 20001
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
740756-3514 8798
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
04/05/2018 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):
nppatent@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUT AKA KURIKI
Appeal2016-006765
Application 13/038,413
Technology Center 1700
Before CATHERINE Q. TIMM, DONN AM. PRAISS,
and N. WHITNEYWILSON,AdministrativePatentJudges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-3, 6-11, 14--21, and 24--2 8 under
1 In explaining our Decision, we cite to the Specification of March 2, 2011
(Spec.), Final Office Action of June 1, 2015 (Final), Appeal Brief of
December2, 2015 (Appeal Br.), Examiner's Answer of April 26, 2016
(Ans.), and Reply Brief of June 24, 2016 (Reply Br.).
2 Appellant identifies the real party in interest as Semiconductor Energy
Laboratory Co., Ltd. AppealBr. 2.
Appeal2016-006765
Application 13/038,413
35 U.S.C. § 103(a)as obviousoverYamada3 orShiraishi, 4 either reference
in combination with Suenaga, 5 Pompei, 6 and Oka 7 and claims 4, 12, and 22
over those prior art references further in view of Ro. 8 We have jurisdiction
under35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method off orming an electrode from a
fluororesin including a step off orming a fluororesin film by sputtering.
Claim 1 is illustrative:
1. A method off orming an electrode, the method
comprising the steps of:
forming afluororesinfilm on a surface of a collector by
sputtering with a high-frequency discharge;
contacting lithium foil with a surface of the fluororesin
film;and
applying pressure to the fluororesin film contacted [sic]
the lithium foil;
separating the lithium foil from the fluororesin film after
applying pressure to the fluororesin film contacted [sic] the
lithium foil; and
3 Yamada et al., JP 2002-105124,publishedApril 10, 2002.
4 Shiraishi et al., Development of porous carbon material derived from
carbon triple bond for highly capacitive electrochemical capacitor, NEDO:
Research Report under Grant for Industrial Technology Research FY 2002,
Dec. 2, 2002.
5 Suenaga et al., US 2009/0169951 Al, published July 2, 2009.
6 Pompei et al., US 4, 100,048, issued July 11, 1978.
7 Oka et al., JP 2002-198033,publishedJuly 12, 2002.
8 Ro et al., US 2006/0172134 Al, published Aug. 3, 2006.
2
Appeal2016-006765
Application 13/038,413
washing the surface of the fluororesin film with acid,
after contacting the lithium foil, thereby forming a film
consisting essentially of carbon.
Appeal Br. 13 (claims appendix) (emphasis added).
OPINION
Appellant does not argue any claim or rejection apart from the others.
Appeal Br. 7-12. Thus, we consider Appellant's arguments as they apply to
the rejection of claim 1.
At the outset, we note that arguments made in the Reply Brief
focusing on Shiraishi are new and good cause for their consideration has not
been shown. Arguments in the Appeal Brief were not directed to the
Examiner's fmdings regarding Shiraishi, they were directed to the
Examiner's fmdings regarding the alternative primary reference, Yamada,
and Yamada's combination with Pompei. Appeal Br. 7-12. Nor did the
Examiner discuss Shiraishi in responding to Appellant's arguments. Ans. 5-
6. We will not consider arguments made in the Reply Brief that were not
either raised in the Appeal Brief or are not responsive to the Examiner's
responses in the Answer unless good cause is shown. 37 C.F.R. § 41.41
(2015). As the arguments are new and no good cause for their inclusion in
the Reply Brief was given, we will not consider the new arguments
concerning Shiraishi.
We now tum to the arguments made in the Appeal Brief to determine
the portions of the Examiner's fmdings of fact, analysis, and conclusions of
law that were put into issue by Appellant's arguments in the Appeal Brief
and related arguments in the Reply Brief, and we review the question of
3
Appeal2016-006765
Application 13/038,413
whether Appellant has identified a reversible error in the Examiner's
rejection based on those arguments.
Our review indicates that Appellant has not identified a reversible
error.
Much of Appellant's argument in the Appeal Brief attempts to knock
down what Appellant characterizes as an inherency rationale based on a
further characterization of the Examiner's rejection as involving a finding of
a suggestion to substitute Pompei' s teaching of sputtering fluororesin for
Yamada' s teaching of irradiating fluororesin with gamma rays. Appeal Br.
7-10. This argument fails because the rejection does not propose such a
substitution.
In the rejection of claim 1, the Examiner finds that JP 2002-105124
(Yamada) teaches irradiating a fluororesin to depolymerize it, defluorinating
the depolymerized fluororesin with an alkali metal or alkali metal containing
solution, then washing the depolymerized fluororesin to remove the resulting
alkali metal fluoride. Final 3. There is no dispute that Yamada teaches such
a method. Appeal Br. 7-1 O; Reply Br. 4. The Examiner finds that, with the
removal of the alkali metal fluoride (lithium fluoride (LiF)) by washing,
only carbon would remain as is the case with the method Appellant
describes in the instant Specification. Final 3.
The Examiner acknowledged that Yamada fails to teach forming
PTFE film by sputtering. Final 4. Yamada teaches forming a commercially
available PTFE in the form of a powder or thin film solid, Yamada if 11, but
is silent on the method of forming the film. Acknowledging this difference,
the Examiner relies on Pompei for its teaching off orming thin films of
PTFE by sputtering. Final 4. It is not disputed that Pompei teaches that a
4
Appeal2016-006765
Application 13/038,413
thin coating of PTFE can be formed by high frequency cathode sputtering.
Appeal Br. 10; see also Pompei col. 6, 11. 15-18.
The Examiner's combination is not based on a substitution of
sputtering for Yamada' s irradiating, it is based on using sputtering to form
Yamada' s thin film before irradiating the film. Both sputtering and
irradiating would occur in the suggested method. Appellant's argument,
thus, fails because it does not address the basis for the rejection.
Appellant contends that there is no motivation to combine Yamada
with Pompei. Appeal Br. 10. But this argument also neglects the basis of
the rejection. Appellant contends that Pompei does not teach or suggest that
sputtered PTFE has a different property (reactivity) from the untreated
PTFE. Id. Appellant then reasons that, as such, one of ordinary skill in the
art would have had no reasonable basis to predict that sputtered PTFE would
increase reactivity and, thus, would have had no motivation to replace
gamma irradiation with sputtering. Id. Again, the Examiner's conclusion of
obviousness does not hinge on a finding of substituting Yamada's step of
gamma irradiating with sputtering; it hinges on a fmding that Pompei
provides a suggestion for forming a thin film of PTFE by sputtering, which
is then gamma irradiated per the teachings of Yamada.
The combination of Yamada and Pompei would have suggested to the
ordinary artisan forming a thin film by sputtering as taught by Pompei and
irradiating the sputtered thin film to depolymerize it, contacting the
depolymerized film with alkali metal, and washing away the resulting
fluorinated alkali metal to form a carbon film. As noted by the Examiner,
the claims do not preclude a step of irradiating the PTFE film with gamma
radiation afterthe step of forming the PTFE film by sputtering. Ans. 6. The
5
Appeal2016-006765
Application 13/038,413
ordinary artisan would have reasonably expected the irradiation step would
have had its known effect of depolymerizing the fluororesin and increasing
its reactivity in the resulting process. Appellant has not persuaded us that
the Examiner erred in finding a reason for using sputtering to form the thin
film ofY amada.
Although Appellant does not directly call into question the
Examiner's fmdings regarding Oka and the Examiner's fmding of a
suggestion for performing Yamada' s defluorinating step by applying a
lithium film as taught by Oka, Appellant discusses the teachings of Oka to
support an argument that the ordinary artisan would have reasonably
predicted that defluorination of a sputtered PTFE film with a solid form
lithium metal would only happen at the surface and Appellant's method
achieves unexpectedly increased reactivity. Appeal Br. 10-11.
First, Appellant's argument is not persuasive because it ignores the
presence of a step of irradiating with gamma rays as suggested by Yamada.
Again, this step remains in the suggested combination and the resulting film
is not untreated, but depolymerized by the gamma rays.
Second, a preponderance of the evidence fails to support Appellant's
argument that there is low reactivity such that only surface defluorination
could be achieved with Oka's suggested lithium blocks. Appellant does not
dispute that Oka teaches contacting a PTFE film with a lithium block for a
short period of time to defluorinate the surface of the film. Appeal Br. 10;
see also Oka if 27. According to Appellant, Oka describes that
defluorination for this short period of time defluorinates only the surface of
the film. Appeal Br. 10. But then Appellant makes the leap that this
teaching of surface defluorination "confrrms that untreated PTFE has low
6
Appeal2016-006765
Application 13/038,413
reactivity for defluorination with solid form of lithium." Id. This
conclusion does not follow from the teachings of Oka. Oka teaches coating
an electrode with an active material 29 to form a fluororesin-containing
coating and placing the coated electrode between lithium blocks 3 7 and 3 8
as shown in Figure 4(b). Oka iii! 25, 27. According to Oka, the reaction
starts from the surface of the fluororesin-containing active material 29 and
progresses to the inside over time. Oka if 27. Oka seeks to limit the reaction
to the surface and so only performs the defluorination for a short period of
time. Id. This does not mean that there is low reactivity or that the ordinary
artisan would have not understood how to obtain complete defluorination as
desired by Yamada.
Appellant does not dispute that it would have been obvious to the
ordinary artisan to use lithium blocks in the manner taught by Oka to
conduct the defluorination of Yamada. Yamada, as we explained above,
seeks to produce a carbon material from a fluororesin transformed into a low
molecular weight fluororesin by irradiating with gamma radiation, removing
fluorine atoms by contact with an alkali metal, and washing. Yamada if 10.
The alkali metal may be lithium. Yamada if 12. Yamada seeks a carbon end
product. It follows that the ordinary artisan would have contacted Yamada' s
depolymerized fluororesin for a sufficient time to allow the lithium to
progress to the inside as Oka suggests will occur given enough time. Oka
ir 27.
Appellant contends sputtered PTFE provides an unexpected increase
in reactivity and the defluorination progresses to the inside of PTFE even
when contact was for a short period of time. Appeal Br. 11. Appellant,
however, does not point to any specific data in the Specification in support
7
Appeal2016-006765
Application 13/038,413
of a showing of unexpected results. Appeal Br. 10-11. Additionally, as
pointed out by the Examiner, there is no comparison to the closest prior art,
i.e., to the method of Yamada in which the film is formed by other
conventional PTFE film-forming processes prior to gamma irradiating.
In the Reply Brief, Appellant responds that there is sufficient data to
show that the result of the claimed method is a film consisting essentially of
carbon and points to Figures 2 to 4. Reply Br. 5. Appellant does not explain
how these figures support a showing of unexpected results. Id. According
to the Specification, Figure 2 shows a spectrum obtained by energy-
dispersive X-ray (EDX) analysis of a surface of a PTFE film sputtered onto
a surface of a collector. Spec. iii! 35-37. This non-lithium treated film has a
surface with a high concentration of fluorine. Fig. 2 (circled F). Figure 3
shows an EDX analysis spectrum at a depth of 120 nm from the surface after
the lithium foil was contacted with the film. Spec. if 40. Figure 4 shows an
EDX analysis spectrum at a depth of 500 nm after the lithium foil contact.
Spec. if 41. As shown in Figure 3, at a depth of 120 nm, the film has much
less fluorine, but, as shown in Figure 4, at a depth of 500 nm, the fluorine
levels are much higher. Compare Fig. 4, with Fig. 3. The Specification does
not disclose how long the lithium foil contacted the PTFE film or the effect
of the washing step. The evidence does not support the argument that
sputtering results in unexpectedly increased reactivity over the closest prior
art method.
Appellant has not identified a reversible error in the Examiner's
conclusions of obviousness.
8
Appeal2016-006765
Application 13/038,413
In summary:
1-3, 6-11, § 103(a)
14--21, 24--
28
4, 12,22 § 103(a)
Summary
CONCLUSION
Yamada,
Shiraishi,
Suenaga,
Pompei, Oka
+Ro
DECISION
The Examiner's decision is affirmed.
1-3, 6-11,
14--21, 24--
28
4, 12,22
1--4, 6-12,
14--22, 24--
28
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)(l ).
AFFIRMED
9