11085106 (B.P.A.I. Aug. 17, 2009)

Ex Parte Kato et al

Board of Patent Appeals and InterferencesAug 17, 2009

11085106 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KIYOMI KATO and KAORU INOUE ____________ Appeal 2008-005542 Application 11/085,106 Technology Center 1700 ____________ Decided: August 17, 2009 ____________ Before EDWARD C. KIMLIN, ROMULO H. DELMENDO and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is in response to a Request, filed July 1, 2009, for rehearing of our Decision, decided April 20, 2009, wherein we sustained the § 102 and § 103 rejections over Tomiyama. Appellants argue that the Board failed to consider Appellants’ Reply Brief (Request 1-2). In light of the petition decision of June 10, 2009 that Appeal 2008-005542 Application 11/085,106 2 granted entry of the Reply Brief, we now consider the Reply Brief. Appellants argue the following points: (1) that one of ordinary skill in the art would not consider an electrically conductive film to be an “electron insulating film” as claimed (Reply Br. 2), (2) that the Examiner’s position that the broadest reasonable interpretation of “electron insulating film” in view of the Specification is incorrect because the Specification does not disclose any electron insulating film having graphite (Reply Br. 2), (3) that the Examiner misconstrued the Tomiyama disclosure regarding the electrical conductivity of the “protective layer” being attached to the negative electrode (Reply Br. 2-3), (4) Tomiyama’s open circuit voltage is different than the voltage during charging (Reply Br. 3-4), and (5) that Tomiyama does not teach the claimed separator to electron insulating film thickness ratio (Reply Br. 4). Regarding arguments (1) through (3), we adhere to our determination that Appellants’ “electron insulating film” has some level of electrical conductivity due to the tungsten oxide that may be included in the film. Appellants further disclose that titanium oxide may be included in the film (Decision 4 and 6). Tomiyama plainly discloses that titanium oxide is an electrically conductive metal oxide (col. 14, ll. 26-27) and lists titanium oxide along with tungsten oxide as suitable for use in the negative electrode (col. 9, ll. 33-35). Accordingly, construing the claim phrase “electron insulating film,” which may include electrically conductive titanium oxide or tungsten oxide, in light of the Specification, reasonably includes electrically conductive films, such as those disclosed by Tomiyama. Appeal 2008-005542 Application 11/085,106 3 Appellants argue that the Board erred in finding that tungsten oxide is electrically conductive, such that our analysis regarding the construction of the claim phrase “electron insulating film” as including electrically conductive particles is faulty (Request 3). Appellants contend that because tungsten oxide is used in the electrode does not mean that it is electrically conductive (Request 3). Citing Tomiyama column 14, lines 11-41, Appellants argue that Tomiyama teaches that electrically conductive agents are added to the electrode to make it electrically conductive (Request 3). Contrary to Appellants’ argument, Tomiyama, in the portion cited by Appellants (i.e., col. 14, ll. 26-27), discloses that the electrode may contain electrically conductive particles such as titanium oxide. Tomiyama further discloses that the metal oxide particles that may be included in the electrode are, inter alia, titanium oxide and/or tungsten oxide (col. 9, ll. 33-35). These disclosures provide a reasonable basis to find that tungsten oxide, like titanium oxide, used in an electrode would be electrically conductive. Accordingly, we adhere to our finding on pages 4-6 of the Decision in this regard. Moreover, as noted above, Tomiyama plainly discloses that titanium oxide is electrically conductive (col. 14, ll. 26-27). Appellants disclose that titanium oxide may be the inorganic oxide filler in the electron insulating film (Spec. 15). Accordingly, even if Appellants were to establish that tungsten oxide is not electrically conductive, Appellants’ disclosure to use titanium oxide supports our construction of “electron insulating film” as including electrically conductive materials. Accordingly, Appellants’ arguments do not persuade us of error. Appeal 2008-005542 Application 11/085,106 4 Appellants’ arguments (4) and (5), fail to address the Examiner’s findings that Tomiyama discloses charging the battery to 4.3 volts (Ans. 9) and that the ratio of separator to electron insulating film thickness is taught by Tomiyama (Ans. 8). Accordingly, we are unpersuaded by Appellants’ arguments made in the Reply Brief for the reasons indicated in the Decision (Decision, e.g., 7-10). Appellants contend that the Board erred by not applying the standards of Graham v. John Deere, 383 U.S. 1 (1966) to assess the obviousness of the claimed subject matter (Request 4). Appellants contend that In re Royka, 490 F.2d 981 (CCPA 1974) does not include the proposition that all claim features must be taught or suggested by the prior art (Request 4). Contrary to Appellants’ argument, we applied the standards set forth in Graham v. John Deere in assessing whether the Examiner established a prima facie case of obviousness. We cited Royka to address the issues raised by Appellants’ arguments attacking the prima facie case. Namely, Appellants argued whether Tomiyama teaches the electron insulating film and charge voltage claim features (i.e., whether all the claim features are taught or suggested). Appellants’ argument that Royka does not support the premise that all features must be taught or suggested for a § 103 rejection is without merit. The court in Royka found that the § 103 rejection fails because the art did not teach all the claimed features (i.e., the same reason the court reversed the § 102 rejections). Royka, 490 F.2d at 985. We add that the Supreme Court has held that as part of the obvious analysis the art need not provide precise teachings directed to specific subject matter of the claim because “a court Appeal 2008-005542 Application 11/085,106 5 can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For the above stated reasons, we adhere to our determination that claims 1-7 are unpatentable under §§ 102/103 over Tomiyama. The Request for Rehearing is denied. DENIED cam MCDERMOTT WILL & EMERY LLP 600 13TH STREET, N.W. WASHINGTON DC 20005-3096