Yoshito Ishii et al.

Patent Trials and Appeals Board

Nov 25, 2019

12914215 - (D) (P.T.A.B. Nov. 25, 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.
12/914,215 10/28/2010 Yoshito Ishii 20369-134831 5379
42798 7590 11/25/2019
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
CANTELMO, GREGG
ART UNIT PAPER NUMBER
1725
MAIL DATE DELIVERY MODE
11/25/2019 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 YOSHITO ISHII, SOUICHIROU SUDA, and TATSUYA
NISHIDA
Appeal 2019-002232
Application 12/914,215
Technology Center 1700
Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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, 3–18, 20, 22, 23, 25, and 27–29. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Hitachi
Chemical Company, Ltd. Br. 1.
Appeal 2019-002232
Application 12/914,215

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a negative electrode
for a lithium secondary battery that can be used in portable devices, electric
automobiles, and electricity storage. Spec. 10–16. Claim 1, reproduced
below with emphasis added to a key recitation, is illustrative:
1. A negative electrode for a lithium secondary battery
comprising:
a layer of a mixture containing graphite powder that has an
average particle diameter in a range of 1 to 100 μm, a crystallite size
Lc (002) in a C-axis direction of a crystal of at least 1000 Å, a
specific surface area of at most 8 m2/g, and an aspect ratio of at most
5, and an organic binder on a current collector,
wherein an interlayer distance, d (002), of a crystal of the
graphite powder is 3.36 Å or less,
wherein a density of the layer of the mixture containing
graphite powder and the organic binder is in a range of 1.5 to 1.95
g/cm3, and
wherein a diffraction intensity ratio (002)/(110) measured by X-
ray diffractometry of the layer of the mixture is at most 500.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:

Ishii et al.
(“Ishii ’822”)
Ishii et al.
(“Ishii”)

US 2001/0033822 A1

US 6,344,296 B1

Oct. 25, 2001

Feb. 5, 2002

2 In this Decision, we refer to the Final Office Action dated January 2, 2018
(“Final Act.”), the Appeal Brief filed September 7, 2018 (“Br.”), and the
Examiner’s Answer dated October 24, 2018 (“Ans.”).
Appeal 2019-002232
Application 12/914,215

3
Kitagawa et al.
(“Kitagawa”)
Maeda et al.
(“Maeda”)
Shoji et al.
(“Shoji”)
Shoji et al.
(“Shoji ’844”)

US 6,455,199 B1

JP 09259884A

JP 11283622A

JP 2001283844A

Sept. 24, 2002

Oct. 3, 1997

Oct. 15, 1999

Oct. 12, 2001

REJECTION(S)
The Examiner maintains (Ans. 3) the following rejections on appeal:
A. Claims 1, 3–18, 20, 22, 23, 25, and 29 under 35 U.S.C. § 103 as
obvious over Shoji ’622 in view of Ishii ’296 and either Maeda or
Kitagawa. Ans. 3.
B. Claims 27 and 28 under 35 U.S.C. § 103 as obvious over Shoji ’622 in
view of Ishii ’296 and either Maeda or Kitagawa and further in view
of Shoji ’844 or Ishii ’822. Id. at 8.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(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.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
Appeal 2019-002232
Application 12/914,215

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837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies. The
Examiner relies on Shoji as a primary reference and finds that Shoji suggests
a negative electrode mixture with particle diameter, density, diffraction
intensity ratio, and interlayer distances within the ranges of independent
claims 1 and 11. Ans. 3. The Examiner finds that Shoji does not teach
claim 1 and claim 12’s claimed Lc (i.e., as recited by claim 1, “crystallite
size Lc (002) in a C-axis direction of a crystal of at least 1000 Å”). Id. at 6.
The Examiner finds, however, that Maeda and Kitagawa each disclose an
electrode carbon material wherein the graphite material has an Lc of 1000
Angstroms or more. Id. at 7. The Examiner determines that “it would have
been obvious to one of ordinary skill in the art at the time the claimed
invention was made to modify the graphite material of Shoji '622 to have an
Lc of 1000 Angstroms or more and an interlayer distance of 3.35-3.36
Angstroms as taught by Maeda or Kitagawa since it would have
charge/discharge cycle characteristics, energy density, high rate discharge
performance and reliability of the battery.” Id.
Appellant argues that a person of skill in the art would not have
combined the teachings of Shoji and Maeda or Kitagawa to reach an Lc of at
least 1000 Angstroms. Br. 11–13. In particular, Appellant argues that
Shoji’s examples discourage an Lc of at least 1000 Angstroms. Id. at 11–12.
Appellant’s argument persuades us of reversible error. Shoji’s
inventive embodiments 1–4 all have an Lc of less than 1000 Angstroms.
Shoji ¶¶ 23 (embodiment 1 has Lc of 500 Å), 29 (embodiment 2 has Lc of
Appeal 2019-002232
Application 12/914,215

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450 Å), 30 (embodiment 3 has Lc of 300 Å), 31 (embodiment 4 has Lc of
780 Å), 34 (embodiments 5–8 have same Lc as embodiment 1), 36
(embodiments 9–12 have same Lc as embodiment 1), 38 (embodiments 13–
15 have same Lc as embodiment 1). Comparative examples 1 and 2,
however, each have an Lc of 1000 Å. Id. at ¶¶ 32 (comparative example 1
has Lc of 1000 Å), 33 (comparative example 2 has Lc of 1000 Å). Shoji’s
tables indicate that comparative examples 1 and 2 have a lower discharge
capacity ratio than the inventive examples. Id. at ¶ 46, Tables 1–4. Shoji,
therefore, does not provide guidance that an Lc of 1000 Å would be
acceptable in combination with Shoji’s other traits. The Examiner does not
address Shoji’s examples.
We weigh the evidence from Shoji along with evidence from the
secondary references that the Examiner cites, Maeda and Kitagawa. Maeda
indicates that its negative electrode has an Lc of more than 1000 Å, but
Maeda does not indicate whether or not Lc is an important variable. Maeda
¶¶ 14–15. Maeda, therefore, adds little to the analysis.
Kitagawa indicates that an Lc of 1000 Å or more, at least when
combined with Kitagawa’s other characteristics, provides “a high level
reversible capacity.” Kitagawa Abstract, Table 1, 9:47–55. The Examiner,
however, has not explained why a person of skill in the art would expect this
advantage to also benefit a negative electrode having Shoji’s characteristics.
See Br. 13 (explaining how Kitagawa has different packing density than
Shoji).
On balance, Appellant’s argument persuades us that the Examiner has
not adequately explained why a person of skill in the art would have had
reason to modify the Lc of Shoji to reach 1000 Å or more. We, therefore, do
Appeal 2019-002232
Application 12/914,215

6
not sustain the Examiner’s rejection of independent claims 1 or 12. Because
the Examiner’s treatment of dependent claims does not cure this error, we
also do not sustain the Examiner’s rejection of those claims.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–18, 20,
22, 23, 25,
29
103 Shoji, Ishii, Maeda,
Kitagawa
1, 3–18,
20, 22, 23,
25, 29
27, 28 103 Shoji, Ishii, Maeda,
Kitagawa, Shoji ’844,
Ishii ’822
27, 28
Overall
Outcome
1, 3–18,
20, 22, 23,
25, 27–29

REVERSED