TAIHEIYO CEMENT CORPORATION

Patent Trials and Appeals Board

Dec 23, 2021

2021004815 (P.T.A.B. Dec. 23, 2021)

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.
15/556,936 09/08/2017 Hiroki YAMASHITA 507183US 4114
22850 7590 12/23/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
12/23/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROKI YAMASHITA, TOMOKI HATSUMORI,
ATSUSHI NAKAMURA, and TAKAAKI OGAMI
Appeal 2021-004815
Application 15/556,936
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HOUSEL, 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 1, 2, 4, 5, 8, and 11 under 35 U.S.C.
§ 103 as unpatentable over Nako (JP 2014-241229 A, pub. Dec. 25, 2014)2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Taiheiyo Cement Corp. as the real party
in interest. Appeal Brief (“Appeal Br.”) filed May 7, 2021, 1.
2 The Examiner relies, without objection, on the English-language machine
translation of this reference. Citations to Nako in this Decision, likewise,
refer to this machine translation.
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in view of Huang (Yong Ping Huang et al., Excellent Electrochemical
Performance of LiFe0.4Mn0.6PO4 Microspheres Produced Using a Double
Carbon Coating Process, 2 J. MATERIALS CHEM. A 18831 (2014)) and
Callihan (US 3,761,465, iss. Sept. 25, 1973). An oral hearing was held on
December 16, 2021, a transcript of which will be made of record. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention recited in the claims on appeal relates to a positive
electrode active substance for a secondary cell, wherein graphite, carbon
obtained by carbonizing a water-soluble carbon material, or a metal fluoride
is supported on a composite comprising a metal oxide and carbon obtained
by carbonizing a cellulose nanofiber. Specification (“Spec.”) filed Sept. 8,
2017, ¶ 1.3 Appellant discloses that metal oxide may be a lithium or sodium
metal oxide comprising at least one of iron or manganese, and the oxide has
an olivine type structure. Id. ¶ 15. In addition, Appellant discloses that the
substance has water adsorption resistance and has reduced water. Id. ¶ 9.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A positive electrode active substance, comprising:
a pyrolyzed composite of a compound comprising at least
iron or manganese; and

3 This Decision also cites to the Examiner’s Answer (“Ans.”) dated June 16,
2021, and the Reply Brief (“Reply Br.”) filed August 6, 2021.
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carbon obtained by carbonizing a cellulose nanofiber;
and
one material selected from the group consisting of 0.3 to
5 mass% of graphite, 0.1 to 4 mass% of carbon obtained by
carbonizing a water-soluble carbon material, and 0.1 to 5
mass% of a metal fluoride;
wherein the compound comprising at least iron or
manganese is of formula (A), (B), or (C):
LiFeaMnbM1cPO4 (A)
wherein M1 represents Mg, Ca, Sr, Y, Zr, Mo, Ba, Pb, Bi,
La, Ce, Nd, or Gd, and a, b, and c each represent a number
satisfying 0 ≤ a < 1, 0 < b ≤ 1, 0 ≤ c ≤ 0.2, 2a + 2b + (valence of
M1) x c = 2, and a + b ≠ 0;
Li2FedMneM2fSiO4 (B)
wherein M2 represents Ni, Co, Al, Zn, V, or Zr, and d, e,
and f each represent a number satisfying 0 ≤ d ≤l, 0 ≤ e ≤ l,
0 ≤ f < l, 2d + 2e + (valence of M2) x f = 2, and d + e ≠ 0; and
NaFegMnhQiPO4 (C)
wherein Q represents Mg, Ca, Co, Sr, Y, Zr, Mo, Ba, Pb,
Bi, La, Ce, Nd, or Gd, and g, h, and i each represent a number
satisfying 0 ≤ g ≤ l, 0 ≤ h ≤ l, 0 ≤ i < l, 2g + 2h + (valence of Q)
x i = 2, and g + h ≠ 0;
wherein the compound of formula (A), (B) or (C) has an
olivine-type structure, and a surface of the compound of
formula (A), (B), or (C) is completely covered by the carbon
obtained by carbonizing a cellulose nanofiber and the graphite,
carbonized product of the water-soluble carbon material or
metal fluoride.
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OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering
Appellant’s arguments and the evidence of record, we are not persuaded of
reversible error in the Examiner’s rejection for substantially the fact
findings, reasoning, and conclusions set forth in the Examiner’s Answer,
which we adopt as our own. We offer the following for emphasis.
The Examiner rejects claims 1, 2, 4, 5, 8, and 11 under 35 U.S.C.
§ 103 as unpatentable over Nako in view of Huang and Callihan. Ans. 3–6.
Appellant argues the rejected claims as a group. See Appeal Br. generally.
We select claim 1 as representative; dependent claims 2, 4, 5, 8, and 11
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2020).
The Examiner finds that Nako teaches a positive electrode active
substance substantially as recited in claim 1, wherein the compound
comprises a composite particle of LiMPO4 and a carbon coating obtained by
pyrolizing a nanofibrous organic material such as cellulose and
carboxymethyl cellulose.4 Ans. 3. The Examiner also finds that Nako
teaches that the element “M” in the LiMPO4 active material compound

4 The Examiner relies on Callihan, without dispute, as teaching that
carboxymethylcellulose was known in the art to be water soluble. Because
Appellant does not contest this finding nor the Examiner’s reliance on
Callihan, we need not further discuss Callihan in this Decision.
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includes a combination of Fe and Mn, but acknowledges that Nako fails to
teach the relative amounts of these metals. Id. at 4. For this feature, the
Examiner finds that Huang teaches an electrode active material comprising
LiFe0.4Mn0.6PO4 particles coated with carbon, wherein this material has an
olivine structure and satisfies the claimed formula (A) with a = 0.4, b = 0.6,
and c = 0. Id. The Examiner finds that Huang teaches that this material
provides high energy density and stability and has excellent electrochemical
performance. Id. The Examiner finds that
[a] person of ordinary skill in the art would have been
motivated by design need for specific amounts of Fe and Mn to
combine the LiFe0.4Mn0.6PO4 material of Huang et al with the
active material composition of Nako et al in view of Callihan in
order to obtain an electrode material having improved energy
density and stability and excellent electrochemical
performance.
Id. at 4–5.
The Examiner further acknowledges that Nako fails to teach that the
carbon coating necessarily covers the entire surface of the composite
particles. Ans. 5. However, the Examiner finds that Huang teaches the
electrode active material LiFe0.4Mn0.6PO4 particles are double-coated with
carbon so as to ensure that the entire surface of the active material is covered
with carbon, thereby providing improved electrochemical performance. Id.
The Examiner concludes that “[a] person of ordinary skill in the art would
have been motivated to combine the full carbon coating of Huang et al with
the active material composition of Nako et al in view of Callihan in order to
obtain an electrode material having improved electrochemical performance.”
Id.
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Appellant argues that Nako teaches away from the pore diameter
range disclosed by Huang. Appeal Br. 6. Appellant asserts that Nako
discloses good performance related to a spinal structure having a pore
diameter range from 10–1000 nm. Id. Appellant also asserts that Nako
attributes good high-speed charge and high output to a pore distribution
having a peak at 50 nm or more. Id. In contrast, Appellant asserts that Huang
teaches an olivine type structure having a significantly smaller pore diameter
range, wherein the double coating procedure reduces the pore diameter to 1–
10 nm. Id. Appellant further asserts that Huang does not describe a fibrous
carbon component of the composite. Id. at 5. Thus, Appellant contends that
Huang teaches a different crystal type and pore diameter range than Nako,
such that modifying Nako by reducing the pore size and adding a coating
after formation of the composite particles changes Nako’s principle of
operation. Id. at 6.
In response to Appellant’s teaching away argument, the Examiner
notes that the rejection does not rely on Huang’s pore sizes per se and, as
such, does not modify Nako’s pore sizes. Ans. 6–7. The Examiner explains
that Huang instead is relied on for teaching a complete carbon covering,
which is accomplished by applying a second coating of carbon. Id. at 7. The
Examiner acknowledges that Huang teaches that pore size distribution is
reduced by a net of about 3–30 nm during the application of the second
carbon coating. Id. The Examiner determines that applying a carbon coating
to Nako’s composite particles having a pore size of about 10–1000 nm,
wherein the working examples have pore sizes of 90–870 nm, in accordance
with Huang would merely reduce Nako’s particle pore sizes to between 60–
840 nm (using a reduction at the upper limit of 30 nm). Id. The Examiner
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finds that these resulting pore sizes are still well above Nako’s minimum of
50 nm for good electrode performance. Id.
In rebuttal, Appellant argues that the Examiner does not recognize
that Huang’s double coating method employs ball milling of the particles for
40–45 hours. Reply Br. 3. Appellant contends that the Examiner fails to
explain how Nako’s particles could survive such treatment without reduction
of particle and pore size. Id.
Appellant’s arguments are not persuasive of reversible error. Whether
the prior art teaches away from the claimed invention is a question of fact.
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well established that
a prior art reference must be considered in its entirety, i.e., as a whole, when
determining if it would have led one of ordinary skill in the art away from
the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Further, references in a combination may be said to teach
away where their combined teachings would produce a “seemingly
inoperative device.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354
(Fed. Cir. 2001) (quoting In re Sponnoble, 405 F.2d 578, 587 (CCPA
1969)). “A reference does not teach away, however, if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
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DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Moreover, our reviewing court has recognized that a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate any or all reasons to combine teachings, much less
constitute teaching away from the combination. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”). Cf. Syntex (U.S.A.) LLC v. Apotex, Inc.,
407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (even a “statement that a particular
combination is not a preferred embodiment does not teach away absent clear
discouragement of that combination.”); In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971).
Rather, teaching away requires “clear discouragement” from
implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351
(Fed. Cir. 2017). “A reference teaches away when it suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1354 (Fed. Cir. 2012) (quoting Medichem, S.A.
v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quotations omitted)).
Although Nako generally discloses maintaining a large pore size for
good electrode performance, Nako does not criticize or discredit a small
reduction in these pore sizes via applying a complete carbon coating to the
particles to improve electrochemical performance as Huang suggests. In this
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regard, we note that Appellant fails to rebut or otherwise address the
Examiner’s position that Nako’s particles, as modified in view of Huang,
would still have a pore size distribution greater than 50 nm. In addition, we
note that even with significantly smaller pore sizes, Huang’s electrochemical
performance exceeds Nako’s. Compare Nako, Table 1, initial capacities of
135–141 mAh/g, with Huang, p. 18836 (Conclusions), specific capacity of
165.8 mAh/g. Therefore, we are not persuaded that Nako teaches away from
a complete carbon coating as taught in Huang.
Further, we note that both Nako and Huang disclose similar LiMPO4
crystalline compounds, wherein the rejection proposes substituting Huang’s
LiFe0.4Mn0.6PO4 olivine compound for Nako’s LiFexMnyPO4 spinel
compound. Appellant does not challenge this aspect of the rejection.5 In
doing so, given that Huang’s particle survived the ball milling method
described therein, an ordinary artisan would have had a reasonable
expectation that Huang’s material would similarly survive the ball milling
method when substituted into Nako’s particle.
As to Appellant’s concern that Huang fails to teach that the carbon
source of the carbon coating is not fibrous, we note that claim 1 only

5 We note that, at the oral hearing, Appellant argued for the first time that a
change from Nako’s spinel compounds to Huang’s olivine compounds
would change Nako’s principle of operation, on the basis that Nako’s
particles have large pore sizes and Huang’s particles have smaller pore sizes.
This new argument will not be considered because Appellant fails to provide
good reason why it could not have been presented in the briefs. See 37
C.F.R. §§ 41.41(b)(2) and 41.47(e)(2). In addition, we note that Appellant
fails to direct attention to any evidence of record teaching or suggesting that
small pore size is a feature inherent to particles of aggregated olivine
crystals.
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requires that the composite contain carbon obtained by carbonizing a
cellulose nanofiber and that Nako’s composite already includes carbon
obtained by carbonizing a cellulose nanofiber. Again, the rejection proposes
modifying Nako to include Huang’s specific LiFe0.4Mn0.6PO4 olivine
compound, thereby still including the carbon obtained by carbonization a
cellulose nanofiber. The rejection also proposed modifying Nako to include
a second carbon coating made by a carbon obtained by carbonizing a water-
soluble carbon material (glucose) as Huang teaches.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1, and dependent claims 2, 4, 5, 8, and 11 over the combination of
Nako, Huang, and Callihan.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Examiner’s Answer, the Examiner’s decision to reject claims 1, 2,
4, 5, 8, and 11 under 35 U.S.C. § 103 as unpatentable over Nako in view of
Huang and Callihan is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 8,
11
103 Nako, Huang,
Callihan
1, 2, 4, 5, 8,
11

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED