Ex Parte Watanabe et al

Patent Trial and Appeal Board

Aug 31, 2017

13191278 (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.
13/191,278 07/26/2011 Hidetoshi Watanabe 076885.0125 3778
23640 7590 09/05/2017
Baker Botts L.L.P.
910 Louisiana Street, One Shell Plaza
HOUSTON, TX 77002
EXAMINER
DIGNAN, MICHAEL L
ART UNIT PAPER NUMBER
1723
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):
debie.hernandez @ bakerbotts. com
susan.stewart@bakerbotts.com
sydney.oldham@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDETOSHI WATANABE, HARUCHIKAISHII,
HIROKIINAGAKI, MASATAKA SHIKOTA,
TOSHIHIDE ARIKAWA, HIROTADA TAHARA,
KAZUKO NEWTON, TERUO HIRUMA,
YOSHIAKI ASAMI, and YUICHI KIKUMA
Appeal 2017-001801
Application 13/191,27 s1
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision finally rejecting claims 1 and 3—14 under 35 U.S.C.
1 According to Appellants, the real party in interest is Toshiba Corporation.
Appeal Br. 2.
Appeal 2017-001801
Application 13/191,278
§ 103(a) as unpatentable over Li2 in view of Kinoshita,3 Takami,4 and
Shinohara,5 and rejecting claims 15—20 under 35 U.S.C. § 103(a) as
unpatentable over Li in view of Kinoshita, Takami, Shinohara, and
Schormann.6
We have jurisdiction under 35 U.S.C. § 6(b).7
We AFFIRM.
The subject matter on appeal relates to non-aqueous electrolyte
batteries, methods for manufacturing non-aqueous electrolyte batteries, and
methods for powering electrical equipment using a non-aqueous electrolyte
battery (see, e.g., claims 1, 8, and 15). Appellants disclose that the demand
for rechargeable batteries has increased and lithium ion rechargeable
batteries have attracted attention due to their high energy density but the
cycle life for batteries with a lithium-titanium composite oxide is short.
Spec. 12. In view of this, Appellants disclose a non-aqueous electrolyte
battery having an improved cycle life. Id. 13.
2 Perron et al., WO 2006/026585 A2, published Mar. 9, 2006 (although
Perron is the first listed inventor, both the Examiner and Appellants refer to
this reference as “Li,” after the second listed inventor, so we do so as well
for purposes of consistency).
3 Kinoshita et al., JP 2007-134047 A, published May 31, 2007 (“Kinoshita”).
4 Takami et al., US 7,745,049 B2, issued June 29, 2010 (“Takami”).
5 Shinohara et al., US 6,447,958 Bl, issued Sept. 10, 2002 (“Shinohara”).
6 Schormann et al., US 2008/0274394 Al, published Nov. 6, 2008
(“Schormann”).
7 Our Decision refers to the Appellants’ Specification (Spec.) filed Sept. 3,
2014, Appellants’ Appeal Brief (Appeal Br.) filed May 12, 2016, the
Examiner’s Answer (Ans.) dated Sept. 15, 2016, and Appellants’ Reply
Brief (Reply Br.) filed Nov. 15, 2016.
2
Appeal 2017-001801
Application 13/191,278
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.8 Limitations at issue are italicized.
1. A non-aqueous electrolyte battery comprising:
a positive electrode including a positive electrode layer
formed on at least one surface of a positive electrode collector;
a negative electrode including a negative electrode layer
formed on at least one surface of a negative electrode collector;
a polyethylene separator containing SiC>2 particulate in an
amount of approximately 50 wt.% disposed between the positive
electrode and the negative electrode; and
a non-aqueous electrolyte containing a lithium salt with a
concentration of LiBF4 and with a concentration of LiPF6
wherein:
the negative electrode layer contains a negative
electrode active material which can insert and release
lithium ions at 0.4 V or more (vs. Li/Li+),
the concentration of LiPId> within the lithium salt is
less than 50% and greater than 0% of the salt, and
the following formulae (I) and (II) are satisfied:
1 < Q2/Q1 (I)
1 < C/A <2 (II),
wherein:
a portion facing the positive electrode through the
separator of the negative electrode layer is a facing portion
of the negative electrode,
a portion facing the negative electrode through the
separator of the positive electrode layer is a facing portion
of the positive electrode,
Q1 represents a capacitance in the facing portion of
the negative electrode,
Q2 represents a capacitance in the facing portion of
the positive electrode,
A represents an area of a surface including the
facing portion of the negative electrode of the negative
electrode layer, and
8 Appeal Br. 8.
3
Appeal 2017-001801
Application 13/191,278
C represents an area of a surface including the
facing portion of the positive electrode of the positive
electrode layer.
B. DISCUSSION
Rejection of Claims 1 and 3—14
Claims 1 and 3—14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Li in view of Kinoshita, Takami, and Shinohara.
The Examiner finds Li discloses a positive electrode and a negative
electrode meeting the ratios recited in claim 1, a separator, and a nonaqueous
electrolyte including a lithium salt that can contain both LiPF6 and LiBF4.
Ans. 2. The Examiner finds Li discloses lithium titanate (i.e., the Li4Ti50i2
disclosed in Example 1 of Li) as the active material for the negative
electrode and lithium titanate would insert and release lithium ions at 0.4 V
or more (vs Li/Li+), as recited in claim 1. Id.
Appellants contend the Examiner has relied upon inherency for
determining the lithium titanate of Li would insert and release lithium ions at
0.4 V or more (vs Li/Li+), as recited in claim l,9 but the Examiner has not
provided any rationale or evidence to support inherency. Appeal Br. 5.
This argument is unpersuasive. Where patentability rests upon a
property of the claimed material not disclosed within the art, the PTO has no
reasonable method of determining whether there is, in fact, a patentable
difference between the prior art materials and the claimed material. In re
9 We note that the language “the negative electrode layer contains a negative
electrode active material which can insert and release lithium ions at 0.4 V
or more (vs. Li/Li+)” is permissive in nature, not exclusive, due to the use of
the language “can.” Therefore, claim 1 encompasses a negative electrode
active material that inserts and releases lithium ions at lower values such as
0.0 V vs. Li/Li+.
4
Appeal 2017-001801
Application 13/191,278
Best, 562 F.2d 1252, 1255 (CCPA 1977). Once the Examiner provides a
reasonable basis to believe that the characteristic is inherent, the burden
shifts to the applicant to prove that the prior art products do not necessarily
possess the characteristics of his claimed product. Id. at 1254—55
{discussing In re Swinehart, 439 F.2d 210 (CCPA 1971) and In re Ludtke,
441 F.2d 660 (CCPA 1971)).
Here, the Examiner finds paragraph 74 of Appellants’ Specification
states:
As the negative electrode active material, the material whose
potential at which lithium ions can be inserted and released
differs by 0.4 V or more (vs. Li/Li+) from the oxidation-
reduction potential of Li may be used. For example, preferred is
lithium titanate having a spinel structure, other lithium titanates,
titanium oxide, or iron sulfide. Particularly, the lithium titanate
having a spinel structure has a high charge-discharge efficiency,
and since the structural change in charge and discharge cycles is
small, the life is long. Thus, by virtue of the use of the lithium
titanate having a spinel structure, the effect of improving the
cycle life of the above described embodiment is notably
provided.
Ans. 8—9. The Examiner finds Takami discloses a spinel lithium titanate.
Ans. 3. The disclosure of Takami supports the Examiner’s finding by
disclosing the use of a negative electrode active material that can be a
“lithium titanate having a spinel structure such as LE+xTE0i2.” Takami
6:48—55. Li’s Example 1 discloses the use of LETf O12 in a negative
electrode. Li, 7:21—25.
The Examiner also finds paragraph 93 of the Specification states the
invention is achieved by the use of Li4Tf O12 and paragraph 98 and Tables 1
and 2 of the Specification demonstrate lithium titanate can insert and release
lithium ions at 0.4 V or more. Ans. 9. Paragraph 93 of the Specification
5
Appeal 2017-001801
Application 13/191,278
states “[t]he negative electrode active material, Li4Ti50i2, can insert and
release lithium ions at 0.4 V or more (vs. Li/Li+).” Li4Ti50i2 is listed as the
anode active material for most of the embodiments in Tables 1-1 and 1-2 of
the Specification10 and paragraph 99 of the Specification states “[t]he
negative electrode active materials used in producing Table 1 and Table 2
can insert and release lithium ions at 0.4 V or more (vs. Li/Li+).”
In view of the above, the Examiner has provided a reasonable basis to
believe that the claimed voltage for inserting and releasing lithium ions is
inherent to the lithium titanate of Li. As a result, the Examiner has made a
prima facie case of obviousness and the burden has shifted to Appellants to
prove that the negative electrode active material of Li does not necessarily
possess this characteristic.
Appellants’ arguments do not identity a reversible error in the
Examiner’s rejection. Appellants argue Li does not disclose that Li4+xTi50i2
has a spinel structure. Reply Br. 2. This argument is unpersuasive because
Takami discloses Li4+xTi50i2 has a spinel structure and Appellants’
Specification demonstrates Li4+xTi50i2 would possess the insertion and
release voltage characteristic recited in claim 1, as discussed above.
Appellants also argue both Li and Takami disclose particle size as affecting
cycling stability. Reply Br. 2. This argument does not demonstrate the
lithium titanate of Li would not possess the insertion and release voltage
characteristic of claim 1 because it regards cycling stability and Takami and
Appellants’ Specification demonstrate the lithium titanate of Li would
10 Spec. 11 102, 103.
6
Appeal 2017-001801
Application 13/191,278
possess the voltage characteristic of claim 1.11 Thus, a preponderance of the
evidence in the record supports the Examiner’s finding that the negative
electrode active material of Li would possess the insertion and release
voltage recited in claim 1.
Returning to the Examiner’s rejection, the Examiner finds Li does not
disclose a concentration of LiPF6 within the lithium salt is less than 50% and
greater than 0% of the salt, as recited in claim 1. Ans. 2. The Examiner
finds Kinoshita discloses a battery including a nonaqueous electrolyte
including LiBF4 and LiPF6, wherein LiPF6 is present in an amount of 1—35
wt%. Id. at 3. The Examiner finds Takami discloses the use of spinel
lithium titanate as a negative electrode active material in a battery that also
includes a nonaqueous electrolyte that may include both LiBF4 and LiPF6.
Id. The Examiner concludes it would have been obvious to modify Li to use
the lithium salt concentration of Kinoshita as a viable electrolyte material for
a nonaqueous battery.12 Id.
Appellants assert the combination of Li and Kinoshita would not have
been obvious by citing the disclosure in their Specification that using the
combination of the claimed concentration of LiBF6, a negative electrode
active material having the insertion and release voltage characteristic of
claim 1, and the ratios recited in claim 1 provides a battery with a high
capacity after 10,000 cycles, and a long cycle life even at 50°C. Appeal Br.
11 Appellants’ argument that Takami discloses an intercalating potential for a
negative electrode active material can be 0.4 V or more appears to support
the Examiner’s rejection, not refute it. Reply Br. 2.
12 The Examiner relies upon Shinohara for a disclosure of a polyethylene
separator including silica powder. Ans. 3^4. Appellants do not dispute the
Examiner’s findings with respect to Shinohara. Appeal Br. 5—6.
7
Appeal 2017-001801
Application 13/191,278
5—6. Appellants further contend Li “does not disclose the negative electrode
discharging at greater than 0.4 volts and only lists LiPF6 among at least a
dozen lithium salts that can be included in the electrolyte, with no discussion
of the consequences of doing so or the effects of particular concentrations.”
Id. at 6.
Appellants’ arguments are unpersuasive. First, the argument with
regard to the advantages disclosed in Appellants’ Specification regards
features that have not been recited in the claims. Nor does this argument
compare the closest prior art with Appellants’ invention to demonstrate
results that would have been unexpected to one of ordinary skill in the art.13
Second, as stated by the Examiner at page 11 of the Examiner’s
Answer, the argument with respect to Li does not regard the Examiner’s
rejection. As discussed above, the Examiner finds Li discloses a
nonaqueous electrolyte including a lithium salt that can contain both LiPF6
and LiBF4 but does not disclose the lithium salt concentration recited in
claim 1. Ans. 2, 11. However, the Examiner finds Kinoshita discloses a
battery including a nonaqueous electrolyte including LiBF4 and LiPF6 with
LiPF6 in an amount of 1—35 wt%. Id. at 3, 11. Because Kinoshita does not
disclose the use of lithium titanate for its negative electrode, the Examiner
cites Takami to demonstrate it was known to use a negative electrode
including lithium titanate and an electrolyte including LiBF4 and LiBF6. Id.
at 11—12. Thus, the Examiner’s rejection relies upon the combination of Li,
13 “[Wjhen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
8
Appeal 2017-001801
Application 13/191,278
Kinoshita, and Takami to demonstrate the obviousness of the claimed
lithium salt concentration, not Li alone.
Appellants newly argue Kinoshita and Takami do not teach the salt
concentration of claim 1 because they regard different solvents and because
Takami discloses “LiPF6 and LiBF4 among a list of 9 potential electrolytes.”
Reply Br. 3. Appellants further argue the combination of the applied
references would not have been obvious because the “Examiner cherry picks
from four additional references to argue the combination of the five
references render the present invention obvious,” “[o]nly in retrospect does
the combination of the five cited documents appear to render the invention
obvious,” and then argues how each of the applied references individually
differ from the claimed invention. Id. at 3—5.
Appellants have not shown good cause why these arguments could not
have been presented in the Appeal Brief. Therefore, we will not consider
these arguments that were newly raised in the Reply Brief. 37 C.F.R.
§ 41.41(b)(2).
Appellants do not argue claims 3—14 separately from claim 1. Appeal
Br. 5-6.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 1 and 3—14.
Rejection of Claims 15—20
Claims 15—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Li in view of Kinoshita, Takami, Shinohara, and Schormann.
Appellants cite the arguments discussed above for claim 1. Id. at 6.
Therefore, Appellants do not argue claims 15—20 separately from claim 1.
9
Appeal 2017-001801
Application 13/191,278
As discussed above, Appellants’ arguments do not identify a reversible error
in the Examiner’s rejection of claim 1.
For the reasons discussed above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 103 rejection of claims 15—20.
C. DECISION
The decision of the Examiner 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
10