Sano, Atsushi et al.

Patent Trials and Appeals Board

Nov 13, 2019

14005357 - (D) (P.T.A.B. Nov. 13, 2019)

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.
14/005,357 09/16/2013 Atsushi Sano 158502 3111
25944 7590 11/13/2019
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
CANTELMO, GREGG
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
11/13/2019 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUSHI SANO, KEITARO OTSUKI, TOMOHIKO KATO,
AKINOBU NOJIMA, and AKIJI HIGUCHI
Appeal 2018-004502
Application 14/005,357
Technology Center 1700
Before GEORGE C. BEST, JEFFREY R. SNAY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 3–7. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held October 31, 2019, a transcript of
which will be made of record in due course.
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as TDK Corp.
Appeal Br. 1.
Appeal 2018-004502
Application 14/005,357
2
BACKGROUND
The subject matter on appeal relates to an electrode active material
suitable for use in a lithium ion secondary battery. Spec. ¶¶ 1, 2. Claim 3—
the sole independent claim on appeal—reads:
3. An active material comprising β-type crystal of
LiVOPO4, wherein distortion in <100> direction in the β-type
crystal is 1.2% or less.
Appeal Br. A-1 (Claims Appendix).
According to the Specification, an active material having the recited
distortion characteristic is formed by hydrothermal reaction of lithium,
phosphate, and vanadium at a temperature of 150 to 190 °C to generate a
precursor mixture, adjusting pH of the generated precursor mixture to within
the range of 6 to 8, and heating the pH-adjusted precursor mixture at a
temperature of 425 to 650 °C. Spec. ¶¶ 11, 12.
REJECTIONS
I. Claims 3, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sano ’545.2
II. Claims 3, 4, and 6 stand alternatively rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sano ’545 and Sano ’995.3
III. Claims 5 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sano ’545, Okumura,4 and Cheon.5
IV. Claims 5 and 7 stand alternatively rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sano ’545, Sano ’995, Okumura, and Cheon.

2 US 2010/0233545 A1, published September 16, 2010.
3 US 2011/0052995 A1, published March 3, 2011.
4 JP 2007-317583 A, published December 6, 2007, as translated.
5 US 7,838,152 B2, issued November 23, 2010.
Appeal 2018-004502
Application 14/005,357
3
OPINION
Each of the Examiner’s rejections is premised on a finding that Sano
’545 discloses a process for producing β-type crystals of LiVOPO4 that is the
same as that which is described in the Specification and, on that basis,
inherently would have produced crystals exhibiting the recited distortion in
the <100> direction. Non-Final Act. 6, 9 (citing In re Best, 562 F.2d 1252,
1255 (CCPA 1977)).
Appellant argues that the process taught by Sano ’545 materially
differs from that described in the Specification. Particularly, Appellant
points out that the Specification describes adjusting pH to a value in the
range of 6 to 8 after the hydrothermal reaction that generates the precursor
mixture. Appeal Br. 3. See also Spec. ¶ 35 (“After the hydrothermal
synthesis reaction, the pH of the mixture solution including the precursor is
adjusted to be in the range of 6 to 8.”). Appellant argues that Sano ’545
omits such pH adjustment after hydrothermal treatment and, accordingly,
does not support the Examiner’s inherency determination. Appeal Br. 3–4.
The Examiner does not dispute that Sano ’545 fails to disclose any
post-hydrothermal pH adjustment. Rather, the Examiner points to the
discussion at paragraph 50 of Sano ’545 concerning pH adjustment prior to
hydrothermal reaction, and concludes that altering the sequence of process
steps in Sano ’545, so that the noted pH adjustment instead occurred after
hydrothermal reaction, would not have been significant. Non-Final Act. 4–
5; Ans. 16.
Appellant’s argument is persuasive of reversible error.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
Appeal 2018-004502
Application 14/005,357
4
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of
the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). 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 Best, 562 F.2d 1252, 1255
(CCPA 1977). Thus, 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 125–55 (discussing In re Swinehart, 439 F.2d
210 (CCPA 1971) and In re Ludtke, 441 F.2d 660 (CCPA 1971)).
Here, the Examiner fails to provide a reasonable basis to believe the
recited distortion characteristic would have been inherent in crystals
produced in accordance with Sano ’545. There is no dispute that Sano ’545
discloses a process in which pH of the mixture following hydrothermal
reaction is well below 6. See Sano ’545 Table 2. Nor is there any dispute
that Sano ’545 fails to provide any step of pH adjustment after hydrothermal
reaction and prior to the second heating step. The Examiner’s statement that
it would have been inconsequential to change the sequence of steps in Sano
’545 such that pH adjustment occurs after rather than before hydrothermal
reaction is conclusory and not supported by evidence. Moreover, Sano ’545
teaches that the β-LiVOPO4 crystals are formed by subjecting the precursor
mixture to firing at a temperature of 600 to 700 °C. Sano ’545 ¶ 61. Absent
supporting evidence, it is unreasonable to presume that a significant change
in pH to the precursor mixture being fired would have been inconsequential
to the characteristics of the crystals produced.
Appeal 2018-004502
Application 14/005,357
5
For the foregoing reasons, we are persuaded that the Examiner fails to
provide sufficient basis to conclude that the relied-upon prior art teaches or
suggests the recited distortion characteristic. Accordingly, the rejections are
not sustained.
CONCLUSION
The Examiner’s decision rejecting claims 3–7 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 4, 6 103 Sano ’545 3, 4, 6
3, 4, 6 103 Sano ’545,
Sano ’995
3, 4, 6
5, 7 103 Sano ’545,
Okumura, Cheon
5, 7
5, 7 103 Sano ’545,
Sano ’995,
Okumura, Cheon
5, 7
Overall
Outcome
3–7
REVERSED