Ex Parte Nakahara et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201610597518 (P.T.A.B. Feb. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/597,518 0712712006 27667 7590 HA YES SOLOWAY P,C 4640 E. Skyline Drive TUCSON, AZ 85718 02/26/2016 FIRST NAMED INVENTOR Kentaro Nakahara 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 ATTORNEY DOCKET NO. CONFIRMATION NO. NEC 04P315 2255 EXAMINER GILLIAM, BARBARA LEE ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 02/26/2016 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): admin@hayes-soloway.com nsoloway@hayes-soloway.com sbronson@hayes-soloway.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENTARO NAKAHARA, JIRO IRIYAMA, SHIGEYUKI IWASA, MASAHIRO SUGURO, and MASAHARU SATOH Appeal2014-004746 Application 10/597 ,518 Technology Center 1700 Before MICHAEL P. COLAIANNI, MICHELLE N. ANKENBRAND, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify NEC Corporation as the real party in interest. App. Br. 2. Appeal2014-004746 Application 10/597 ,518 The Invention Appellants' invention relates to a secondary electrochemical cell comprising a cathode containing a nitroxyl polymer and a lithium or lithium alloy anode, wherein the cathode is in direct contact with the anode. Spec. Abstract. Claim 1, the sole independent claim, is representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 21. A secondary electrochemical cell comprising a cathode and an anode, wherein: the cathode comprises a cathode layer comprising nitroxyl polymer, and a cathode collector; the nitroxyl polymer has a nitroxyl cation partial structure represented by the following chemical formula (I) in oxidation state and has a nitroxyl radical partial structure represented by the following chemical formula (II) in reduction state, employing a reaction for transferring an electron between the two states represented by the following equation (B) as an electrode reaction of the cathode: (l) the anode comprises a lithium or lithium alloy as an anode active material; the cathode layer is impregnated with an electrolyte having an electrolyte solution comprising a solvent and an electrolyte salt dissolved in the solvent the cathode layer being in direct contact with a surface of the anode; and the nitroxyl polymer is applied onto the cathode collector and is in direct contact with the surface of the anode. 2 Appeal2014-004746 Application 10/597 ,518 Mc Manis F arahmandi Inoue Nanjundiah Nakahara The References us 4,632,889 us 5, 777 ,428 us 6,090,506 us 6,627,252 JP 2002-304996 The Rejections Dec. 30, 1986 July7, 1998 July 18, 2000 Sept. 30, 2003 Oct. 18, 2002 1. Claims 1 and 3-12 are rejected under 35 U.S.C. § 102(b) as anticipated by Nakahara; 2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Nakahara and McManis; 3. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Nakahara and Inoue; 4. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nakahara and Farahmandi; and 5. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nakahara and Nanjundiah. OPINION We reverse the Examiner's rejection of claims 1 and 3-12 under 35 U.S.C. § 102(b ), and reverse the Examiner's rejections of claims 2--4 under 35 U.S.C. § 103(a). Rejection of claims 1 and 3-12 under 35 USC§ 102(b) Because we reverse the rejection, we need only address independent claim 1. As is relevant to the issues on appeal, the Examiner finds that Nakahara discloses the use of a solid polymer electrolyte including a solvent and electrolyte salt made into a gel without the use of a separator. Final 3 Appeal2014-004746 Application 10/597 ,518 Action 3 (citing Nakahara i1i147, 48, 50). The Examiner further finds that Nakahara's gel solid electrolyte structure places the cathode layer "in direct contact" with the anode. Id. Anticipation requires that every limitation of the claim in issue be disclosed, either explicitly or inherently, in a single prior art reference. In re NTP, Inc., 654 F.3d 1279, 1302 (Fed. Cir. 2011). It is the Examiner's burden to establish a prima facie case of anticipation. In re King, 801 F .2d 1324, 1326-27 (Fed. Cir. 1986). Appellants argue the rejection should be reversed because Nakahara fails to disclose that the cathode is in direct contact with a surface of the anode. App. Br. 1 O; Reply Br. 5---6. In particular, Appellants argue that Nakahara's solid electrolyte is located between the cathode layer and the anode layer, thereby eliminating the need for a separator. App. Br. 10 (citing Nakahara i-fi-143, 50); see Reply Br. 5. Our analysis begins, as it must, with the language of the claims. Oakley, Inc. v. Sunglass Hut Int'!, 316 F.3d 1331, 1339 (Fed. Cir. 2003) (explaining that a section 103(a) analysis requires comparing the properly construed claims to the prior art). It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. 4 Appeal2014-004746 Application 10/597 ,518 Claim l recites that the cathode layer is "in direct contact with a surface of the anode," and "the nitroxyl polymer is applied onto the cathode collector and is in direct contact with the surface of the anode." App. Br. 13 (Claims App'x). The plain language of claim 1, therefore, requires direct contact of the cathode layer and the nitroxyl polymer with a surface of the anode, i.e., contact of the layer/nitroxyl polymer and the surface with no intervening structure. The plain language is supported by the Specification. See, e.g., Spec. 6:19--7:7, 18:20-21, Fig. 1. The Examiner maintains that Nakahara's solid gel electrolyte "provides the same essential structure [as Appellants' recited electrode] of the presence of an electrolyte that is impregnated in the electrode without a separator." Ans. 6. Nakahara, however, describes impregnating the electrode in an embodiment where the separator is used between the anode and cathode, Nakahara i-fi-157-58, 66, 70, and the Examiner does not explain adequately how such a disclosure applies to Nakahara's solid gel electrolyte. Nor does the Examiner explain sufficiently how the solid electrolyte, which appears to be used in place of the separator (i.e., as an intervening structure), otherwise permits direct contact between the cathode layer/nitroxyl polymer and a surface of the anode. We, therefore, find that the Examiner has not met the burden of establishing a prima facie case of anticipation. Accordingly, we reverse the rejection of claims 1 and 3-12 under 35 U.S.C. § 102(b). 5 Appeal2014-004746 Application 10/597 ,518 Rejections of claims 2-4 under 35 US.C. § 103(a) The Examiner rejects claims 2--4 as obvious over several prior art combinations, all of which include Nakahara. 2 Final Act. 3---6. Claims 2--4 depend from claim 1 and, therefore, require "direct contact" between the cathode layer/nitroxyl polymer and a surface of the anode. The Examiner does not rely on the additional references to cure the above-identified deficiency in Nakahara's disclosure. Accordingly, we also reverse the Examiner's rejections of claims 2--4 under 35 U.S.C. § 103(a). DECISION/ORDER The Examiner's rejection of claims 1 and 3-12 under 35 U.S.C. § 102(b) is reversed. The Examiner's rejections of claims 2--4 under 35 U.S.C. § 103(a) are reversed. It is ordered that the Examiner's decision is reversed. REVERSED 2 The Examiner is reminded to avoid cumulative rejections and to rely on the best references in rejecting claims. See 37 C.F.R. § 1.104(c)(2) (2013) ("In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command."); MPEP § 706.02(I). 6 Copy with citationCopy as parenthetical citation