Ex Parte Suzuki et al

Patent Trial and Appeal BoardAug 3, 2017

12784893 (P.T.A.B. Aug. 3, 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. 12/784,893 05/21/2010 Hisashi Suzuki 145651 9748 25944 7590 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER AMPONSAH, OSEI K ART UNIT PAPER NUMBER 1729 NOTIFICATION DATE DELIVERY MODE 08/07/2017 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): OfficeAction25944@oliff.com j armstrong @ oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HISASHI SUZUKI, KEITARO OTSUKI, and MASAYOSHI HIRANO Appeal 2016-001686 Application 12/784,893 Technology Center 1700 Before CATHERINE Q. TIMM, JULIA HEANEY, and JEFFREY R. SNAY, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner’s decision to reject claims 1,3,4, 5, and 7 under 35 U.S.C.§ 103(a). The Examiner rejects claims 1, 4, 5, and 7 as obvious over 1 In explaining our Decision, we cite to the Specification dated May 21, 2010 (Spec.), Final Office Action dated July 30, 2014 (Final), the Appeal Brief dated April 20, 2015 (Appeal Br.), the Examiner’s Answer dated September 25, 2015 (Ans.), and the Reply Brief dated November 16, 2015 (Reply Br.). 2 Appellants identify the real party in interest as TDK Corporation. Appeal Br. 1. Appeal 2016-001686 Application 12/784,893 Chen3 in view of Nuspl,4 Sun,5 and Levasseaur.6 To reject claim 3, the Examiner adds Dobbs.7 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The claims are directed to an active material (see, e.g., claim 1), a lithium-ion secondary battery comprising a positive electrode containing the active material (see, e.g., claim 3), and a method of manufacturing active material (see, e.g., claim 4). In rejecting the claims, the Examiner finds that the combination of Chen, Nuspl, Sun, and Levasseur renders obvious the method of forming the active material according to claim 4 such that the active material of claim 1 is inherently formed. Final 4—6. Because the Examiner’s rejections focus on the method of manufacturing, we reproduce claim 4, with some key limitations highlighted: 4. A method of manufacturing an active material, the method comprising: a hydrothermal synthesis step of irradiating a mixture containing a lithium source, a phosphate source, a manganese source, and water and having a pH of 7 to 9 with an electromagnetic wave, so as to heat the mixture under pressure 3 Chen, J., Wang, S., & Whittingham, M. S., Hydrothermal synthesis of cathode materials. Journal of Power Sources, 174(2), 442-448 (2007). doi:10.1016/j.jpowsour.2007.06.189. 4 Nuspl et al., US 2007/0054187 Al, published Mar. 8, 2007. 5 Sun, US 6,046,373, issued Apr. 4, 2000. 6 Levasseur et al., WO 2008/077447 Al, published July 3, 2008. 7 Dobbs et al., US 2008/0280141 Al, published Nov. 13, 2008. 2 Appeal 2016-001686 Application 12/784,893 such that the mixture reaches a crystal growth temperature T of 180°C or higher, wherein the mixture is caused to reach the crystal growth temperature T at a heating rate of 5 to 50°C/min in the hydrothermal synthesis step. Appeal Br. Claims Appendix A-l (emphasis added). As can be seen above, claim 4 requires the active material be hydrothermally synthesized by irradiating a specified mixture with an electromagnetic wave. Chen teaches hydrothermally synthesizing the mixture in an autoclave at 200 °C for 2 days. Chen §2.1 12. The Examiner acknowledges that Chen fails to teach irradiating and turns to Sun as evidence to support the conclusion of obviousness with respect to irradiating. Final 7. Appellants contend that Sun is non-analogous art and fails to support the Examiner’s finding of a suggestion to irradiate the mixture of Chen. Appeal Br. 4—9; Reply Br. 1—5. We agree. Appellants’ invention, as well as Chen’s investigation, is directed to the hydrothermal synthesis of active material for use in a lithium-ion battery. Spec. 11; Chen Abstract. Appellants and Chen seek to improve the electrochemical properties and discharge capacity of the battery. Spec. 112; Chen Abstract. Sun is directed to a method of modifying and treating an oxygenate - to-olefm catalyst. Sun col. 1,11. 50—58. Sun discloses treating, such as by hydrothermally treating with a steam-containing gas, a catalyst in the presence of electromagnetic energy. Sun col. 2,1. 58—col. 3,1. 23; col. 4,11. 12—21. The treated catalyst is then used in a process of converting an 3 Appeal 2016-001686 Application 12/784,893 oxygenate feed into olefins. Sun col. 6,11. 14—28. The treatment enhances the performance of the catalyst. Id. “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). Given the scope of the claimed invention and the subject matter of the prior art, in the case before us, this two-part test is relevant for deciding the issue of whether Sun qualifies as analogous art. In the present case, the Examiner fails to establish that Sun’s teaching of treating a catalyst is related to the field of endeavor of Appellants, i.e., the synthesis of active material for use in lithium-ion batteries. Nor has the Examiner established that Sun is reasonably pertinent to a problem that would have faced the inventor in synthesizing the active material. In fact, the Examiner fails to find facts related to the two-part analogousness test, but instead redirects the analysis to the question of reason to combine. Ans. 12—15. This is reversible error in this case. We further agree with Appellants that the Examiner’s finding of a suggestion to irradiate the synthesis mixture of Chen lacks evidentiary support. Appeal Br. 8—9. According to the Examiner, “it would have been obvious to one of ordinary skill in the art to use electromagnetic wave[s] in the hydrothermal step because Sun discloses that such modification can stimulate and improve the growth of the crystal material (column 1, lines 59- 66)”. Final 7. The Examiner’s rationale lacks support. Column 1, lines 59— 4 Appeal 2016-001686 Application 12/784,893 66 of Sun merely teaches that using electromagnetic energy may improve certain aspects of a catalyst modification process such as reaction time, flexibility, efficiency, and cost. There is no mention of crystal growth here. There is a disclosure that the modification may change the crystallinity of zeolite catalysts (Sun col. 2,11. 64—67), but this is a treatment of an already formed catalyst. Chen’s process of synthesizing an active material from an aqueous solution of MnSCVEfO, H3PO4, and LiOH is much different than the post-treatment of a catalyst. Given the differences in processing, the Examiner was required to provide evidence or technical reasoning to explain how the disclosure of Sun would have led the ordinary artisan to make the leap required to modify the process of Chen. The Examiner’s rationale fails to bridge the gap and thus fails to support the conclusion of obviousness. We further agree with Appellants that the Examiner reversibly erred in finding a suggestion within Nuspl of heating such that the mixture reaches the crystal growth temperature T of 180°C or higher at a heating rate of 5 to 50 °C/min. First, the rate of 1.22 °C/min calculated by the Examiner (Final 5) is not within the claimed range. Second, Nuspfs disclosure does not support the Examiner’s calculated range of 2.33 to 6.33 °C/min. The Examiner uses the treatment time of 0.5 to 15 hours taught by Nuspl (Nuspl 133) to calculate the heat-up time, but the treatment time is the time at which the treatment takes place (holding time), not the time taken to heat the mixture to the treatment temperature. Third, the general disclosure of Chen does not provide evidence that those of ordinary skill in the art understood the heat-up time to be a result effective variable for obtaining an optimized or workable crystal size or some other result where routine experimentation 5 Appeal 2016-001686 Application 12/784,893 would have led to a rate within the range of the claim. Thus, the Examiner has failed to provide sufficient evidence supporting the finding that Nuspl would have suggested to one of ordinary skill in the art heating to 180°C or higher at a heating rate of 5 to 50 °C/min as required by claim 4. All the rejections as to all the claims are deficient for the above reasons. CONCLUSION We do not sustain the Examiner’s rejections. DECISION The Examiner’s decision is reversed. REVERSED 6