Ex Parte Watanabe et al

Patent Trials and Appeals Board

Feb 4, 2019

14119379 - (D) (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/119,379 11/21/2013 Manabu Watanabe
22428 7590 02/06/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
040302-107 5 5977
EXAMINER
JOHNSON, JONATHAN J
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
02/06/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANABU WATANABE, MASAO YOSHIDA, and
OSAMUTANAKA
Appeal2017-004588
Application 14/119,379
Technology Center 1700
Before N. WHITNEY WILSON, JEFFREY R. SNAY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek our review of the
Examiner's decision to reject claims 10 and 15-17.
An oral hearing was held on January 29, 2019.
We have jurisdiction. 35 U.S.C. § 6.
We reverse.
1 Appellants identify Nissan Motor Co., Ltd. as the real party in interest.
App. Br. 2.
Appeal2017-004588
Application 14/119,379
BACKGROUND
The subject matter on appeal relates to an alloy consisting of three
elements - silicon, tin, and vanadium - each present in a given amount,
along with "inevitable impurities as a residue." Claim 10, App. Br. 15
(Claims App.); Spec. ,r 8. Such an alloy is used as a "negative electrode
active material for an electric device" such as a lithium ion battery. Spec.
,r,r 8, 12, 13.
Sole independent claim 10 is illustrative of the claimed subject matter
and is copied below, with relevant emphasis added in italics:
10. A negative electrode active material for a lithium 10n
secondary battery, comprising: an alloy consisting of
Si in a range of greater than or equal to 27% by mass and
less than or equal to 52% by mass,
Sn in a range of greater than 10% by mass and less than or
equal to 40% by mass,
V in a range of greater than or equal to 20% by mass and
less than or equal to 63 % by mass, and
inevitable impurities as a residue.
App. Br. 15 (emphasis added).
STATEMENT OF THE CASE
The Examiner rejects claims 10 and 15-17 under 35 U.S.C. § I03(a)
as unpatentable over the disclosure ofMusha (US 2005/0208379 Al, pub.
Sept. 22, 2005). Final Act. 2-3. In rejecting these claims, the Examiner
finds that Musha teaches a negative electrode active material comprising an
alloy consisting of Si, Sn, and V in overlapping amounts to those claimed.
Id. (citing Musha's abstract, claims 1, 3, and 10). In view of such overlap,
the Examiner determines that a prima facie case of obviousness exists
pursuant to MPEP 2144.05 I. Id. at 3.
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Application 14/119,379
Appellants argue that no such prima facie case of obviousness exists.
App. Br. 6-13. Specifically, Appellants assert that because Musha's
disclosure is so broad, the facts of this case are analogous to a genus-species
inquiry of obviousness. App. Br. 8. For support, Appellants point to three
different aspects of Musha' s disclosure that indicate such breadth: "[ 1] the
many alternative combinations of configurations of the active material
particles, [2] the various metals that may be contained within the particles,
and [3] the various weights in which those metals may be present." Id.
Regarding point 1, Appellants argue that Musha discloses six possible
configurations - four of which are not even alloys. Id. at 7, 9, 10.
Regarding point 2, Appellants point to Musha's disclosure of twenty-five
different metals that may be present in various combinations, once the
silicon or tin has been selected as the base component. Id. at 7, 9--11.
Regarding point 3), Appellants point to Musha's broad disclosure of
between 30-99.9% for Si, 0.1-70% for Sn, and 0.1-70% for V. Id. at 9-
10, 11-12. Based on the breadth ofMusha's disclosure, Appellants assert
that the Examiner has failed to provide a particular reason to select the
claimed species, much less in the claimed amounts, to be in the form of an
alloy. Id. at 10-13.
In the Answer, the Examiner maintains the rejection, asserting that a
prima facie case of obviousness exists under MPEP 2144.05 I, and
furthermore notes that adequate motivation exists to select Sn and V from
Musha's list of metals because "the twenty five metals listed [in Musha]
appear to be equivalents in terms of additional elements to the base metal
Si." Ans. 3. As such, the Examiner alleges that "it would have been
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Application 14/119,379
obvious to one of ordinary skill in the art ... to pick one, or a combination
of two, such as Sn and Vas ... claimed, with expected success." Id.
OPINION
Appellants have identified reversible error in the rejection. Here, as
noted by Appellants (App. Br. 6-13), Musha's disclosure represents a broad
genus in three respects.
First, Musha discloses that
[ t ]he active material particles 7 include (a) particles of single
silicon or single tin, (b) mixed particles containing at least silicon
or tin and carbon, ( c) mixed particles containing silicon or tin and
a metal, ( d) particles of a compound of silicon or tin and a metal,
( e) mixed particles containing particles of a compound of silicon
or tin and a metal and metal particles, and (f) single silicon or
single tin particles coated with a metal. The particles (a) to (f)
can be used either individually or as a combination of two or
more kinds thereof
Musha ,r 37 ( emphasis added).
As such, there are many different possible forms that Musha's active
particles can take. For example, the active particles can be one of the six
listed possibilities, or can be "a combination of two or more kinds thereof."
Id. Of those listed, only the active material particles of ( d) and ( e )2 appear to
be expressly referred to as including "an alloy of silicon or tin and a metal."
Id. ,r 42; see also id. ,r 44 (explaining "[w]here the compound particles (d)
are alloy particles, the alloy particles are preferably prepared by a quenching
process.").
2 "The active material particles ( e) are obtained by first preparing compound
particles in the same manner as for those of the particles (d)." Musha ,r 45.
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Application 14/119,379
Second, in the disclosure upon which the Examiner relies in the
rejection (Final Act. 3) Musha discloses no fewer than twenty five metals
from which to select, after silicon is chosen. Musha, claim 10. Of those
twenty five metals, between one and twenty five of them may be included in
Musha's mixed particles. Id.
Third, Musha discloses broad ranges for the mixed active material
particles- i.e., from 30% to 99.9% by weight Si, and from .01 to 70 % by
weight of one or more elements chosen from the twenty five metals. Id.
Having determined the breadth ofMusha's disclosure, we now
consider whether the Examiner a) provides a factual basis to support a
finding that Musha's claim 10 embodiment relied upon is in fact an "alloy"
as required by the appealed claims; and b) articulated a sufficient rationale to
select the claimed alloy "species" of Si, Sn, and V from Musha's disclosure.
After considering the totality of the appeal record, we determine that the
Examiner failed in each respect. Our reasoning follows.
Regarding a), we note that "[t]he Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not ... resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies" in the cited references. In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). Here, the Examiner fails to supply such a factual basis for
establishing that the relied upon disclosure is indeed an alloy as claimed.
Specifically, the only disclosure in Musha relied on by the Examiner (Final
Act. 2-3; Ans. 2, each citing Musha's abstract, and claims 1, 3, and 10) that
identifies the makeup of the active material particles is Musha's claim 10,
i.e., "mixed particles comprising silicon or tin and a metal." On this record,
it is not clear whether such "mixed particles comprising silicon or tin and a
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Application 14/119,379
metal" are directed to an "alloy" because Musha does not refer to this
category (i.e., category (c)) as such (Musha ,r,r 40, 41). In fact, when
directly challenged on this point (App. Br. 10), the Examiner does not
respond to Appellants' argument that category ( c) of active particles, along
with categories (a), (b ), and (f) are not alloys. See Ans., generally. Thus,
the Examiner has failed to provide this appeal record with a preponderance
of evidence that supports a finding that the embodiment of Musha's claim 10
-the only embodiment relied on in the Final Rejection and Answer that
specifies the makeup of the particles - is indeed an alloy.
Regarding b ), , the Examiner finds that Musha "teaches" the claimed
active material, points to Musha's claims 1, 3, and 10, and states that
"[ s ]ince the amounts of Si, Sn and V disclosed by Musha [] overlap the
claimed amounts of Si, Sn and V, a prima facie case of obviousness exists
[per] MPEP 2144.05 I." Final Act. 2-3. While it may be true that the
claimed amounts of Si, Sn, and V overlap with those disclosed by Musha,
such an observation is, at best, premature. The Examiner must first establish
why the skilled artisan would have selected Sn and V - and only Sn and V -
from the list of 25 metals recited in Musha' s claim 10 after first selecting
silicon as the base material, and then form the selected silicon, tin, and
vanadium into an "alloy." Here, the Examiner fails to do so. Indeed, once
Appellants challenge the Examiner's rationale for selecting only Si, Sn and
V from the possible combinations disclosed by Musha (App. Br. 10), the
Examiner responds that "the twenty five metals listed appear to be
equivalents in terms of additional elements to the base metal Si," and thus
selecting them would have been obvious. Ans. 3.
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The Examiner's equivalency rationale as set forth in the Answer,
however, falls short. First, we note that the Examiner's finding of
equivalence amongst the 25 metal choices enumerated in Musha' s claim 10
is not adequately supported by the evidence of record. Ans. 3. The finding
of equivalence appears to be based on the appearance of tin and vanadium in
the Markush listing contained in Musha's claim 10. Id. ("Musha discloses at
least one (or a combination of two) would be selected from such list.").
This, without more, is an insufficient basis upon which to determine
equivalence. See In re Ruff, 256 F.2d 590, 598-9 (CCPA 1958) (explaining
how equivalence cannot be demonstrated by mere existence within a
Markush group). Furthermore, as explained by Appellants (Reply Br. 4),
and as evidenced by Table 1 of Appellants' Specification (Spec. 24)
Musha's 25 possible choices of metals do not appear to be equivalent. Here,
we emphasize in particular Comparative Examples 24 and 28, where
equivalent amounts of silicon were used ( 45%) in each Comparative
Example, and where tin was present in 55% (Comparative Example 24) and
vanadium was present in 55% (Comparative Example 28). Comparative
Examples 24 and 28 exhibited a different Discharge Capacity at the 1st cycle,
as well as different Discharge Capacity Maintenance Ratios at cycles 50 and
100. Such evidence undercuts the Examiner's finding that the 25 metals
listed in Musha's claim 10 are equivalent. Ans. 3.
Under these circumstances, we do not sustain the Examiner's
obviousness rejection.
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Application 14/119,379
DECISION
REVERSED
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