Ex Parte Sugaya et al

Patent Trial and Appeal Board

Dec 17, 2015

12992245 (P.T.A.B. Dec. 17, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/992,245 11/11/2010
53080 7590 12/21/2015
McDermott Will and Emery LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Junichi Sugaya
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.
043888-0856 5945
EXAMINER
CULLEN,SEANP
ART UNIT PAPER NUMBER
1725
NOTIFICATION DATE DELIVERY MODE
12/21/2015 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNICHI SUGA YA and YOSHIYUKI MURAOKA 1
Appeal 2014-003 697
Application 12/992,245
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, and 4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is Panasonic
Corporation. App. Br. 1.
Appeal2014-003697
Application 12/992,245
CLAIMED SUBJECT MATTER
The invention relates to a positive electrode for a non-aqueous
electrolyte secondary battery including a lithium-containing composite
oxide. Spec. i-f 1; Claim 1. Claim 1 is reproduced below from page 10
(Claims Appendix) of the Appeal Brief:
1. A positive electrode for non-aqueous electrolyte secondary
battery comprising: a positive electrode core material; and a
positive electrode material mixture layer formed on a surface of
said positive electrode core material,
wherein said positive electrode material mixture layer includes
a positive electrode active material, a binder, and a conductive
agent,
said positive electrode active material includes a lithium-
containing composite oxide including nickel,
said lithium-containing composite oxide has a hexagonal crystal
structure, and a content of said nickel accounts for 60 to 90%
by mol of all metallic elements other than lithium,
said lithium-containing composite oxide includes secondaiy
particles having an average particle diameter of 5 µm or more,
and
3 .5 g or more of said positive electrode active material is
included per 1 cm3 of said positive electrode material mixture
layer.
ANALYSIS
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Fujita (WO 2006/129756 Al, published December 7, 20062).
2 The Examiner and the Appellants cite U.S. equivalent US 2010/0012403
Al. Final Act. 2; App. Br. 5. We do the same in this Decision.
2
Appeal2014-003697
Application 12/992,245
Concerning claim 1, the Examiner found, inter alia, that Fujita
teaches a lithium-containing composite oxide that "includes secondary
particles having an average particle diameter of 5 µm or more." Final Act.
3. The Examiner relied on Fujita's teaching that "[t]he lithium nickel
composite oxide was crushed and classified, thereby to yield a positive
electrode active material having a mean particle size (D50) of 9.5 µm."
Fujita i-f 61; see also Final Act. 3.
The Appellants dispute the Examiner's finding. While
acknowledging that Fujita teaches the use of a lithium-containing composite
oxide raw material having a mean particle size of 9 .5 µm, Fujita i-f 61, the
Appellants argue that the raw material is subject to further manufacturing
processes such that the completed positive electrode does not include a
lithium-containing composite oxide having the claimed particle diameter.
App. Br. 4--8. Specifically, the Appellants argue that the "rolling" process to
which the raw material is subjected "crushe[s] [the raw material] into fine
particles," resulting in average particle diameter of less than 5 µm. Id. at 5-
6; see also Fujita i-f 63 (noting that the "electrode material mixture was
rolled").
In the Examiner's Answer, the Examiner does not contest the
Appellants' argument that the rolling process would crush the raw material
to result in average particle diameter of less than 5 µm. Instead, the
Examiner repeatedly states that "[ t ]he claims do not recite the average
particle diameter is measured after rolling. Thus, a positive active material
having an average particle diameter anytime during the manufacture of the
positive electrode meets the foregoing limitations." E.g., Ans. 3.
3
Appeal2014-003697
Application 12/992,245
In the Reply Brief~ the Appellants argue that they "are not claiming a
method of manufacturing a positive electrode, they are claiming the actual
positive electrode, which means the final device which is obtained at the end
of the manufacturing process." Reply Br. 4--5 (emphasis added). According
to the Appellants, because the Examiner relies on a mid-fabrication particle
diameter, the rejection should be reversed. Id.
Although neither the Examiner nor the Appellants expressly address
the issue, this case turns on whether the preamble ("A positive electrode for
[a] non-aqueous electrolyte secondary battery") of claim 1 is limiting. The
Examiner's implicit position is that the preamble is not limiting and,
therefore, that a composition may anticipate the claim regardless of whether
or not that composition constitutes a completed "positive electrode."
E.g., Ans. 3. The Appellants' position is that the preamble is limiting and
that only a composition that constitutes a fabricated, "final" positive
electrode may anticipate the claim. Reply Br. 4--5. There does not appear to
be any dispute that the portion of Fujita relied upon by the Examiner
describes a mid-fabrication particle diameter of the lithium-containing
composite oxide, before rolling has occurred. Id.; see also Ans. 3.
"The effect preamble language should be given can be resolved only
on review of the entirety of the patent to gain an understanding of what the
inventors actually invented and intended to encompass by the claim."
Corning Glass Works v. Sumitomo Elec. US.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989). In this case, the Specification makes clear that the
inventors were concerned with particle diameter of the lithium-containing
composite oxide in the final positive electrode obtained from the
manufacturing process. In the "Summary of Invention" section of the
4
Appeal2014-003697
Application 12/992,245
Specification, the Applicants distinguished between a "positive-electrode
precursor," which is subjected to rolling, and a completed "positive
electrode produced by [the method disclosed in the Specification]." See
Spec. i-f 6; see also Spec. i-fi-13, 9 (similar). The Specification explains that an
advantage of the claimed positive electrodes over positive electrodes
produced by the "conventional method" is that "the average particle
diameter of the secondary particles of the positive electrode active material
in the positive electrode can be maintained to 5 µm or more." Id. i-f 14
(emphasis added).
Those portions of the Specification aid in "understanding ... what the
inventors actually invented and intended to encompass by the claim."
Corning, 868 F.2d at 1257. They establish that the term "positive electrode"
distinguishes a completed positive electrode that has already been subject to
the rolling process from an incomplete positive electrode "precursor," which
has not yet been rolled. To read the claim to cover the average particle
diameter of the lithium-containing composite oxide at any point during the
manufacturing process would ignore those distinctions in the Specification.
Moreover, claim 4 recites:
A non-aqueous electrolyte secondary battery comprising: the
positive electrode in accordance with claim 1; a negative
electrode including a negative electrode active material; a
separator interposed between said positive electrode and said
negative electrode; and a non-aqueous electrolyte.
(emphasis added). The recitation of"[ a] positive electrode" in claim 1
provides the antecedent basis for the recitation of "the positive electrode in
accordance with claim 1" that appears in the body of claim 4. "When
limitations in the body of the claim rely upon and derive antecedent basis
5
Appeal2014-003697
Application 12/992,245
from the preamble, then the preamble may act as a necessary component of
the claimed invention." Pacing Techs., LLC v. Garmin Int'!, Inc., 778 F.3d
1021, 1024 (Fed. Cir. 2015) (internal quotation marks and alterations
omitted). In Pacing Technologies, the Federal Circuit determined that a
preamble was limiting where it was subsequently used in the body of a
different claim. Id. ("The term 'repetitive motion pacing system' in the
preamble of claim 25 similarly provides antecedent basis for the term
'repetitive motion pacing system' recited as a positive limitation in the body
of claim 28, which depends from claim 25."). That decision provides further
support for our conclusion that the recitation in claim 1 of"[ a] positive
electrode" is limiting.
The Appellants' argument sets forth sufficient facts and reasoning to
establish that a person of ordinary skill in the art would not expect the
average particle diameter of Fujita's composite on the completed "positive
electrode" to be "5 µm or more." App. Br. 4--8; Reply Br. 4--5. The
Examiner does not attempt to refute the Appellants' argument on that point.
Because we conclude that the preamble is limiting, and because "a positive
electrode" refers to a completed electrode rather than to a mid-fabrication
precursor, the Examiner's finding that Fujita anticipates the average particle
diameter limitation of claim 1 is not supported by a preponderance of the
evidence.
We therefore must reverse the Examiner's rejection of claim 1.
Because the Examiner's rejection of claims 3 and 4 does not remedy the
error identified above, we must likewise reverse the Examiner's rejection of
those claims.
6
Appeal2014-003697
Application 12/992,245
CONCLUSION
We REVERSE the Examiner's rejection of claims 1, 3, and 4.
REVERSED
lp
7