Ex Parte Nakai et al

Patent Trials and Appeals Board

Mar 14, 2019

14306048 - (D) (P.T.A.B. Mar. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/306,048 06/16/2014 KentaNakai
21254 7590 03/14/2019
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
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.
G l 40045USOO 7076
EXAMINER
0 DONNELL, LUCAS J
ART UNIT PAPER NUMBER
1729
MAIL DATE DELIVERY MODE
03/14/2019 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 KENT A NAKAI, AKIHIKO MIYAZAKI,
TOMONORI KAKO, and SUMIO MORI
Appeal2018-001488
Application 14/306,048
Technology Center 1700
Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
LILAN REN, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In this Decision, we refer to the Specification filed June 16, 2014
("Spec."), the Final Office Action dated Oct. 17, 2016 ("Final Act."), the
Advisory Action dated Feb. 16, 2017 ("Advisory Act."), the Appeal Brief
filed May 18, 2017 ("App. Br."), the Examiner's Answer dated Sept. 29,
2017 ("Ans."), and the Reply Brief filed Nov. 28, 2017 ("Reply Br.").
Appeal2018-001488
Application 14/306,048
Appellant2 appeals under 35 U.S.C. § I34(a) from the Examiner's
decision to reject claims 1-19 as obvious under 35 U.S.C. § I03(a) over the
combination of Shirohige3 and Shinozaki. 4 App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal ( disputed
limitations italicized):
1. An energy storage device comprising:
a negative electrode including a negative substrate having
a surface, and a negative composite layer formed on the surface
of the negative substrate and including a negative active
material;
a positive electrode including a positive substrate, and a
positive composite layer formed on the positive substrate and
including a positive active material; and
a separator placed between the positive electrode and the
negative electrode,
wherein 10% cumulative diameter D 10 in the particle
size distribution of the negative active material on a volume
basis is 1.3 µm or more, and 90% cumulative diameter D90 in
the particle size distribution of the negative active material on a
volume basis is 8.9 µm or less, and
the surf ace of the negative substrate has a center line
roughness Ra of0.205 µm or more and 0. 781 µm or less, and
2 GS Yuasa International Ltd. is the Applicant/ Appellant and also identified
as the real party in interest. App. Br. 1.
3 Shirohige, JP 2010/098020 A, pub. Apr. 30, 2010 (citations herein are to
the English translation in the record, which translation Appellant does not
contest).
4 Shinozaki, US 2013/0108922 Al, pub. May 2, 2013.
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Application 14/306,048
has a ratio of center line roughness Ra to ten-point mean height
Rz of0.072 or more and 0.100 or less.
App. Br. 32 (Claims Appendix). Claim 18, also independent, is directed to
"a negative electrode for an energy storage device" and, similar to claim 1,
recites:
a negative substrate including a first surface and a second
surface opposite the first surface, the first and second surfaces
having a center line roughness Ra of 0.205 µm or more and
0. 781 µm or less, and a ratio of center line roughness Ra to ten-
point mean height Rz of0.072 or more and 0.100 or less.
Id. at 35.
OPINION
The Examiner finds that claims 1-19 would have been obvious to one
of ordinary skill in the art at the time of the invention over Shirohige in view
of Shinozaki for the reasons stated on pages 9-1 7 of the Final Office Action.
We address below each claim that Appellant argues separately.
See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1
Appellant argues that the Examiner erred in rejecting claim 1 because
Shinozaki's disclosure of a surface roughness Ra of0.25---0.7 µm and
surface roughness Rz of 1.0-5 µm does not teach the Ra/Rz ratio in a range
of 0.72---0.100 µmas claim 1 requires. App. Br. 22. Specifically, Appellant
argues that because Shinozaki discloses preferred ranges for Ra and Rz
separately, without any recognition of a significance to the Ra/Rz ratio, it
does not disclose the claimed range with sufficient specificity, or the ratio as
a result effective variable. Id. at 23-26. Appellant further contends that the
Ra/Rz ratio for Shinozaki' s examples are outside the claimed range when the
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Application 14/306,048
ratio is computed for the S surface Ra/Rz values and the M surface Ra/Rz
values separately. Id. at 24--25. According to Appellant, it is "completely
unreasonable" to compare the Ra value for the S surface and the Rz value
for the M surface. Id. Appellant argues that the Ra/Rz ratio of 0.103 the
Examiner calculates is "significantly outside of the claimed range of 0.072
or more and 0.100 or less." Id. at 25.
Finally, Appellant contends that paragraph 43 of the Specification
describes the criticality of the claimed range because it refers to
"adjusting ... to the above-mentioned range" and that "[t]his makes it
possible to enhance adhesion properties .... " Id. at 27 (emphasis omitted).
Appellant also directs us to Tables 2 and 3 to show "retention rates with
Ra/Rz of 0.100 are much higher than those with Ra/Rz of 0.106." Id. at 28
( emphasis omitted). Outside of the claimed range, there is "no large
difference of the retention rate between Ra/Rz of0.100 and 0.106,"
according to Appellant. Id. ( emphasis omitted).
The Examiner responds that Shinozaki discloses surface roughness
parameters that apply to its anode current collector5 surface as a whole,
which includes the centerline of the collector, and, because the Ra/Rz ratio
can be calculated for Shinozaki's current collector, the claimed ranges
overlap with those disclosed in the prior art establishing a prima facie case
of obviousness. Ans. 11-12 (citing In re Wertheim, 541 F.2d 257 (CCPA
1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)); id. at 20-21.
Specifically, the Examiner finds that the ranges Shinozaki discloses for Ra
and Rz provide an Ra/Rz ratio range of 0.05---0. 7, which overlaps the
5 The Examiner equates Shinozaki' s current collector to a substrate as
claimed by Appellant. Ans. 11.
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Application 14/306,048
claimed ratio of 0.072 or more and 0.100 or less. Id. at 12, 19. Regarding
the specific examples in Shinozaki, the Examiner finds that Shinozaki' s
Ra/Rz value of 0.135 is "just outside" the claimed range. Id. The Examiner
further finds that Shinozaki explicitly teaches the benefit of improving
adhesion of the electrode active material to the current collector, reducing
surface defects on the current collector, and the resulting improvement in
battery performance due to the surface roughness, which would have
motivated a person of skill in the art to modify Shirohige's current collector
surface roughness. Id. at 14.
The Examiner also responds that Appellant has not demonstrated that
the claimed range is critical and/or unexpected results relative to the prior art
range because the comparisons on which Appellant relies were not with
respect to the prior art range. Id. at 14--15. The Examiner also points out
that Appellant's comparative examples were made under different pressing
conditions, finding that a conclusion on the effect of Ra/Rz alone on
capacity retention performance cannot be made. Id. at 22-24. Because
pressing force necessarily impacts particle packing of the electrode, porosity,
and density of the active material electrode layer, Appellant's inference that
the difference outside of 0.100 for Ra/Rz causes a massive increase in
capacity retention is flawed. Id. at 24. The Examiner observes that
Appellant's comparative examples have lower Ra values and greater Ra/Rz
values than the claimed ranges, which means the Rz values must be less. Id.
The Examiner explains that when Ra and Rz are less, as with the
comparative examples, a current collector is smoother and there are
shallower valleys and divots for active material to anchor to the current
collector. Id. at 25. Thus, the Examiner explains, active material of the
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same size for a set of samples having ( 1) a smoother surface with shallower
valleys and (2) a rougher surface with deeper valleys, would "intuitively
cause different active material to current collector contact and adhesion." Id.
The Examiner further finds that Shinozaki discloses that the ratio of
Ra/Rz is a result effective variable because Shinozaki teaches that if Rz is
too large, active material does not reach the depths of the depressions in the
surface of the current collector, causing voids between the copper foil and
the active material. Id. at 15 (citing Shinozaki ,r 56; Advisory Act. 5). The
Examiner also finds that Shinozaki teaches that if Rz exceeds 5 microns or
Ra exceeds 0.7 microns, adhesion between the copper foil and active
material will be less than desired. Id. ( citing Shinozaki ,r 44; Advisory Act.
5). The Examiner finds that Shinozaki teaches that selecting suitable values
of Ra and Rz improves the adhesion between the collector and the active
material layer and also improves the cycle characteristic of the battery. Id.
(citing Shinozaki ,r 73; Advisory Act. 5); id. at 17 (quoting Shinozaki ,r 73,
Fig. 1).
The Examiner further explains that Shinozaki discloses optimizing the
surface roughness (Ra, Rz) of the current collector to increase contact
between the electrode active material particles and the current collector
surface to improve battery performance. Ans. 15. Therefore, the Examiner
concludes that a person having ordinary skill in the art would have been
motived to combine Shinozaki's current collector with Shirohige's battery to
improve adhesion to the active material layer and improve battery
performance as Shinozaki teaches. Id. at 15-18 (citing Shinozaki ,r 43,
Fig. 1 ). The Examiner acknowledges that Shinozaki does not recite Ra and
Rz in ratio format, but nevertheless discloses Ra and Rz ranges whose ratio
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Application 14/306,048
overlaps the claimed ratio. Id. at 16. The Examiner further finds that that
one of ordinary skill in the art would have expected a current collector with
an Ra/Rz ratio slightly outside of the claimed range "to exhibit substantially
the same properties" in view of the overlap with the claimed range and the
examples that "approach the range claimed." Id. at 18.
In the Reply Brief, Appellant argues, again, that Shinozaki discloses
no range at all for the Ra/Rz ratio and that "the hypothetical range is so great
as to render it meaningless with regards to the claimed [range] of 0.072-
0.100." Reply Br. 1-2 (emphasis omitted). Appellant argues that the facts
here are akin to those in Atofina v. Great Lakes Chemical Corp., 441 F .3d
991, 999 (Fed. Cir. 2006), which Appellant concedes deals with anticipation
of ranges, not obviousness. Id. Regarding Shinozaki's Table 2, Appellant
argues that none of the examples would provide a Ra/Rz ratio within the
claimed range. Id. at 3. Appellant contends that the differences between the
claimed range and Shinozaki' s examples are twice the upper limit, compared
to the "extremely small" differences of the alloy content in Titanium Metals
Corp. of America v. Banner, 778 F2d 775 (Fed. Cir. 1985), authority on
which the Examiner relies to support the obviousness of the claimed range.
Id. at 3--4.
Regarding criticality of the claimed range, Appellant again quotes
paragraph 43 of the Specification as being sufficient support. Reply Br. 4.
In addition, Appellant asserts that the examples and comparative examples
also show criticality because "the retention rates with Ra/Rz of O .100 are
much higher than those with Ra/Rz of 0.106." Id. at 4--5 (emphasis
omitted). Regarding the Examiner's observations about the different
pressing conditions and conclusion that the effect of Ra/Rz alone on capacity
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Application 14/306,048
retention test performance cannot be made, Appellant argues that the
Examiner relies on personal knowledge, which must be supported by an
affidavit to have any weight. Id. at 5. Appellant contends that the three
alleged benefits Shinozaki describes would not have motivated a person
having ordinary skill in the art to include the claimed Ra/Rz range, because
there is no reason to associate the benefits with the claimed Ra/Rz range. Id.
at 6.
Appellant's arguments do not persuade us of reversible error for the
reasons the Examiner provides in the Final Office Action, Advisory Action,
and Answer. We add the following primarily for emphasis.
The problem with Appellant's argument is that Shinozaki discloses
not only ranges for Ra and Rz that, when computed as a ratio Ra/Rz,
encompass the claimed Ra/Rz range, but also teaches that Ra and Rz are
result effective variables. Advisory Act. 5; Ans. 15-16; Shinozaki ,r,r 43, 44,
56, 73. The cited record in this appeal supports the Examiner's findings
regarding Shinozaki' s teachings of Ra and Rz values and how their values
affect adhesion.
When Shinozaki' s preferred Ra and Rz ranges are related to each
other as a Ra/Rz ratio range using the significant digits that Appellant
asserts, Shinozaki's Ra/Rz ratio range is 0--0.7. 6 Reply Br. 2. This range
overlaps the claimed range of 0.072---0.100. Appellant does not dispute that
these ranges overlap. Thus, the Examiner has set forth a prima facie case of
6 Appellant points out that, because Shinozaki's upper value for Rz is 5,
which has only one significant figure, the lower range for Ra/Rz calculated
by the Examiner, likewise, must have one significant figure, thus, the
calculated Ra/Rz range based on Shinozaki's values would be 0--0.7. Reply
Br. 2.
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Application 14/306,048
obviousness over the cited references. Ormco Corp. v. Align Tech., Inc., 463
F.3d 1299, 1311 (Fed. Cir. 2006) ("Where a claimed range overlaps with a
range disclosed in the prior art, there is a presumption of obviousness."); see
E.I. DuPont de Nemours & Co. v. Synvina C. V., 904 F3d. 996, 1008 (Fed.
Cir. 2018) ("[ A ]n overlap suffices to show that the claimed range was
disclosed in-and therefore obvious in light of-the prior art."). When the
claimed invention falls within the range the prior art discloses, the burden of
production shifts to Appellant to come forward with evidence of teaching
away or unexpected results, also referred to as a "critical" range. 7 Galderma
Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 737-38 (Fed. Cir. 2013).
For this purpose, Appellant directs us to paragraph 43 and Tables 2
and 3 in the Specification to show (1) that the ratio ranges "'makes it
possible to enhance adhesion properties (retention power) between the active
material particles and the negative current collecting foil'" (App. Br. 27
( emphasis added)), and (2) that the examples with an Ra/Rz ratio of 0.100
have "much higher" retention rates than those with Ra/Rz of 0.106 for the
claimed particle diameter and the difference is not as large when the particle
diameter is not within the claimed range (id. at 28). The problem with
Appellant's showing is that Shinozaki teaches that selecting suitable values
of Ra and Rz, the adhesion between the collector and the active material
layer is improved, thereby improving the cycle characteristic of the battery,
much like paragraph 43 of Appellant's Specification. Thus, the improved
property would not have been unexpected based on Shinozaki' s disclosure
7 Appellant's citation to Atofina as analogous to the facts in this appeal is not
persuasive becauseAtofina is an analysis under 35 U.S.C. § 102, not
35 U.S.C. § 103.
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that Ra and Rz are result effective variables. Another problem with
Appellant's evidence is that the ratios and particle sizes are not the only
differences between the examples. Appellant does not dispute the
Examiner's finding, based on the record (Ans. 22-23), that about 10%
greater pressing force was applied to the invention examples than the
pressing force applied to the comparative examples. In addition, Appellants
have not shown that the alleged unexpected results or criticality are
commensurate in scope with the range claimed.
Thus, Appellant does not support the argument that the claimed Ra/Rz
ratio range is critical with sufficient evidence in the cited record on appeal.
As the Examiner finds, Appellant's Specification does not adequately
support such an argument because the inventive and comparative examples
are not made with the same pressing force. Ans. 22-23.
That Shinozaki teaches a broader range of Ra and Rz values and,
hence, a larger Ra/Rz ratio range than Appellant, does not negate the fact
that Shinozaki' s disclosure encompasses the values claimed by Appellant.
In a determination of obviousness, a reference may be relied upon for all that
it would have reasonably suggested to one having ordinary skill in the art.
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("That the [prior art] patent discloses a multitude of effective combinations
does not render any particular formulation less obvious.").
Appellant's argument that the ratio of Ra/Rz in Shinozaki's individual
examples are outside of the claimed range is not persuasive of error. It is not
necessary that Shinozaki disclose the claimed composition as a working
example as Appellant's arguments suggest. In re Mills, 470 F.2d 649, 651
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(CCPA 1972) (citation omitted) ("[A] reference is not limited to the
disclosure of specific working examples.").
Appellant's argument (Reply Br. 5) that "nowhere does the Examiner
indicate the reference on which he is basing [ different pressing conditions of
the examples] comments" is not persuasive. Appellant does not dispute that
the comparative examples were made with different pressing force from the
inventive examples. The details from the Specification regarding the
relative pressing forces with which the examples were made are shown in
Figure 5 on page 23 of the Answer, which cites paragraphs 98-108 for the
pressing conditions.
Appellant's argument (Reply Br. 6) that a person having ordinary skill
in the art would have had no reason to associate the alleged benefits
Shinozaki describes with respect to Ra and Rz individually, with a ratio of
the two parameters within the claimed range also does not persuade us of
error. Appellant does not adequately explain why the benefits associated
with variations in the values of Ra and Rz individually would not likewise
inform the expected properties as to the claimed device. In the absence of
evidence to the contrary, we determine that the record on appeal supports the
Examiner's finding that modifying Shirohige' s device as Shinozaki teaches
would achieve the claimed property of improved adhesion between the
electrode and current collector and, in tum, improve battery performance
(Final Act. 12). The Examiner has provided a preponderance of evidence to
support the rejection, including commonalities that the modified device
resulting from the combined teachings of Shirohige and Shinozaki share and
the selection criteria for suitable Ra and Rz values. This showing justifies
requiring Appellant to demonstrate that the difference in pressing conditions
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between the comparative examples and the inventive examples does not
impact the retention rate, and that the full scope of the claimed Ra/Rz range
is critical compared to Shinozaki's range. See In re Best, 562 F.2d 1252,
1255 (CCP A 1977) ("[T]he PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product. . . . Whether the rejection is based on 'inherency'
under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively,[] the burden of proof is the same, and its fairness is
evidenced by the PTO' s inability to manufacture products or to obtain and
compare prior art products" (footnote omitted).). Appellant has provided no
such proof.
In sum, we affirm the Examiner's rejection of claim 1 as obvious over
Shirohige in view of Shinozaki.
Claim 18
Appellant contends that, for the same reasons presented with respect
to claim 1, the cited prior art does not teach or suggest the claim limitation
"a ratio of center line roughness Ra to ten-point mean height Rz of 0.072 or
more and 0.100 or less" recited in independent claim 18. App. Br. 30.
Accordingly, we affirm the Examiner's rejection of claim 18 as obvious over
the combination of Shirohige and Shinozaki for the same reasons discussed
above in connection with claim 1.
Dependent Claims 2-17 and 19
Appellant contends that, like independent claims 1 and 18, the cited
prior art does not teach or suggest at least one element of dependent claims
2-17 and 19. App. Br. 30. In the absence of arguments as to the additional
limitations of those claims, we affirm the Examiner's rejection of dependent
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claims 2-17 and 19 as obvious over the combination of Shirohige and
Shinozaki for the same reasons discussed above in connection with claim 1.
CONCLUSION
We affirm the Examiner's rejection of claims 1-19 as obvious under
35 U.S.C. § 103(a).
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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