Keiji Okabe et al.

Patent Trials and Appeals Board

Jan 20, 2022

2021003728 (P.T.A.B. Jan. 20, 2022)

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. 13/580,675 08/23/2012 Keiji Okabe 20369-134844 9460 42798 7590 01/20/2022 FITCH, EVEN, TABIN & FLANNERY, LLP 120 South LaSalle Street, Suite 2100 Chicago, IL 60603-3406 EXAMINER ARCIERO, ADAM A ART UNIT PAPER NUMBER 1727 MAIL DATE DELIVERY MODE 01/20/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KEIJI OKABE, YOSHITO ISHII, and YURIKO IDA ____________ Appeal 2021-003728 Application 13/580,675 Technology Center 1700 ____________ Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-7, and 17-28 of Application 13/580,675. Final Act. (September 11, 2020). We have jurisdiction under 35 U.S.C. § 6. A hearing in this appeal was held on January 11, 2022. A transcript of that hearing will be entered into the record in due course. For the reasons set forth below, we affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Showa Denko Materials Co., Ltd., as the real party in interest. Appeal Br. 2. Appeal 2021-003728 Application 13/580,675 2 I. BACKGROUND The ’675 Application describes materials that can be used as negative electrodes in lithium ion secondary batteries and electrodes and batteries including such materials. Spec. ¶ 1. The negative electrode material comprises a carbon layer formed on the surface of a carbon material that serves as a core. Id. ¶¶ 9-16. According to the Specification, the carbon layer formed on the surface of the carbon material comprises an amorphous material having a low crystalline content. Id. ¶ 9. The Specification further states that the carbon material serving as a core is not limited particularly, and the Specification exemplifies carbon materials prepared by firing, for example, a thermoplastic resin, naphthalene, anthracene, or coal tar. Id. ¶ 24. Claim 1 is representative of the ’675 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A negative electrode material for a lithium ion secondary battery having a carbon layer formed on a surface of a carbon material that serves as a core, wherein (A) a plane distance of a carbon (002) plane of the negative electrode material as determined by an XRD measurement is 3.40 to 3.70 Å, (B) a content ratio, by mass, of the carbon layer to the carbon material is 0.005 to 0.1, (C) a specific surface area of the negative electrode material as determined by a nitrogen adsorption measurement at 77 K is 0.5 to 10.0 m2/g, and (D) a specific surface area Y of the negative electrode material as determined by carbon dioxide adsorption at 273 K and the content ratio, by mass, X of Appeal 2021-003728 Application 13/580,675 3 the carbon layer to the carbon material meet the requirement represented by a formula (I): 0 < 𝑌𝑌 < 𝐴𝐴𝐴𝐴 + 2.5, wherein A= 100. Appeal Br. 21 (some paragraphing and indentation supplied). II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 3-7, 17-24, and 26-282 are rejected under 35 U.S.C. § 103(a) as unpatentable over Okabe.3 Final Act. 2. 2. Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Okabe and Yoon.4 Final Act. 5. III. DISCUSSION A. Rejection of claims 1, 3-7, 17-24, and 26-28 as unpatentable over Okabe Appellant presents a single, unified argument for reversal of this rejection with respect to all of the claims. See Appeal Br. 7-19. Appellant’s arguments are based upon limitations present in independent claims 1 and 19. Id. Thus, we select independent claims 1 and 19 as representative of the 2 The Examiner omitted claim 26 from the summary statement of the rejection in the Final Action and in the Examiner’s Answer. Final Act. 2; Answer 3. Because the rejection of claim 26 is discussed in detail in the body of the rejection, see id., we regard this omission as an inadvertent error. 3 JP 2006-324237 (A), published November 30, 2006. Like the Examiner, we rely upon the machine translation entered into the record on September 18, 2019. 4 US 2002/0076614 A1, published June 20, 2002. Appeal 2021-003728 Application 13/580,675 4 claims subject to this ground of rejection and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appellant argues that the rejection of independent claims 1 and 19 should be reversed for any of three separate reasons. We address each of these arguments in turn. 1. Whether the Examiner erred by finding that the parameters of formula (I) are result effective variables Claim 1 requires a relationship between the specific surface area (Y) of the negative electrode material as determined by CO2 adsorption at 273 K and the mass content ratio (X) of the carbon layer to the carbon material as set forth in formula (I): 0 < 𝑌𝑌 < 𝐴𝐴𝐴𝐴 + 2.5, where A = 100.5 Claim 19 also includes this requirement. See Appeal Br. 23. In rejecting claims 1 and 19, the Examiner found that Okabe describes a negative electrode material having a mixing ratio of 0.001-0.1 of the carbon core. Final Act. 3 (citing Okabe Abstract). The Examiner also found that Okabe describes using CO2 adsorption to determine the specific surface area of the electrode material. Id. (citing Okabe ¶ 10). In particular, Okabe reports the specific area as determined by CO2 adsorption at 273 K to be between 0.2 m2/g and 7.5 m²/g. Okabe ¶ 10. Appellant argues that the rejection of claims 1 and 19 should be reversed because the Examiner erred by finding that the property recited in element (D) of claims 1 and 19 is a result effective variable. Appeal Br. 8. 5 Although not specified in claim 1, we conclude that, in formula (I), Y is expressed in m2/g, based upon the ’675 Application’s Specification. See, e.g. Spec. Table I. Appeal 2021-003728 Application 13/580,675 5 This argument is not persuasive because the Examiner did not make such a finding. In rejecting claims 1 and 19, the Examiner found that Okabe teaches values for the content ratio and the specific surface area-i.e., variables X and Y in formula (I)-that overlap with the values set forth in the claims. Final Act. 7. The Examiner further found that Okabe describes these variables as being result effective. Id. (citing Okabe ¶¶ 33-34). Based on these findings, the Examiner concluded that “Okabe provides proper motivation for optimizing the specific surface areas and content ratio of the carbon layer to the carbon material to be within the claimed ranges and claimed formula.” Answer 8. In other words, the Examiner found that routine optimization of two variables Okabe describes as result effective would lead a person having ordinary skill in the art to create negative electrode materials within the scope of claims 1 and 19. 2. Whether the Examiner improperly relied upon inherency with respect to formula (I) Appellant argues that the Examiner erred by finding that the claimed property recited in element (D) of claims 1 and 19 is inherent to Okabe’s negative electrode materials. Appeal Br. 9-17. This argument is not persuasive. As the Examiner states, the rejection does not rely upon inherency. See Answer 8. We agree with the Examiner. As the Examiner found, Okabe describes or suggests a range of content ratio as of the carbon layer to the carbon material that overlaps those recited in claims 1 and 19. Final Act. 3. The Examiner also found that Okabe describes or suggests a range of values for the specific surface area of the particles that overlaps those set forth in claims 1 and 19. Id. Appellant does not contest these findings. Appeal 2021-003728 Application 13/580,675 6 Claims 1 and 19 seek to impose an additional condition on the values of the content ratio and the specific surface area disclosed in Okabe. In other words, claims 1 and 19 seek to claim a subset of the materials described or suggested in Okabe. Therefore, Okabe’s disclosure of overlapping ranges suffices to render the subject matter of claims 1 and 19 prima facie obvious. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Boesch, 617 F.2d 272, 275 (CCPA 1980). As the Federal Circuit has explained, an applicant can overcome a prima facie case of obviousness by showing that the claimed range is critical, generally by establishing that the claimed range is unexpected results relative to the broader ranges disclosed in the prior art. Peterson, 315 F.3d at 1330; In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). 3. Evidence of unexpected results For the reasons set forth above, we have determined that the Examiner has established a prima facie case that claims 1 and 19 would have been obvious to a person having ordinary skill in the art at the time of the invention. Nonetheless, Appellant argues that these claims are patentable because there are unexpected differences between the claimed subject matter in the prior art. Appeal Br. 17-19 (citing Okabe Decl. (March 3, 2018)). To establish the existence of unexpected results, Appellant must establish (1) that there actually is a difference between the results obtained through the claimed invention and those of the closest prior art and (2) that the difference would have been unexpected by a person having ordinary skill in the art. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). “[T]he Appeal 2021-003728 Application 13/580,675 7 applicant’s showing of unexpected results must be commensurate in scope with the claimed range.” Peterson, 315 F.3d at 1330-31. In this case, Appellant argues that the data presented in Table 1 of the Specification demonstrates unexpected results achieved by the claimed invention. Appeal Br. 17-19. In particular, Appellant argues that the inventive examples in Table 1 show that examples embodying the claimed invention have superior input properties relative to the Comparative Examples. Okabe Decl. 2-7, Table 1. At the same time, the Examples in Table 1 have charge/discharge efficiencies that are essentially the same as those exhibited by the Comparative Examples. Id. According to Appellant, these results would have been unexpected because a person having ordinary skill in the art would have expected a trade-off between the charge/discharge efficiency in the input properties. Okabe Decl. 4-5. Thus, a person having ordinary skill in the art would not have expected the inventive Examples to show improved input properties while maintaining the same charge/discharge efficiency. Id. The Examiner considered the data and arguments in the Okabe Declaration and was not persuaded because Comparative Examples 3, 4, 6, and 7 “do not provide significantly worse characteristics as compared to Examples 1, 5, 10, 13, and 14 in regards to the difference in service life properties or input properties (less than 10% differences between the comparative data and the data of the present invention).” Answer 9. Appeal 2021-003728 Application 13/580,675 8 We agree with the Examiner. We summarize the data the Examiner relied upon in the following table: Charge/Discharge Efficiency Service Life Properties Input Properties Examples 1, 5, 10, 13, 14 85-89 79.4-82.2 0.54-0.57 Comparative Examples 3, 4, 6, 7 84-87 74.6-78.6 0.50-0.53 As shown in the table, the Examples and Comparative Examples exhibit overlapping ranges of charge/discharge efficiency while the Examples have both service life properties and input properties that slightly differ from the Comparative Examples. We agree with the Examiner that the reported differences appear small, and we are not persuaded that these differences are significant. Although improvements in some technologies may be measured by a few percentage points, Table I or the accompanying text lacks any indication of the degree of statistical uncertainty in the reported measurements and the magnitude of differences that a person having ordinary skill in the art would have considered to be substantial. In the absence of such information and testimony, we have no way to determine whether the purported differences are real or merely within the normal range of experimental variability. Appellant, therefore, has not met its burden of establishing that the reported differences are both real and significant, much less unexpected. The Examiner also determined that the data presented in Table 1 were not commensurate in scope with claims 1 and 19. Answer 9. Appellant does not address this determination. See generally Reply Br. We agree with the Examiner. Claims 1 and 19 each recite three properties of the claimed negative electrode material and one relationship Appeal 2021-003728 Application 13/580,675 9 between two of the material’s properties. We summarize the relevant data in the following table: Plane Distance (Å) Content Ratio (X) Specific Surface Area (N2) (m2/g) Specific Surface Area (CO2) (m2/g) AX +2.5 Claim 1 3.4-3.7 0.005-0.1 0.5-10 <12.5 3-12.5 Claim 19 3.4-3.7 0.005-0.1 0.5-10 <12.5 3-12.5 Examples 1-14 3.42-3.46 0.005- 0.09 0.8-5.8 1.0-2.8 3-11.5 As can be seen in the table, Appellant has provided data for a small portion (0.04/0.3 × 100% = 13.3%) of the claimed plane distance range. Similarly, the reported data only cover of lower half (5.0/9.5 × 100% = 52.6%) of the range of the specific surface areas as determined by N2 adsorption at 77 K. The small range of specific surface areas is also reflected in the fact that all of the specific surface layer areas as measured by CO2 adsorption at 273 K are also confined to a very tight and low range even if it much larger specific surface area would have satisfied the condition recited in element (D) of claims 1 and 19. Because of these deficiencies, we agree with the Examiner that Appellant has not presented data commensurate with the full scope of claims 1 and 19. For the reasons set forth above, we have determined the Appellant has not demonstrated unexpected results their commensurate in scope with the claims. We, therefore, affirm the rejection of independent claims 1 and 19. Thus, we also affirm the rejection of dependent claims 3-7, 17, 18, 20-24, and 26-28. Appeal 2021-003728 Application 13/580,675 10 B. Rejection of claim 25 as unpatentable over the combination of Okabe and Yoon Claim 25 depends from claim 1. Appellant argues that the rejection of claim 25 as obvious over the combination of Okabe and Yoon should be reversed. Specifically, Appellant argues that Yoon does not remedy the defects in Okabe’s disclosures with respect to claim 1’s limitations. Appeal Br. 19. The Examiner does not provide a substantive response to this argument. See Answer 6-9. As discussed above, we have affirmed the Examiner’s rejection of claim 1. Thus, we also affirm the rejection of claim 25. IV. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-7, 17-24, 26- 28 103 Okabe 1, 3-7, 17- 24, 26-28 25 103 Okabe, Yoon 25 Overall Outcome 1, 3-7, 17-28 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED