Ex Parte Sato et al

Patent Trial and Appeal Board

Jun 22, 2017

13637772 (P.T.A.B. Jun. 22, 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.
13/637,772 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
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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
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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
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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
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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).
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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