Ex Parte Sato et alDownload PDFPatent Trial and Appeal BoardJun 22, 201713637772 (P.T.A.B. Jun. 22, 2017) Copy Citation 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. 13/637,772 09/27/2012 Hiroshi Sato F-10964 5973 21450 7590 Jordan and Koda, PLLC 230 Park Avenue, Suite 460 New York, NY 10169-0499 06/26/2017 EXAMINER HASKE, WOJCIECH ART UNIT PAPER NUMBER 1724 NOTIFICATION DATE DELIVERY MODE 06/26/2017 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): myip @j ordankoda.com info@jordankoda.us spkoda@ outlook. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI SATO, HIROSHI SASAGAWA, RIEKO KATO, TETSU TAKAHASHI, and TAKAYUKI FUJITA Appeal 2016-005226 Application 13/637,7721 Technology Center 1700 Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and MICHAEL G. McMANUS, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1—8, 10, and 12—16.2 3We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Appellants state that the real party in interest is “Namics Corporation” (Appeal Brief filed July 21, 2015 (as corrected on September 29, 2015), hereinafter “Appeal Br.,” 2). 2 Appeal Br. 7—18; Reply Brief filed April 18, 2016, hereinafter “Reply Br.,” 2— 12; Final Office Action entered March 2, 2015, hereinafter “Final Act.,” 3— 7; Examiner’s Answer entered February 25, 2016, hereinafter “Ans.,” 2— 5. Appeal 2016-005226 Application 13/637,772 BACKGROUND The subject matter on appeal relates to lithium ion secondary batteries (Specification, hereinafter “Spec.,” 11). Representative claim 1 is reproduced from the Claims Appendix (AI-1) to the Appeal Brief, with key limitations italicized, as follows: 1. A lithium ion secondary battery comprising a laminated body formed by laminating a first electrode layer and a second electrode layer on each other via an electrolytic region, wherein the first electrode layer and the second electrode layer comprise the same active material, and the active material is LhMnOi, and each of the first electrode layer and the second electrode layer is a mixture layer of the active material and a conductor material. REJECTION ON APPEAL On appeal, the Examiner maintains a rejection under pre-AIA 35 U.S.C. § 103(a) of claims 1—8, 10, and 12—16 as unpatentable over Iwaya et al.3 (WO 2008/099508 Al, published August 21, 2008) in view of Johnson et al. (US 2003/0180616 Al, published September 25, 2003; hereinafter “Johnson”). DISCUSSION Although the Appellants state that the claims do not stand or fall together (Appeal Br. 8), they rely on the same arguments for all claims on 3 Both the Examiner and the Appellants refer to this reference as “Fujita et al.” and rely on Iwaya et al. (US 2010/0075219 Al, published March 25, 2010 (hereinafter “Iwaya”)), as an English language equivalent thereof (see, e.g., Final Act 3; Appeal Br. 7). Therefore, we also cite to the Iwaya English language equivalent. 2 Appeal 2016-005226 Application 13/637,772 appeal {id. at 9-18). Therefore, we confine our discussion to claim 1, which we select as representative pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by this rule, all other claims stand or fall with claim 1. The Examiner finds that Iwaya describes a lithium ion secondary battery including every limitation recited in claim 1 except: (1) the disclosed active materials in the first and second electrode layers, respectively, are not described as being the same active materials; and (2) Li2Mn03 is not named as a suitable species of the disclosed genus expressed as “lithium manganese composite oxide” (Final Act 3—4). The Examiner finds further, however, that Johnson discloses that symmetrically designed cells—e.g., Li(Mno.5Nio.5)02/electrolyte/Li(Mn0.5Nio.5)02—provide superior safety characteristics relative to conventional lithium-ion cells and suggests that Li2Mn03 is another example of a compound that can be used in such symmetrically designed cells {id. at 4). Based on these findings, the Examiner concludes {id.): It would have been obvious to one of ordinary skill in the art... to use Li2Mn03, as disclosed by Johnsonf,] as [the] active material for both electrodes in . . . Iwaya[’s battery], because such [a] symmetric battery should provide superior safety characteristics over conventional lithium-ion cells, as taught by Johnson. The Appellants contend that the two references included in the Evidence Appendix to the Appeal Brief—namely, Hellstrom et al.4 (hereinafter “Hellstrom”) and Choi et al.5 (hereinafter “Choi”)—demonstrate 4 E.E. Hellstrom et al., Li Ion Conduction in Li2Zr03, Li4Zr04, andLiSc02, 2 Solid State Ionics 59-64 (1981). 5 Hyun Chul Choi et al., A Study of the Mechanism of the Electrochemical Reaction of Lithium with CoO by Two-Dimensional Soft X-ray Absorption 3 Appeal 2016-005226 Application 13/637,772 that a person having ordinary skill in the art would not have combined Iwaya and Johnson in the manner claimed by the Appellants (Appeal Br. 10—11). Specifically, the Appellants argue that “not all the active materials disclosed in paragraph 0031 of Johnson . . . can be used for both electrodes” {id. at 11).* * 6 In addition, the Appellants argue that Choi would have suggested that “FiCoCF cannot be used for a negative electrode (because Li cannot be intercalated)” {id. at 15). The Appellants argue that “[although Johnson discloses using the same active material for both positive and negative electrodes, the features of the active materials disclosed by [Iwaya] are completely different than those described by Johnson” and, therefore, “one would not look to Johnson ... for active materials to be used in [Iwaya]” {id. at 14). In any event, the Appellants urge that, in contrast to the disputed limitations recited in claim 1, Iwaya “only suggests using two active materials having different electric potentials for any given embodiment” {id. at 12-13). The Appellants’ arguments fail to identify a reversible error in the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Iwaya places no particular limitation on the selection of the active materials, including the preferred lithium manganese composite oxide materials, that may be used to form the electrode layers (193). Although Iwaya teaches an embodiment in which an active material with a higher electric potential “can be used” as a positive electrode active material and an active material with a lower electric potential “can be used” as a negative Spectroscopy (2DXAS), 2D Raman, and 2D Heterospectral XAS—Raman Correlation Analysis, 107 J. Phys. Chem. B. 5806—11 (2003) 6 This argument appears to be based on Hellstrom’s disclosure {id. at 14). 4 Appeal 2016-005226 Application 13/637,772 electrode material (194), the reference does not say that the active materials in both the positive and negative materials must be the same. To the contrary, the two occurrences of the phrase “can be used” in paragraph 94 would have suggested otherwise. As explained by our reviewing court, “in a section 103 inquiry, ‘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. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Thus, in view of Johnson’s disclosure that similar lithium cells with symmetric designs—i.e., cells in which electrodes of identical active materials (e.g., Li(Mn0.5Nio.5)02 or LFMnCf) sandwich an electrolyte—offer superior safety characteristics flflf 30-32, 41, 45), we are in complete agreement with the Examiner’s obviousness conclusion. Specifically, we share the Examiner’s view that a person having ordinary skill in the art would have been prompted to combine Iwaya and Johnson in the manner claimed by the Appellants in order to obtain the advantage disclosed in Johnson. We find no persuasive merit in the Appellants’ reliance on Hellstrom and Choi. First, the Appellants’ arguments do not include a reasonably specific discussion of the actual teachings in these references.7 Second, as the Examiner points out (Ans. 5), Hellstrom’s disclosure appears to relate to an investigation of suitable electrolyte materials—not anode active materials (Hellstrom 59), while Choi’s disclosure relates to reaction of lithium with 7 Mere conclusory statements are entitled to little or no probative value. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). 5 Appeal 2016-005226 Application 13/637,772 CoO—not usage as an electrode active material of the type disclosed in either Iwaya or Johnson (Choi 5806). In any event, the Appellants fail to direct us to any sufficient basis upon which to conclude that Hellstrom and Choi would have negated the suggestion in Iwaya and Johnson that Li2Mn03 would reasonably be expected to be suitable as an active material for both electrodes. For these reasons and those given by the Examiner, we sustain the Examiner’s rejection. SUMMARY The Examiner’s final decision to reject claims 1—8, 10, and 12—16 as unpatentable over Iwaya in view of Johnson is affirmed. 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 6 Copy with citationCopy as parenthetical citation