Ex Parte Kuriki et al

Patent Trial and Appeal Board

Aug 31, 2017

13164839 (P.T.A.B. Aug. 31, 2017)

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.
13/164,839 06/21/2011 Kazutaka KURIKI 740756-3577 2619
22204 7590 09/05/2017
NIXON PEABODY, LLP
799 Ninth Street, NW
SUITE 500
WASHINGTON, DC 20001
EXAMINER
GATEWOOD, DANIEL S
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUTAKA KURIKI, MICHIKO KONISHI,
ASAMI TADOKORO, YASUNORI YOSHIDA,
KIYOFUMI OGINO, and TOSHIHIKO TAKEUCHI
Appeal 2016-001897
Application 13/164,839
Technology Center 1700
Heard: August 8, 20171
Before MARKNAGUMO, JAMES C. HOUSEL, and GEORGE C. BEST,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL2
1 A copy of the transcript of the oral hearing held on August 8, 2017 will be
made of record upon its availability.
2 Our decision refers to the Specification (Spec.) filed June 21, 2011, the
Examiner’s Final Office Action dated December 3, 2014, Appellants’
Appeal Brief (Appeal Br.) filed June 1, 2015, the Examiner’s Answer (Ans.)
dated September 25, 2015, and Appellants’ Reply Brief (Reply Br.) filed
November 25, 2015.
Appeal 2016-001897
Application 13/164,839
Pursuant to 35 U.S.C. § 134(a), Appellants3 appeal from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) as unpatentable
claims 1, 3, 4, 13—15, 19, and 21—31 over Lee (US 2007/0007239 Al, pub.
Jan. 11, 2007) in view of Okazaki (US 2009/0117462 Al, pub. May 7,
2009), Sato (US 2010/0151322 Al, pub. June 17, 2010), and Elhamid (US
2005/0037935 Al, pub. Feb. 17, 2005),4 and claims 16 and 20 adding Yagi
(US 2002/0102348 Al, pub. Aug. 1, 2002). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The invention relates to a power storage device and a method for its
manufacture. Spec. 11. Appellants disclose that the power storage device
includes a crystalline semiconductor layer as the active material layer of an
electrode, wherein the semiconductor layer includes whiskers. Id. 19.
Claims 1 and 13, reproduced below from the Claims Appendix to the
Appeal Brief, are illustrative of the subject matter on appeal.
1. A power storage device comprising:
a current collector, wherein a surface treatment is
performed on the current collector by using a material selected
from the group consisting of a hydrofluoric acid, NF3 plasma,
SiF4 plasma, and C1F3 plasma; and
a crystalline semiconductor layer including a whisker
which is formed over the current collector, the crystalline
semiconductor layer comprising silicon,
3 According to Appellants, the real party in interest is Semiconductor Energy
Laboratory Co, Ltd. Appeal Br. 1.
4 For consistency we follow both the Examiner and Appellants and refer to
the reference as “Elhamid.”
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Application 13/164,839
wherein a diameter of the whisker is greater than or equal
to 500 nm and less than or equal to 3 pm,
wherein a length along an axis of the whisker is greater
than or equal to 500 nm and less than or equal to 1000 pm,
wherein the current collector comprises a metal element
which forms silicide by reacting with silicon on a surface
region of the current collector, and
wherein a specific capacity of a tenth cycle number with
respect to a first cycle number is greater than or equal to 90 %.
13. A method for manufacturing a power storage device
comprising the steps of:
performing a surface treatment on a current collector; and
forming a crystalline semiconductor layer including a
whisker over the current collector,
wherein the crystalline semiconductor layer comprises
silicon,
wherein a diameter of the whisker is greater than or equal
to 500 nm and less than or equal to 3 pm,
wherein a length along an axis of the whisker is greater
than or equal to 500 nm and less than or equal to 1000 pm,
wherein the current collector comprises a metal element
which forms silicide by reacting with silicon on a surface
region of the current collector, and
wherein the surface treatment is performed on the current
collector by using a material selected from the group consisting
of a hydrofluoric acid, NF3 plasma, SiF4 plasma, and C1F3
plasma.
The remaining two independent claims recite similar methods for
manufacturing a power storage device, each including a step of “processing
a current collector with a material selected from the group consisting of a
hydrofluoric acid, NF3 plasma, SiF4 plasma, and C1F3 plasma,” followed by
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Application 13/164,839
forming a crystalline silicon semiconductor layer including a whisker over
the collector. See claims 15 and 19.
ANALYSIS
The dispositive issue before us with regard to the method claims is
whether Appellants have identified reversible error in the Examiner’s
proposed combination of Lee, Okazaki, Sato, and Elhamid, specifically
whether the Examiner reversibly erred in determining that modification of
Lee to replace Lee’s hydrochloric acid (HC1) acid treatment with
hydrofluoric (HF) acid in view of Elhamid would have been obvious to one
of ordinary skill in the art. We answer this question in the affirmative and,
therefore, will not sustain the Examiner’s obviousness rejections over the
method claims before us on appeal.
However, the issue before us with regard to the device claims is
different. Claim 1 is a product-by-process claim, in that this claim recites a
power storage device, including a current collector that has had a surface
treatment using a material selected from the group consisting of HF, NF3
plasma, SiF4 plasma, and C1F3 plasma. “The patentability of a product does
not depend on its method of production. If the product in a product-by­
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process.” In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (citation
omitted); see also Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 970
F.2d 834, 837—847 (Fed. Cir. 1992). After review of the opposing positions
articulated by Appellants and the Examiner, the applied prior art, and
Appellants’ claims and Specification disclosures, we determine that the
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Appellants’ arguments are insufficient to identify reversible error in the
Examiner’s obviousness rejection of device claims 1, 3, 4, 21—23, 26, and
29-31. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
The Examiner finds Fee describes a power storage device and method
for its manufacture, wherein the device includes, inter alia, a current
collector having a crystalline silicon semiconductor layer formed thereon by
a low pressure chemical vapor deposition (FPCVD) method, wherein the
device has a specific capacity of a tenth cycle number with respect to a first
cycle number greater than or equal to 90%. Ans. 2. The Examiner finds Fee
does not specify that the crystalline silicon layer comprises a crystalline
silicon region and an overlying whisker-like crystalline silicon region.5 Id.
at 2—3. For this feature, the Examiner finds Okazaki teaches a silicon active
layer comprising a first active layer and an overlying second active layer
with columnar particles or whiskers, wherein the length of these columnar
particles or whiskers is preferably no less than 200 nm and no more than 50
pm. Id. at 3. In addition, the Examiner finds Sato teaches a similar structure
as Okazaki’s wherein the columnar particles or whiskers may have an
average length of 18 pm and an average diameter of 5 pm. Id. The
Examiner concludes it would have been obvious to form Lee’s crystalline
silicon layer to include a first active layer and a second active layer
including columnar particles or whiskers to improve the charge/discharge
cycle characteristics of the device as taught by Okazaki. Id. The Examiner
notes that the lengths of the columnar particles or whiskers taught in
5 We note, however, that Lee teaches the crystalline silicon layer, when
formed on the surface treated current collector, has a micro columnar
structure that is stable during charge/discharge cycles. Lee 55, 65; also
see Appeal Br. 6, 8—9.
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Okazaki and Sato overlap the range of 500 nm to 1000 pm recited in
claim 1. Id. Though the Examiner acknowledges that Sato’s teaching of
whiskers having an average diameter of 5 pm is above claim l’s recitation of
an upper limit of 3 pm, the Examiner nonetheless finds Sato’s teaching to be
sufficiently close to the claimed range such that those skilled in the art
would have reasonably expected them to have the same or similar properties.
Id. at 3^4 (citing Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775
(Fed. Cir. 1985) and MPEP § 2144.05(1)). The Examiner finds that
Appellants have not shown criticality for the claimed range. Ans. 4.
Therefore, the Examiner concludes that forming a second active layer in Lee
with columnar particles or whiskers having a height and diameter in the
claimed ranges would have been obvious as an obvious matter of routine
optimization in view of Okazaki and Sato. Id. (citing In re Antonie, 559
F.2d 618 (CCPA 1977) (generally obvious to vary a known result-effective
variable) and MPEP § 2144.05(II)(B)).
The Examiner further finds that Lee only discloses a surface treating
the current collector with HC1, but not with a material selected from the
group consisting of HF, NF3 plasma, SiF4 plasma, and C1F3 plasma. Ans. 4.
For this feature, the Examiner finds Elhamid discloses subjecting stainless
steel current collector strips to an acid treatment using a mixture of acids
including HF. Id. The Examiner concludes it would have been obvious to
modify Lee’s current collector surface treatment by using HF in order to
prevent corrosion by reacting with and converting metal oxides to soluble
constituents that may be readily removed from the surface as taught by
Elhamid. Id.
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Appellants present three arguments against the propriety of the
Examiner’s obviousness rejection: 1) that one of ordinary skill in the art
would not have modified Lee’s surface treatment method to include HF in
view of Elhamid because Lee teaches away from using weak acids and
Elhamid’s process is for a different purpose than Lee’s (Appeal Br. 6—9;
Reply Br. 2—4); 2) that the ordinary artisan would not have combined Lee
with Okazaki and Sato because these secondary references teach a
deposition process incompatible with Lee (Appeal Br. 9-10; Reply Br. 4—5);
and 3) the claimed ranges for the whisker length and diameter achieve
unexpected results (Appeal Br. 10-11; Reply Br. 5—6).
For the reasons set forth in the Appeal and Reply Briefs, Appellants’
first argument is persuasive with regard to the method claims before us on
appeal. Specifically, we are persuaded that Table 1 of Lee, while not
definitely teaching away from the use of weak acids such as nitric acid or
hydrofluoric acid because it fails to teach, as a comparative example, the use
of nitric acid and FeCf, nonetheless at least suggests that the use of a
weaker acid such as HF may not sufficiently etch Lee’s current collector
with a reasonable expectation of success. In particular, Lee teaches that
neither nitric acid nor FeCf, both known etchants of moderate acid strength,
are able to achieve the surface morphology Lee achieves using HC1 and
FeCL together, where HC1 is a strong acid. We are also persuaded that
Elhamid’s surface treatment using HF is for a purpose different from Lee’s
surface treatment. Lee chemically etches the surface of the current collector
in order to create a particular surface morphology, i.e., to create “grain
boundaries of 5—100 pm in size throughout the entire surface of the anode
current collector, and trenches having a depth of more than 1 pm formed at
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grain boundary junctions.” Lee 1 8. Lee then applies a crystalline silicon
layer to the current collector to provide improved charge/discharge cycle
characteristics for the storage device. Id. 121. Elhamid, on the other hand,
surface treats a conductive element of a fuel cell “to remove a passivation or
oxide layer from the surface.” Elhamid 121. The treated surface is then
overlaid with an electrically conductive, corrosion-resistant, protective
coating. Id. Thus, although Elhamid uses HF to remove a passivation or
oxide layer from the surface of the conductive element, the Examiner does
not find that Elhamid teaches that HF provides or is capable of providing
Lee’s desired surface morphology.6 Therefore, both Appellants’ arguments,
taken together, are persuasive that a preponderance of the evidence supports
that it would not have been obvious to substitute HF for HC1 in Lee.
Accordingly, we will not sustain the Examiner’s obviousness
rejections of method claims 13—16, 19, 20, 24, 25, 27, and 28.
However, we note the Examiner establishes the obviousness of device
claim 1 based on a combination of Lee, Okazaki, and Sato. The Examiner’s
reliance on Elhamid was solely to establish the obviousness of the use of HF
in the surface treatment of Lee’s current collector. As indicated above,
6 Instead, the Examiner places the burden on Appellants to show that HF
would not achieve the surface morphology required by Lee. During
examination, the Examiner bears the initial burden of presenting a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Only when the Examiner establishes a reasonable belief that this
surface morphology would have necessarily resulted from the use of HF
instead of HC1, does the burden of proof shift to Appellant to show that this
characteristic or property is not possessed by the prior art. In re Chudik, 851
F.3d 1365 (Fed. Cir. 2017). In this case, the Examiner has not established
this reasonable belief and has, therefore, not shifted the burden to
Appellants.
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device claim 1 is a product-by-process claim, which we evaluate as a
product claim. Although Appellants have persuasively argued that it would
not have been obvious to modify Lee’s process to substitute HF for HC1 in
the surface treatment of the current collector, Appellants have not shown
that such a substitution alters the structure of the resulting product so as to
patentably distinguish over Lee as modified by Okazaki and Sato.
We recognize that Appellants argue that the ordinary artisan would
not have combined Lee with Okazaki and Sato because these secondary
references teach a deposition process incompatible with Lee. Appeal Br. 9—
10; Reply Br. 4—5. In this regard, Appellants assert that Lee relies on the
LPCVD formation of a micro-columnar structure on the current collector
that has been treated to create a particular surface morphology. Id. at 9.
Appellants assert, on the other hand, that both Okazaki and Sato teach
formation of the columnar particles or whiskers by oblique deposition. Id.
Appellants contend that such oblique deposition is incompatible with Lee
and would render Lee unsatisfactory for its intended purpose. Id.
Appellants’ argument is not persuasive of reversible error. Each of
Lee, Okazaki, and Sato teach that the silicon layer may be formed on the
current collector by CVD. Lee 127; Okazaki 1109; Sato 1 66. The only
difference in Okazaki’s and Sato’s CVD from Lee’s CVD is that Okazaki
and Sato use oblique deposition, i.e., deposition from an oblique angle to the
current collector surface. Appellants do not direct our attention to any
evidence or persuasive technical reasoning why an oblique deposition would
either be incompatible with or render Lee unsatisfactory. Indeed, Okazaki
teaches that “the area of the portions of the positive-electrode active material
layer that oppose the active material particles 4 can be sufficiently increased
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[by oblique deposition], whereby the charge-discharge efficiency can be
enhanced with an increased certainty.” Okazaki | 83. Sato further teaches
“[ijnclining active material blocks 16 with respect to the surfaces of current
collector 15 or forming active material blocks 16 in a wave shape in this
manner improves the charge/discharge characteristics of the negative
electrode.” Sato 1 69. Thus, if anything, oblique deposition in Lee would
reasonably have been expected to improve the charge/discharge cycle
characteristics of the resulting device.
Moreover, we note that Okazaki teaches that the active material
particles or whiskers need not be grown at an angle but may grow along the
normal direction D of the surface of the current collector. Okazaki 192. In
other words, Okazaki teaches that the deposition need not be oblique.
Moreover, while Sato teaches that it is preferable that the active material
blocks or whiskers are inclined with respect to the surfaces, one would
reasonably infer from Sato’s use of “preferable” that deposition need not be
oblique. Sirona Dental Sys., Inc. v. 3MESPE AG, Appeal No. 2011-005021
(BPAI 2011), affd mem. (Fed. Cir. 2012). In an obviousness inquiry under
§103, ‘“the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” Merck & Co. v. Biocraft Labs. Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)).
We next turn to Appellants’ third argument that the claimed ranges for
the whisker length and diameter achieve unexpected results. Appeal Br. 10-
11; Reply Br. 5—6. Appellants contend that the ranges of dimensions of the
whiskers achieve unexpected results from the claimed combination of
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surface treatment and Si whisker deposition. Appeal Br. 10. Appellants
assert that their Application clearly demonstrates that the surface treatment
enhances the promotion of the growth of the whiskers, directing our
attention to Example A, paragraphs 58 and 81 of the Specification. Id.
According to Appellants, Sato’s larger diameter would result in less total
whiskers in the surface area of the current collector. Id.
However, Appellants have not demonstrated that the results shown in
their Specification would have been unexpected to one of ordinary skill in
this art. Appellants merely urge that the results shown in the Specification
would have been unexpected. However, to demonstrate unexpected results,
Appellants must show that any difference would not have been expected by
one skilled in the art at the time of invention. See In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973) (an applicant must show “that the difference
actually obtained would not have been expected by one skilled in the art at
the time of invention”). Attorney argument does not suffice. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (unexpected results must be
established by factual evidence).
Moreover, as the Examiner finds (Ans. 13), the Specification merely
provides a comparison between a surface treated current collector and an
untreated current collector. No comparison to the closest prior art, Fee, was
provided. In addition, Appellants provide a single example, Sample A, of
the invention, but neither indicate the actual dimensions of the whiskers
therein, nor provide any evidence or technical reasoning sufficient to
establish that the results for Sample A demonstrate similar results over the
entire range of dimensions recited in claim 1. A party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
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results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). Such burden requires Appellants to proffer factual evidence that
actually shows unexpected results relative to the closest prior art, see In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is
reasonably commensurate in scope with the protection sought by claim 1 on
appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens,
622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA
1972). On this record, Appellants have not met this burden. Accordingly,
we will sustain the Examiner’s rejection of device claim 1. Because
Appellants do not separately argue remaining dependent device claims 3, 4,
21—23, 26, and 29—31, these claims fall with claim 1.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting device claims 1,3,4,
22, 23, 26, and 29—31 under 35 U.S.C. § 103(a) as unpatentable over Lee,
Okazaki, and Sato is affirmed. However, for the reasons advanced in the
Appeal and Reply Briefs, the decision of the Examiner rejecting method
claims 13—16, 19, 20, 24, 25, 27, and 28 under 35 U.S.C. § 103(a) as
unpatentable over Lee, Okazaki, Sato, and Elhamid, is reversed.
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-IN-PART
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