Ex Parte Seki et al

Patent Trials and Appeals Board

Jan 28, 2019

13995880 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/995,880 06/19/2013 Masakazu Seki
26389 7590 01/30/2019
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 Third Avenue
Suite 3600
Seattle, WA 98101
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.
SKLF141302 6006
EXAMINER
MORILLO, JANELL COMBS
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKAZU SEKI, SATOSHI SUZUKI,
TOMOHIKO FURUTANI, KENJI YAMAMOTO, and
KOICHI ASHIZAWA
Appeal2018-000770
Application 13/995,880
Technology Center 1700
Before JAMES C. HOUSEL, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claim 1. 3 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
1 Our Decision refers to the Specification ("Spec.") filed June 19, 2013, the
Examiner's Final Office Action ("Final Act.") dated January 11, 2017,
Appellants' Appeal Brief ("Appeal Br.") filed May 5, 2017, the Examiner's
Answer ("Ans.") dated September 12, 2017, and Appellants' Reply Brief
("Reply Br.") filed October 30, 2017.
2 Appellants identify UACJ Corporation and UACJ Foil Corporation as the
real parties in interest (Appeal Br. 3).
3 Pending claim 2 has been withdrawn from consideration by the Examiner
and is not before us on appeal.
Appeal2018-000770
Application 13/995,880
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to an aluminum foil for use as positive electrode
material in lithium-ion secondary batteries (Spec. ,r 1 ). Appellants disclose
that, although aluminum foils whose Al purity is 99% or more has been used
as electrodes due to their high electrical conductivity, the high Al purity
makes it difficult to improve the foil strength (id. ,r 6). Appellants disclose
an inventive aluminum foil having high post-drying strength after
application of an active material while keeping a high electrical conductivity
(id. ,r 10). Appellants disclose that the inventive aluminum foil is produced
by subjecting an aluminum alloy ingot to a homogenizing treatment at high
temperature and regulating the solid solution precipitation conditions (id. ,r
11 ).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. Indenting and
paragraphing have been added and the limitations at issue are italicized to
facilitate understanding of the claim.
1. An aluminum alloy foil for an electrode current collector,
compnsmg
0.03 to 0.1 mass% (hereinafter, "mass%" is simply
referred to as"%") of Fe,
0.01 to 0.1 % of Si, and
0.0001 to 0.01 % of Cu,
with the rest being Al and unavoidable impurities,
wherein the aluminum alloy foil after final cold rolling has a
tensile strength of 180 MPa or higher, a 0.2% yield strength of
160 MPa or higher, and an electrical conductivity of 60% IACS
or higher; and
the aluminum alloy foil has a tensile strength of 170 MPa
or higher and a 0.2% yield strength of 150 MPa or higher even
2
Appeal2018-000770
Application 13/995,880
after the aluminum alloy foil is subjected to heat treatment at
any of 120°C for 24 hours, 140°C for 3 hours, and 160°C for 15
minutes.
REJECTIONS
The Examiner maintains, 4 and Appellants request our review of, the
following grounds of rejection:
1. Claim 1 under 35 U.S.C. § 102(b) as anticipated by Hiroshi; 5
2. Claim 1 on the ground of non-statutory double patenting as
unpatentable over claims 1 and 2 of each of U.S. Patent Nos.
9,543,588, 6, 9,666,867, 7 and 9,715,971, 8 claims 1 and 3 of U.S. Patent
No. 9,698,426, 9, and claim 1 of each of U.S. Patent Nos. 9,847,530, 10
and 10,050,257; 11 , 12 and
4 In the Final Office Action, the Examiner set forth seven non-statutory
double patenting rejections (Final Act. 7-10, ,r,r 13-19). In the Examiner's
Answer, the Examiner repeated only six of these double patenting rejections,
although the Examiner states that every ground set forth in the Final Office
Action is maintained (no rejection was withdrawn). However, Appellants
acknowledge that the provisional double patenting rejection not repeated in
the Answer over claims 1 and 3 of copending U.S. Patent Application No.
14/395,455 is pending (Reply Br. 2). We, therefore, hold the Examiner's
omission of this seventh double patenting rejection to be inadvertent. We
have revised the list of pending rejections to correct this omission.
5 Hiroshi et al., JP 11-162470, published June 18, 1999 ("Hiroshi").
6 Seki et al., US 9,543,588 B2, issued January 10, 2017.
7 Seki et al., US 9,666,867 B2, issued May 30, 2017.
8 Suzuki et al., US 9,715,971 B2, issued July 25, 2017.
9 Furutani et al., US 14/395,455, filed October 17, 2014; now US 9,698,426
B2, issued July 4, 2017.
10 Seki et al., US 14/235,779, filed January 28, 2014; now US 9,847,530 B2,
issued December 19, 2017.
11 Seki et al., US 13/995,916, filed June 19, 2013; now US 10,050,257 B2,
issued August 14, 2018.
12 We have converted each of the non-statutory double patenting rejections
over copending U.S. Patent Application Nos. 13/995,916, 14/235,779, and
3
Appeal2018-000770
Application 13/995,880
3. Claim 1, provisionally, on the ground of non-statutory double
patenting as unpatentable over claim 1 of copending U.S. Patent
Application No. 14/235,748. 13
ANALYSIS
Rejections 2 and 3
We note Appellants did not request our review of, or challenge or
otherwise mention, any of the Examiner's provisional and non-provisional
non-statutory double patenting rejections in the Appeal Brief. In the Reply
Brief, Appellants present a new argument not raised in the Appeal Brief
concerning only the non-statutory double patenting rejections over U.S.
Patent Nos. 9,543,588 and 9,666,867 (Reply Br. 1--4). Under regulations
governing appeals to the Board, any new argument not timely presented in
the Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See 3 7 C.F .R. § 41.41. See also Ex parte
Borden, 93 USPQ2d 1473, 1476-77 (BPAI 2010) (informative). Appellants
have provided this record with no such showing. As such, we will not
consider this new argument in the Reply Brief. 14
14/395,455 to non-provisional rejections because each of these patent
applications has issued as a patent. In view of this, we note that the scope of
the claims of the copending Applications may have changed from the scope
of the claims as addressed by the Examiner during prosecution and the
Examiner may have to ascertain the appropriateness of these rejections.
13 Seki et al., US 14/235,748, filed January 28, 2014.
14 We note Appellants' argument that the copending claims of US 9,543,588
and US 9,666,867 recite an amount of Mn of 0.01 % or less, suggesting that
Mn is not an unavoidable impurity within the scope of claim 1 in this case
(Reply Br. 2). We also note that Appellants identify an amount of
unavoidable impurities to be preferably 0.02% or less, which encompasses
4
Appeal2018-000770
Application 13/995,880
Therefore, for the reasons given by the Examiner, we summarily
affirm each of the Examiner's non-statutory double patenting rejections.
Rejection 1
We review the appealed rejection for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections.")). After considering
the evidence presented in this Appeal and each of Appellants' arguments, we
are persuaded that Appellants identify reversible error in the Examiner's
finding of anticipation. Thus, we affirm the Examiner's rejections ( except
where explained below) for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
A claim is anticipated only where "each and every limitation is found
either expressly or inherently in a single prior art reference." Celeritas
Techs., Ltd. v. Rockwell Int'l. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
"A claimed invention cannot be anticipated by a prior art reference if the
allegedly anticipatory disclosures cited as prior art are not enabled." Amgen,
Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003).
In particular, the teaching of the reference must enable those skilled in the
art to make the claimed invention without undue experimentation. In re
Elsner, 381 F.3d 1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d
929,939 (CCPA 1962).
the amount of Mn recited in the copending claims of these two patents
(compare Spec. ,r 19 with US 9,543,588, 4:59---61, and US 9,666,867, 5:3-5).
5
Appeal2018-000770
Application 13/995,880
The Examiner finds Hiroshi teaches an aluminum alloy foil for a
current collector, the alloy consisting or of 0.005 wt.% Cu, 0.05 wt.% Fe,
0.03 wt.% Si, and the balance being aluminum, wherein the alloy has a
tensile strength of 200 MPa (Ans. 3). The Examiner finds that this alloy
compositionally falls within the compositional ranges recited in claim 1 and
also meets the recited tensile strength (id.). However, the Examiner
acknowledges that Hiroshi fails to teach the alloy's electrical conductivity
(YS) or its properties after heat treating according to the recited parameters
(id.). Nonetheless, the Examiner finds that Hiroshi's aluminum alloy would
inherently possess the recited electrical conductivity and recited properties
after heat treatment because Hiroshi's alloy "falls within the claimed
alloying ranges" (id., citing In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990);
In re Best, 562 F.2d 1252, 1254--5 (CCPA 1977); Atlas Powder Co. v. Ireco
Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); MPEP 2112.01).
Appellants argue that Hiroshi is not enabled for a high Al purity alloy
have a tensile strength of 200 MPa and, therefore, cannot anticipate claim 1
(Appeal Br. 5). Appellants contend that Hiroshi fails to disclose any process
of producing a high Al purity alloy with a tensile strength of 200 MPa (id. at
7). Appellants concede that Hiroshi discloses a process of roughening the
surface through the use of wet blasting, but discloses a recommended tensile
strength that avoids damage from this wet blasting (id.).
In support of this argument, Appellants direct attention to the
Declaration under 37 C.F.R. § 1.132 ofKenji Yamamoto ("first Yamamoto
Declaration" or "1st Deel.") filed May 9, 2016, and the Declaration under 37
C.F .R. § 1.132 of Kenji Yamamoto ("second Yamamoto Declaration" or
"2nd Deel.") filed November 22, 2016 (Appeal Br. 6, 8-12). Appellants
6
Appeal2018-000770
Application 13/995,880
assert that the characteristics of an aluminum alloy have a general range
depending on composition (id. at 8-9; 2nd Deel. ,r 5). Appellants also assert
that high Al purity alloys such as that of claim 1 "generally have lower
tensile strength when the purity of Al rises, as can be seen with 1000 series
aluminum alloys" (Appeal Br. 9; 2nd Deel. ,r 6). As such, Appellants
contend that characteristics of an aluminum alloy are determined by the
alloy's microstructure, which in tum is realized not only by the alloy's
composition, but by restricting the alloy's manufacturing conditions (Appeal
Br. 1 O; 1st Deel. ,r 6).
Appellants next urge that Hiroshi's aluminum alloy of Example 1 is unusual
because, despite its high purity (which the ordinary artisan would expect to
have a lower tensile strength), Hiroshi teaches it has a high tensile strength
(Appeal Br. 10-11; 2nd Deel. ,r 6). As such, Appellants contend that
Hiroshi's Example 1 alloy has a disclosed tensile strength that is against the
common knowledge in the art that "tensile strength becomes lower as the
purity of Al becomes higher" (Appeal Br. 11; 2nd Deel. ,r,r 6, 7). Because
elemental composition alone would not be expected to produce similar
tensile strength as Hiroshi's Example 1 alloy, and there is no disclosure as to
the manufacturing conditions of this alloy that would give such an unusually
high tensile strength of 200 MPa, Appellants argue that those skilled in the
art cannot produce Hiroshi's Example 1 alloy without undue
experimentation (Appeal Br. 12-13).
In response, the Examiner acknowledges that high purity Al alloys
typically have lower strength than that of claim 1 and Hiroshi's Example 1
alloy (Ans. 8). In addition, the Examiner acknowledges that the strength of
an alloy is dependent on the heat treatment temper (id.). The Examiner
7
Appeal2018-000770
Application 13/995,880
notes Appellants' argument that "both the composition and the
manufacturing conditions are necessary to determine the characteristics of an
aluminum alloy" (id.; Appeal Br. 10). However, the Examiner finds that
"[o ]ne of skill in the art would know the processing conditions (i.e. work-
hardening a foil by cold rolling, etc) necessary to optimize strength for a
given alloy composition" (Ans. 8, ,r 10; see also, id. at 9, ,r 11). The
Examiner determines that Appellants have not shown that Hiroshi's
Example 1, rather than AA1080, processed into a thin foil, and further
processed as set forth in Hiroshi, would not have the tensile strength Hiroshi
discloses (id.). The Examiner also determines that Appellants have not
provided "specific evidence clearly showing that [Hiroshi's alloy foil] does
not have the claimed properties" (id. at 9, ,r 12). The Examiner further
determines that, though Hiroshi fails to disclose the exact parameters for
cold rolling and forming the Example 1 alloy foil, "one of skill in the art
would have been enabled to have formed said [Example 1] alloy foil by
conventional processing" (id. at 11, ,r 14).
Appellants' arguments and evidence is persuasive that the Hiroshi
disclosure fails to enable those of ordinary skill in the relevant art to make
the Example 1 alloy such that it has a tensile strength of 200 MPa.
Appellants' evidence establishes that an aluminum alloy's composition and
manufacturing conditions both contribute to the alloy's microstructure that
dictates its properties. Moreover, Appellants' evidence establishes that
Hiroshi's Example 1 alloy is unusual in that it is disclosed to have a high
tensile strength well above those of alloys that are compositionally similar.
Appellants' evidence further establishes that alloys that are conventionally
processed to have high tensile strength have low electrical conductivity, and
8
Appeal2018-000770
Application 13/995,880
alloys that are conventionally processed to have high electrical conductivity
have low tensile strength. Finally, there is no dispute that Hiroshi fails to
disclose the manufacturing conditions for producing the Example 1 alloy foil
having a tensile strength of 200 MPa. Given Appellants' evidence, we are
persuaded that, following conventional processing, Hiroshi fails to enable an
Example 1 alloy foil that not only has a tensile strength of 200 MP a, but also
inherently has an electrical conductivity of 60% IACS or higher.
Contrary to the view of the Examiner, Appellants are not required to
produce Hiroshi's Example 1 alloy foil to establish that Hiroshi fails to
enable production of an alloy foil having the properties recited in claim 1.
Indeed, requiring such would necessitate experimentation to determine the
manufacturing conditions necessary to produce the Example 1 alloy foil
having a tensile strength of 200 MP a because there is no dispute that Hiroshi
fails to disclose these conditions. Appellants' evidence suggests that such
experimentation would not be routine. Instead, Appellants are merely
required to establish by a preponderance of the evidence that the ordinary
artisan would not have a reasonable expectation of successfully producing
an alloy foil as recited in claim 1 following Hiroshi's teaching without
undue experimentation. Here, based on Appellants' evidence, the ordinary
artisan would understand that a high purity Al alloy foil such as Hiroshi's
Example 1 would not likely have both a high tensile strength and a high
electrical conductivity following conventional manufacturing conditions.
Therefore, we are persuaded that Appellants have identified reversible
error in the Examiner's finding of anticipation by Hiroshi because Hiroshi is
not enabled to produce an aluminum alloy foil having the composition and
9
Appeal2018-000770
Application 13/995,880
properties as recited in claim 1. Accordingly, we do not sustain the
Examiner's anticipation rejection of claim 1.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting claim
1 under 35 U.S.C. § 102(b) as anticipated by Hiroshi is reversed.
However, upon consideration of the record, and for the reasons given
above and in the Final Office Action and the Examiner's Answer, the
decision of the Examiner rejecting claim 1 on the ground of non-statutory
double patenting as unpatentable over each of claims 1 and 2 of U.S. Patent
No. 9,543,588, claims 1 and 2 of U.S. Patent No. 9,666,867, and claims 1
and 2 of U.S. Patent No. 9,715,971, and provisionally rejecting claim 1
on the ground of non-statutory double patenting over each of claim 1 of
copending U.S. Patent Application No. 13/995,916, claim 1 of copending
U.S. Patent Application No. 14/235,748, claim 1 of copending U.S. Patent
Application No. 14/235,779, and claims 1 and 3 of copending U.S. Patent
Application No. 14/395,455, is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
10