Ex Parte Tsuji et al

Patent Trial and Appeal BoardAug 31, 2017

14122962 (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. 14/122,962 11/27/2013 Tomoki Tsuji 071025-0097 1080 53080 7590 09/05/2017 McDermott Will and Emery LLP The McDermott Building 500 North Capitol Street, N.W. WASHINGTON, DC 20001 EXAMINER RHEE, JANE J ART UNIT PAPER NUMBER 1726 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): mweipdocket @ mwe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMOKI TSUJI, TAKAYUKI SHIRANE, and SHINJI MINO Appeal 2016-006703 Application 14/122,962 Technology Center 1700 Before CATHERINE Q. TIMM, CHRISTOPHER L. OGDEN, and MERRELL C. CASHION, JR., Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1—4 under 35 U.S.C. § 102(a) as 1 In explaining our Decision, we cite to the Appeal Brief dated December 4, 2015 (Appeal Br.), the Examiner’s Answer dated April 22, 2016 (Ans.), and the Reply Brief dated June 21, 2016 (Reply Br.). 2 Appellant is Applicant, Panasonic Corporation, which is identified in the Brief as the real party in interest. Appeal Br. 1. Appeal 2016-006703 Application 14/122,962 anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Tan.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a nonaqueous electrolyte secondary battery and a method for making it. Claim 1 is illustrative: 1. A nonaqueous electrolyte secondary battery, comprising: a positive electrode containing a positive electrode active material composed of a lithium-containing transition metal oxide having a layered crystal structure; a negative electrode containing a negative electrode active material composed of a Ti-based oxide and an additive composed of fluorinated carbon that reacts with lithium at a more noble potential as compared to the negative electrode active material; a separator disposed between the positive electrode and the negative electrode; and a nonaqueous electrolyte, wherein voltage of the battery reaches a discharge cut-off voltage by a potential change in the negative electrode. Claim Appendix, Appeal Br. 9. OPINION Appellant’s claims require the presence of both a positive electrode including a lithium-containing transition metal oxide of layered crystal structure and a negative electrode including a Ti-based oxide. The preamble 3 Tan et al., US 2012/0140378 Al, published June 7, 2012. 2 Appeal 2016-006703 Application 14/122,962 requires these two electrodes be part of a nonaqueous electrolyte secondary battery. Tan is directed to a battery that has both an air electrode and a capacitive electrode. Tan 11. It is undisputed that the air electrode can be either one of the positive or negative electrodes, but that in all cases, one of the electrodes must be an air electrode. Compare Ans. 4, with Appeal Br. 4— 5; Reply Br. 3; see also Tan 1 52. According to the Examiner, Tan discloses in paragraph 12 “that the air electrode can be the negative electrode which is a Ti-based oxide active material.” Ans. 4. The evidence does not support a finding that the negative electrode is both an air electrode and a Ti-based oxide active material. First, paragraph 12 does not support the finding. Paragraph 12 states that “the air electrode could be used as the negative electrode instead of using as a positive electrode as in the prior art air batteries.” Tan then explains the advantages of using the air electrode as the negative electrode instead of as the positive electrode, stating that “[cjurrent safe lithium-ion batteries focus on using Li4Ti50i2 as the negative electrode material because of its relatively high redox potential (-1.5 V vs. Li/Li) and negligible volume expansion/contraction during cycling,” but that using an air electrode instead of an Li4Ti5012 negative electrode could double the energy density of the device. Tan 112. Thus, paragraph 12 conveys that the air electrode is a substitute for Li4Ti50i2 in the negative electrode, not that the negative electrode is both an air electrode and formed from Li4Ti50i2. It is the capacitive electrode that may be formed of Li4Ti50i2, not the air electrode. Tan 1111,25 (“Li4Ti50 12 may be used as the capacitive material to provide long cycling stability.”). 3 Appeal 2016-006703 Application 14/122,962 Moreover, as pointed out by Appellants, Tan does not disclose forming the air electrode from either a lithium-containing transition metal oxide having a layered crystal structure, or a Ti-based oxide, such as Li4Ti50i2, and an additive composed of fluorinated carbon that reacts with lithium at a more noble potential. Reply Br. 3; Tan || 54—77. Thus, a teaching of using the two electrode materials of the claims together in a battery is lacking. Appellant has identified a reversible error in the Examiner’s rejection. CONCLUSION We do not sustain the Examiner’s rejection. DECISION The Examiner’s decision is reversed. REVERSED 4